The Complainant is Skyscanner Limited, United Kingdom, represented by Lewis Silkin LLP, United Kingdom.
The Respondent is Leonid, the Russian Federation.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2021. On October 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 October 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on November 30, 2021.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on December 7, 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 Skyscanner Limited, a company that offers on its website and its smart device application a metasearch engine to compare flights, hotels and car rentals worldwide. It operates the website “www.skyscanner.net”.
For the purpose of its activities, the Complainant holds several trademarks (the “SKYSCANNER trademarks”), including:
- the International Trademark SKYSCANNER No. 900393, registered on March 3, 2006, in classes 35, 38, and 39, designating the European Union (“EU”),
- the International Trademark SKYSCANNER No. 1030086, registered on December 1, 2009, in classes 35, 39, and 42, designating the EU, Armenia, Australia, Azerbaijan, Bosnia & Herzegovina, Belarus, Switzerland, China, Egypt, Japan, Mexico, Norway, Russian Federation, Singapore, Turkey, and the Ukraine.
The disputed domain name
At the time of the decision, the disputed domain name is inactive.
The Panel is requested to transfer the disputed domain name to the Complainant.
5. Parties’ Contentions A. ComplainantIn accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.
First, the Complainant stands that the disputed domain name is virtually identical to the SKYSCANNER trademarks, the only difference being that the disputed domain name includes the term “avia” which is the transliteration of the Cyrillic word for “airline” or “airplane”. The Complainant adds that for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”).
Second, the Complainant contends that the Respondent has no rights or legitimate interest in respect of the disputed domain name, as the Respondent has no registered right or trademark on the terms that constitute all or part of the disputed domain name, and the Complainant has not given its consent for the Respondent to use the SKYSCANNER trademarks to register a domain name.
Lastly, the Complainant finds that the Respondent has registered and is using the disputed domain name in bad faith, given that the Complainant’s registered rights date back to 2002 so that the Respondent was aware of the Complainant’s trademarks at the time the disputed domain name was registered. The Complainant adds that its trademarks enjoyed a great deal of exposure in the international media in November 2016, after the Complainant was acquired by Ctrip, one of China’s largest online travel agencies.
The Complainant asserts that there is an overwhelming likelihood that the Respondent registered the disputed domain name to make money from it and, alternatively, that the Respondent intends to set up a service in direct competition with the Complainant. Finally, the Complainant considers that the Respondent’s passive holding of the disputed domain name constitutes a bad faith use.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three 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 SimilarAccording to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
First of all, the Panel finds that the Complainant has provided evidence that it has rights in the SKYSCANNER trademarks.
Then, the Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).
Regarding the disputed domain name, the Panel finds that it is composed of:
- the SKYSCANNER trademark,
- the insertion of the term “avia”, which is the transliteration of the Cyrillic word for “airline” or “airplane”,
- the gTLD “.online”, it being specified that the gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.
Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate InterestsAccording to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.
These circumstances are:
- before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
- the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).
According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Indeed, it appears that the Complainant did not authorize the Respondent to register and use the SKYSCANNER trademark.
Moreover, the Panel finds that there is no evidence of the Respondent’s use of the disputed domain name in connection with a bona fide offering of goods or services since the disputed domain name is inactive. Moreover, as noted above, the added term “avia” has a meaning that is descriptive of the Complainant’s services and as such, the construction of the disputed domain name is such to carry a risk of implied affiliation that cannot constitute fair use, since it effectively suggests sponsorship or endorsement on part of the Complainant, contrary to the fact.
In any case, the Respondent did not reply to the Complainant’s contentions.
Therefore, according to the Policy, paragraph 4(a)(ii) and 4(c), the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name
According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.
Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 website or location.
First, the Panel considers that it is established that the Complainant’s SKYSCANNER trademarks were registered before the registration of the disputed domain name so that there is a presumption of bad faith registration of the disputed domain name, given the fact that the disputed domain name wholly reproduces the SKYSCANNER trademark, within which is inserted the descriptive term “avia”, which is the transliteration of the Cyrillic word for “airline” or “airplane”, and clearly refers to the activity of the Complainant.
Moreover, the Panel finds that the disputed domain name is inactive and reminds that such “passive holding” does not prevent a finding of bad faith, since according to prior UDRP panel decisions the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (See section 3.3 of the WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
In this case, the Panel believes that the passive holding of the disputed domain name proves that the Respondent acts in bad faith, given the particular circumstances listed below:
- The Complainant’s SKYSCANNER trademark seems to be well known, as the Complainant demonstrates the number of visits on its website (100 million visits per month) and that it has enjoyed a great deal of exposure in the international media;
- The Respondent has not provided any answer to the Complainant’s contentions;
- The Respondent mentioned an inaccurate address when registering the disputed domain name;
- Considering all of the above, it is not possible to conceive of any plausible actual or contemplated good faith use of the disputed domain name by the Respondent.
Therefore, in view of all the circumstances of this case, the Panel holds that the Respondent has registered and is using the disputed domain name in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b).
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,
Christiane Féral-Schuhl
Sole Panelist
Date: December 21, 2021