The Complainant is Skyscanner Limited, United Kingdom, represented by Lewis Silkin LLP, United Kingdom.
The Respondent is Dwayne Paris, Saint Kitts and Nevis.1
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2021. On September 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 10, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on the same day.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2021.
The Center appointed Matthew Kennedy as the sole panelist in this matter on October 14, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual BackgroundThe Complainant is a travel company. It holds multiple trademark registrations in multiple jurisdictions, including the following:
- United Kingdom trademark registration number UK00002313916 for SKYSCANNER, registered on April 30, 2004, specifying services in classes 35, 38, and 39, including certain travel information and arrangement services; and
- International trademark registration number 1030086 for SKYSCANNER, registered on December 1, 2009, designating multiple jurisdictions, and specifying services in classes 35, 39, and 42, including certain travel information and arrangement services.
The above trademark registrations remain current. The Complainant has registered the domain name
The Respondent is an individual.
The disputed domain name was registered on August 16, 2021. It resolves to a website that prominently displays the title “SkyTravelScanner” (with “sky” and “scanner” in the same color and “travel” in a different color) alongside an airplane logo. The site offers travel information and reservation services for hotels, flights, and cars.
5. Parties’ Contentions A. ComplainantThe disputed domain name is virtually identical to the Complainant’s SKYSCANNER trademark, the only minor distinction being that the terms “sky” and “scanner” are separated by the term “travel”, which serves to describe the sector in which the Complainant enjoys a reputation. The Complainant’s website currently attracts 100 million visits per month while its smart device application has been downloaded over 70 million times.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The terms “skyscanner” and “sky travel scanner” are not descriptive in any way, nor do they have any generic, dictionary meaning. The Complainant has not given its consent for the Respondent to use its registered trademarks in a domain name registration. The provision of travel information and arrangement services under the term “skytravelscanner” is designed to mislead consumers into believing that the travel arrangement services supplied through the disputed domain name originate from the Complainant, and constitutes an infringement of the Complainant’s registered trademarks.
The disputed domain name was registered and is being used in bad faith. There can be no plausible explanation for the Respondent’s registration of the disputed domain name, other than that he sought to profit illegitimately by misleading consumers into believing that the travel arrangement and information services provided through the disputed domain name originate from or are otherwise affiliated with the Complainant, when this is not the case.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarBased on the evidence presented, the Panel finds that the Complainant has rights in the SKYSCANNER mark.
The disputed domain name wholly incorporates the SKYSCANNER mark with the dictionary word “travel” inserted between “sky” and “scanner”. Given that the mark remains clearly recognizable in the disputed domain name, the insertion of this word does not prevent a finding of confusing similarity with the Complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The disputed domain name also includes a generic Top-Level Domain (“gTLD”) (“.com”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first and third circumstances set out above, the disputed domain name resolves to a website that offers travel information and reservation services for hotels, flights, and cars. The disputed domain name incorporates the SKYSCANNER mark with the word “travel” inserted between “sky” and “scanner”, as does the title of the associated website. The Complainant submits that it has not given its consent for the Respondent to use its registered trademarks in a domain name registration. In the Panel’s view, this evidence constitutes a prima facie case that the disputed domain name is not being used in connection with a bona fide offering of goods or services and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “Dwayne Paris”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] web site or location.”
With respect to registration, the disputed domain name was registered in 2021, many years after the registration of the Complainant’s SKYSCANNER mark. The mark is not a dictionary word even though it is composed of two dictionary words. The disputed domain name incorporates the SKYSCANNER mark, with the word “travel” inserted, but “sky travel scanner” is neither a word nor a common phrase. The title of the associated website displays “sky” and “scanner” in the same color so that they are likely to be read together as the mark. The Complainant’s mark has acquired a strong reputation in the travel sector through long-standing use in connection with its website and smart device application. The Respondent operates his website in the same sector and offers no explanation for his choice of the disputed domain name. This all gives the Panel reason to find that the Respondent knew of the Complainant’s mark at the time at which he registered the disputed domain name.
With respect to use, the Respondent currently uses the disputed domain name to resolve to a website offering travel information and reservation services for hotels, flights and cars. The title of the website displays “sky” and “scanner” in the same color with “travel” distinguished in a different color, which gives the false impression that the site is somehow operated by, or affiliated with, the Complainant. These services compete with those offered by the Complainant. This use is clearly with intent for commercial gain. In view of these circumstances, the Panel considers that the disputed domain name is intended to attract Internet users by creating a likelihood of confusion with the Complainant’s SKYSCANNER trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website within the terms of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name
Matthew Kennedy
Sole Panelist
Date: October 20, 2021
1 At the time of filing the Complaint, the relevant WhoIs information showed that the registration of the disputed domain name was concealed behind a privacy or proxy service, “Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf”; the Complainant filed an amendment to the Complaint to add the Registrar‑confirmed underlying registrant, “Dwayne Paris”. In the present circumstances, the Panel considers the Registrar-confirmed underlying registrant details of the disputed domain name to constitute the concerned Respondent at issue.