ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Skyscanner Limited v. Md AL Mamun Case No. D2024-3122 1. The Parties The Complainant is Skyscanner Limited, United Kingdom (“UK”), represented by Lewis Silkin LLP,UK.. The Respondent is Md AL Mamun, Portugal. 2. The Domain Name and Registrar The disputed domain name is registered with Nominalia Internet S.L. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2024. On July 30, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 2024, 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 (Redacted) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 2, 2024, 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 amended Complaint on August 2, 2024. The Center verified that the Complaint together with the amended 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 August 6, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2024. The Respondent sent email communications to the Center on August 2 and 5, 2024. The Center appointed Gary Saposnik as the sole panelist in this matter on September 3, 2024. 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.
page 2 4. Factual Background The Complainant is a search aggregator and travel agency which provides flight, hotel, and car hire services through its website at “www.skyscanner.net” and the SKYSCANNER smart device app. As of August 2024, the Complainant’s website attracts tens of millions of unique visits per month, and its SKYSCANNER smart device app has been downloaded over 70 million times. The Complainant’s services are available in over thirty languages and in seventy currencies. As of August 2023, the Complainant’s website “www.skyscanner.net” was visited more than 46 million times and was ranked 706th globally for Internet traffic and engagement, and 66th in the United Kingdom. The Complainant is the owner of global portfolio of registrations for the SKYSCANNER mark, including the following: - International Trade Mark Registration No. 900393, for SKYSCANNER, registered on March 3, 2006, in classes 35, 38, and 39,. - European Union designation of International Trade Mark Registration No. 1030086, for SKYSCANNER, registered on December 1, 2009 covering services in classes 39 and 42, - International Trade Mark Registration No. 1030086, for SKYSCANNER, registered December 1, 2009, in classes 35, 39, and 42, e. - UK Trade Mark Registration No. 2313916 for SKYSCANNER, registered on April 30, 2004, in classes 35, 38, and 39. The Respondent appears to be an individual presumably located in Portugal. The disputed domain name was registered on July 3, 2023, and resolves to a website that offers travel arrangement services (namely, for flights and hotels) in direct competition with the Complainant’s core services, with the name of EASY TRAVEL, and a copyright notice from “Travelpayouts”. It offers flights and hotel searches in numerous languages and currencies. In addition, there are apparently active email (MX) records associated with the disputed domain name. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is virtually identical to the Complainant’s SKYSCANNER mark, the only differences being that the disputed domain name includes a hyphen and the additional ending letter “s”. The Complainant asserts that prior UDRP Panels have held that the Complainant enjoys a reputation in its SKYSCANNER trademark, including that the Complainant “(1)…has registered its SkyScanner and SKYSCANNER marks in many countries around the world; (2) transacts an enormous volume of business by reference to those marks; (3) has received considerable publicity by reference to its corporate name over the years…and (5) any use of that name anywhere in the world is likely to be actionable.” Skyscanner Limited v. Contact Privacy Inc. Customer 1244355693/Mrs. K Ananthan, WIPO Case No. D2019-0988. The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name. As far as the Complainant is aware, the Respondent does not own registered rights in any trademarks which comprise part or all of the disputed domain name. The term “Skyscanner” is not descriptive in any way, nor does it have any generic, dictionary meaning. The Complainant has not given its consent for the Respondent its registered marks in a domain name registration.
