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.
The disputed domain name <skskyscanner.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2019. On November 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 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 26, 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 amended Complaint on November 28, 2019.
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 December 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2019.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on January 16, 2020. 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.
The Complainant is Skyscanner Limited of the United Kingdom, which operates a leading global travel search site “www.skyscanner.net”.
The Complainant holds several trademark registrations including:
- the International trademark registration for SKYSCANNER No. 900393, registered on March 3, 2006 in classes 35, 38, and 39;
- the International trademark registration for SKYSCANNER No. 1030086, registered on December 1, 2009 in classes 35, 39, and 42.
The disputed domain name was registered on August 27, 2018 and resolved to a parking page containing pay-per-click (“PPC”) links.
Firstly, the Complainant asserts that the disputed domain name is identical or confusingly similar to the SKYSCANNER mark which has no generic, dictionary meaning.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant claims that it has not agreed to the Respondent’s registration of the disputed domain name. The Complainant also emphasizes that the Respondent is not commonly known as “Skyscanner” or “Skskyscanner”. Moreover, the Complainant points the Panel’s attention to the fact that the website that the disputed domain name resolves to is a parking page containing PPC links advertising travel arrangement services that originate from, inter alia, the Complainant’s competitors.
Thirdly, the Complainant states that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent was or should have been aware of the popularity of the SKYSCANNER mark as its registration predate the registration of the disputed domain name. According to the Complainant, the disputed domain name is a classic case of typosquatting inasmuch as the domain name repeats the “sk” element of the Complainant’s mark and, thereafter replicates the Complainant’s mark in its entirety, in order to attract traffic to its website and encourage them to access the PPC links displayed, thereby generating revenue for the Respondent. Additionally, the Complainant asserts that if the Respondent does point the disputed domain name to an active website in the future, such use can only be designed to take unfair advantage of the reputation in the Complainant’s rights. The Complainant further submits that the Respondent’s use of a WhoIs privacy service is designed to shield the Respondent from its identification in UDRP proceedings.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
The disputed domain name fully incorporates the Complainant’s SKYSCANNER mark and is confusingly similar to it. The addition of the letters “sk” which only repeats the part of the mark is an obvious misspelling and does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s mark.
The Panel finds it to be a case of typosquatting (see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9 and cases cited therein).
For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the generic Top-Level Domain suffix “.com” may be disregarded (LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o., WIPO Case No. D2012-0607).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the SKYSCANNER mark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. (See WIPO Overview 3.0, section 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is not authorized by the Complainant to use the SKYSCANNER mark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. In particular, directing the disputed domain name to a parking page containing PPC links advertising services directly competitive with the Complainant’s business cannot be qualified as a bona fide offering of goods or services.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
The disputed domain name was registered over 10 years after the Complainant registered the SKYSCANNER mark. This together with the reputation of the SKYCANNER mark in the field of online tourism services indicates that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009‑0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009‑0113). In addition, the Respondent used a privacy shield for the registration of the disputed domain name. While the use of a privacy shield cannot be considered in itself as use in bad faith, once connected with additional elements, it clearly points towards a registration and use in bad faith (Jay Leno v. St. Kitts Registry, Domain Names Administration, WIPO Case No. D2009-0571).
Secondly, the disputed domain name currently resolves to the website containing PPC links advertising travel arrangement services similar to ones offered by the Complainant. Therefore, the Panel concludes that the Respondent intends to mislead consumers as to an affiliation with or connection to the Complainant in order to make profit.
The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, or endorsement of or affiliation with the website, pursuant to paragraph 4(b)(iv) of the Policy, and that the third element of paragraph 4(a) is satisfied.
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 <skskyscanner.com> be transferred to the Complainant.
Piotr Nowaczyk
Sole Panelist
Date: January 30, 2020