WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2019-2707

1. The Parties

The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <skyskyskanner.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2019. On November 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2019, 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 November 7, 2019, 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 November 8, 2019.

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 November 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2019.

The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on December 9, 2019. 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 Background

The Complainant operates a global computer travel network used monthly by 80 million people. The Complainant’s products are available in over 30 languages and 70 currencies. The Complainant also offers a mobile app which has been downloaded over 70 million times. In 2016, the Complainant was acquired by Ctrip, China’s largest online travel agency, for approximately GBP 1.4 billion.

The Complainant states that it is the owner of numerous trademark registrations in several jurisdictions that consist of the trademark SKYSCANNER (“the Complainant’s SKYSCANNER mark”). The Complainant has used the SKYSCANNER mark globally. Examples of the Complainant’s SKYSCANNER mark include the following:

The Complainant owns ninety-one trademark registrations that contain the term SKYSCANNER. Copies of trademark registration certificates for the Complainant’s SKYSCANNER mark are produced in Annex 2 to the Complaint.

The disputed domain name was registered on October 18, 2019.

At the time of the Complaint, the disputed domain name resolved to a parking page containing Pay-Per-Click (“PPC”) links advertising low-cost travel services and was offered for sale on <sedo.com> for USD 500.

5. Parties’ Contentions

A. Complainant

The Complainant states it enjoys exclusive rights to the SKYSCANNER mark. The disputed domain name is virtually identical to the Complainant’s SKYSCANNER mark despite the misspelling of the word “scanner” as “skanner” and the repetition of the word “sky”. The disputed domain name’s additions/misspellings are insufficient to render its visual or phonetic characteristics distinct from the Complainant’s SKYSCANNER mark.

The Complainant states the Respondent has no rights or legitimate interests in respect of the disputed domain name. The term “SKYSCANNER” is not descriptive nor does it have any generic dictionary meaning. As far as the Complainant is aware, the Respondent is not commonly known as “Skyscanner” or “Skyskyskanner”. The Complainant has not consented to the Respondent’s use of a virtually identical variation of its SKYSCANNER mark.

The Complainant contends that the disputed domain name was registered and is being used by the Respondent in bad faith. It asserts that the Respondent is trading off the Complainant’s SKYSCANNER mark to attract Internet users to a website which resolves to a parked page containing PPC links advertising services offered by the Complainant’s competitors. The Respondent has also offered the disputed domain name for sale at a price which would exceed the Respondent’s documented out-of-pocket costs related to its acquisition and maintenance of the domain name. In sum, the disputed domain name is being used by the Respondent to mislead Internet users to an affiliation with or connection to the Complainant and its SKYSCANNER mark for commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Where a domain name consists of an obvious misspelling of a trademark (i.e. typosquatting), it is likely to be confusingly similar to the trademark. The Panel refers to section 1.9, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel considers that the disputed domain name <skyskyskanner.com> is confusingly similar to the Complainant’s SKYSCANNER mark. The misspelling of “scanner” as “skanner” is a form of typosquatting as it does not distinguish the visual or phonetic pronunciation of the domain name from the Complainant’s SKYSCANNER mark. In addition, the repetition of the word “sky” in the disputed domain name is insufficient to render it sufficiently distinct from the Complainant’s SKYSCANNER mark. The word “sky” is a key component of the term “SKYSCANNER”.

Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied in favour of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name by, inter alia, proving any one of the following elements:

(i) that before notice of the dispute, the Respondent used or made 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) that the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) that 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.

The Complainant has the burden of proving that the Respondent lacks rights or legitimate interests in the disputed domain name. Given the difficulty in proving a negative in respect of information that is within the Respondent’s control, the burden of production will shift to the Respondent if the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. In this respect, the Panel refers to section 2.1, WIPO Overview 3.0.

The Complainant has asserted, and the Panel accepts, that it has not authorised or consented to the Respondent’s registration and use of the disputed domain name which incorporates the Complainant’s SKYSCANNER mark. The Panel also notes, referring to section 2.9, WIPO Overview 3.0, that the Respondent’s use of the disputed domain name to host a parked page comprising PPC links does not represent a bona fide offering of goods or services as such links compete with or capitalise on the reputation and goodwill of the Complainant’s SKYSCANNER mark.

Accordingly, the Panel finds the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The burden of production shifts to the Respondent who has not filed a reply.

The Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favour of the Complainant.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(ii) of the Policy, the following non-exhaustive circumstances are taken as evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iiii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 web site or location or of a product or service on the Respondent’s site or location.

The Panel is satisfied the disputed domain name has been registered in bad faith for the following reasons:

(i) The Respondent must have been aware, at the time of registration, of the Complainant’s business, its SKYSCANNER mark and the Complainant’s exclusive rights in the SKYSCANNER mark. The Panel accepts the Complainant’s travel business and its SKYSCANNER mark are globally recognised. The Respondent must have been aware of both at the date of registration given the disputed domain name resolved to a parked page comprising PPC links to the Complainant’s competitors’ websites.
(ii) In addition, the Panel refers to paragraph 2 of the UDRP which places a burden on registrants when it states “by applying to register a domain name […] you hereby represent and warrant to us that […] to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party”. The UDRP further clarifies that it is the registrant’s responsibility “to determine whether [the] domain name registration infringes or violates someone else’s rights”. The Panel finds the Respondent has failed to discharge this burden. The disputed domain name is confusingly similar to the Complainant’s SKYSCANNER mark and a cursory Google search of the disputed domain name (despite its minor differences) would have revealed the Complainant’s rights to the SKYSCANNER mark.

The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons:

(i) The Respondent is trading off the reputation of the Complainant’s SKYSCANNER mark to attract Internet users to its website for commercial gain. The Panel accepts the Complainant’s assertion that the disputed domain name is being used to create confusion as to the Complainant’s source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent is seeking to gain from this confusion through the use of PCC links on its website that lead to travel arrangement services which are not endorsed by or related to the Complainant.
(ii) The Respondent is offering the disputed domain name for sale at a price (USD 500) that, in the Panel’s view, is likely to exceed the Respondent’s out-of-pocket costs directly associated with the disputed domain name. The Panel accepts that the Respondent’s documented out-of-pocket costs related to the acquisition and maintenance of the disputed domain name are unlikely to exceed USD 100 as the disputed domain name has only been registered since October 19, 2019.
(iii) Further, the Panel notes the Respondent’s use of a privacy service to mask its contact details is consistent with its mala fides plagiarism of the Complainant’s SKYSCANNER mark.

Overall, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favour of the Complainant.

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 <skyskyskanner.com> be transferred to the Complainant.

Andrew Brown Q.C.
Sole Panelist
Date: December 19, 2019