page 3 The disputed domain name points to a website that offers travel arrangement services (namely for flights and hotels) in direct competition with the Complainant’s core services in which it enjoys a reputation. The Complainant has also produced evidence showing that there are active email (MX) records associated with the disputed domain name. Given the fame of the Complainant’s mark and the fact that no other individual or business owns registered trademark rights in the SKYSCANNER trademark, not only is it likely that the Respondent was aware of the Complainant’s rights prior to registering the disputed domain name, but it is inevitable that visitors to the website associated with the disputed domain name would mistakenly believe there to be an association with the Complainant. The current use of the disputed domain name is specifically designed to mislead consumers to believe the disputed domain name is owned by the Complainant, and the presence of active MX records suggests that the Respondent plans to use the disputed domain name to communicate with them. Such use poses a significant fraud risk to Internet users and the Complainant. Such use cannot constitute a legitimate interest or use of the domain name in connection with a bona fide offering of goods or services. The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered in July 2023, more than twenty years after the Complainant acquired registered right in the SKYSCANNER mark. With more than twenty years of use and rights, the Complainant submits that the Respondent was aware of the reputation of the Complainant’s business under the SKYSCANNER mark at the time of registration of the disputed domain name, as the Complainant had already enjoyed global fame in its trademarks. This global fame included that the Complainant was the subject of global media attention following its acquisition by Ctrip, China’s largest on-line travel agency, for GBP 1.4bn. The Complainant asserts that it is implausible that the Respondent did not have the Complainant’s business in mind at the time the disputed domain name was registered. The Complainant argues that the disputed domain name points to a website that offers travels arrangement services, thereby using the name to mislead consumers into believing that the travel arrangement services provided through the website to which the disputed domain name points originate from the Complainant. Such use demonstrates that the Respondent was targeting the Complainant’s reputation in its SKYSCANNER mark in a manner that constitutes bad faith use pursuant to the Policy. The Complainant submitted a copy of email correspondence received from the Respondent, offering to sell the disputed domain name to the Complainant for “a couple thousand dollars”. This further evidences the Respondent’s bad faith in targeting the Complainant’s SKYSCANNER mark in such a way as to secure illicit financial gain. Such use constitutes bad faith use. B. Respondent The Respondent did not substantively reply to the Complainant’s contentions, and submitted an informal response, stating “Thank you for your support! How much shell I get?” An additional communication from the Respondent to the Center states “I asked you simple questions…will you pay me 2000 euro? If is yes I will transfer my domain, if is not so I file case keep my domain and not transfer to you”. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
page 4 The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark is recognizable within the disputed domain name. The disputed domain name contains the Complainant’s mark in its entirety, with the disputed domain name only including a hyphen and adding an extra letter (the letter “s”) at the end. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy when viewed in a side-by-side comparison. Under the second and third elements, this misspelling additionally signals an intention on the part of the respondent to confuse users seeking or expecting the complainant. WIPO Overview 3.0, section 1.7, section 1.9. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 a prima facie case 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. While the Respondent submitted an informal response, he did not address or rebut any of the substantive allegations shown and argued by the Complainant. The Respondent is not known by the disputed domain name, and uses the name “EASY TRAVEL”, as well as the copyright notice from “Travelpayouts”, neither of which corresponds to the disputed domain name. The Respondent has not provided any evidence that it has any bona fide registration and use of the disputed name. The Respondent’s composition of its disputed domain name does not constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. WIPO Overview 3.0 section 2.5.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent likely knew of the Complainant and the Complainant’s trademark when registering the disputed domain name. Given the fame and strength of the Complainant’s mark, and that the disputed domain name is confusingly similar to the Complainant’s distinctive mark, as well as the Respondent’s proximity to many European countries where there is significant use and publicity of the Complainant’s mark, it is highly unlikely that the Respondent registered the confusingly similar disputed domain name by chance.
page 5 While the Respondent had the opportunity to rebut the Complainant’s allegations in his informal response, the Respondent’s only response was to ask for “two thousand euro”, likely far in excess of the respondent’s costs related to the domain name. Additional circumstances of the disputed domain name leading to a website for commercial activity in the same business as Complainant, with a slight misspelling of the Complainant’s mark, is an obvious attempt by the Respondent to profit or exploit the fame of the Complainant’s mark. WIPO Overview 3.0, section 3.1.1. Additionally, paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. These circumstances include that the disputed domain name is a typo of a widely-known mark, the content of the website to which the website directs being an obvious attempt to confuse consumers into believing an affiliation or endorsement by the Complainant, as well as a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the domain name. Based on a totality of the evidence, it is clear that the Respondent had bad faith targeting the Complainant. WIPO Overview 3.0, section 3.2.1. The Panel finds that the Complainant has established the third element of the Policy. 7. Decision For 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 be transferred to the Complainant. /Gary Saposnik/ Gary Saposnik Sole Panelist Date: September 17, 2024
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