Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
Respondent is Contact Privacy Customer 0154971097, Canada / Micheal Ram, Abc Info, India.
The disputed domain name <flights-skysccanner.com> is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2020. On January 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2020, 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 Complainant on February 5, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 5, 2020.
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 Respondent of the Complaint, and the proceedings commenced on February 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 2, 2020. On the same day, Respondent submitted an informal email communication to the Center. On March 3, 2020, the Center sent an email communication to the parties inviting them to explore settlement negotiations. Complainant indicated on the same day that it does not wish to pursue settlement.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on March 9, 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.
Complainant is Skyscanner Limited.
Complainant has trademark rights in the SKYSCANNER mark and owns dozens of trademarks including the following ones:
- European Union (“EU”) designation of International Trademark Registration No. 0900393 for SKYSCANNER, registered on March 3, 2006, and covering, services in classes 35, 38, and 39, and duly renewed since then;
- EU designation of International Trademark Registration No. 1030086 for SKYSCANNER, registered on December 1, 2009, and covering services in classes 35, 39, and 42, duly renewed since then. This trademark also designates inter alia Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Belarus, Switzerland, China, Japan, Norway, Russian Federation, Singapore, Turkey, and Ukraine.
Complainant’s trademarks are mainly used in connection with worldwide travel booking services.
Complainant also owns the <skyscanner.net> domain name since July 3, 2002, that attracts 100 million visits per month and, to date, its SKYSCANNER smart device app has been downloaded over 70 million times.
Respondent registered the disputed domain name on June 14, 2019. The disputed domain name automatically redirected to a website that supplied travel arrangement services.
Firstly, Complainant argues that the disputed domain name is using Complainant’s trademarks with the addition of the letter “c”, which does not affect the pronunciation of the trademark. Furthermore, it argues that the addition of the term “flights” is describing a type of travel arrangement offered by Complainant.
Complainant states that the disputed domain name is confusingly similar to its SKYSCANNER trademarks.
Secondly, Complainant alleges that SKYSCANNER trademarks are highly distinctive since this term has no dictionary meaning. Saying so, Complainant adds that it did not give any consent to Respondent to use its trademarks, nor to register the disputed domain name.
Furthermore, Complainant argues that Respondent is not commonly known as “flights-skysccaner” and did not make any legitimate or bona fide use of the disputed domain name. Indeed, Complainant alleges that at the time of filling the Complaint, the disputed domain name was pointing to a competitive website with Complainant’s services, providing travel arrangement services, under a deliberate misspelling.
Finally, Complainant argues that the fact Respondent did not answer to the Complaint must lead to a presumption that Respondent has no rights over the SKYSCANNER sign.
Thirdly, Complainant alleges that the disputed domain name has been registered on June 14, 2019, thus 17 years after Complainant registered its first SKYSCANNER trademark. Regarding the global reputation of the SKYSCANNER mark, Complainant considers that Respondent registered the disputed domain name in the knowledge of its rights and that it can be no coincidence that Respondent chose to register a domain name that replicates Complainant’s distinctive trademark.
Furthermore, Complainant states that the fact that Respondent uses a WhoIs privacy service may constitute bad faith and create a likelihood of confusion with Complainant’s trademark and Complainant’s activity. Complainant alleges that Respondent would have targeted its business when registering the disputed domain name.
Respondent did not reply to Complainant’s contentions and is therefore in default.
Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, Complainant
must prove that each of the following three elements are present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and,
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Furthermore, paragraph 14(b) provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favor of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Taking the foregoing provisions into consideration the Panel finds as follows:
Paragraph 4(a)(i) of the Policy requires the Panel to consider in the first place, whether Complainant has established relevant trademark rights. The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test 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 disputed domain name”. See section 1.7 of the WIPO Overview 3.0.
Panel finds that Complainant has duly shown its trademark rights in the SKYSCANNER mark.
Indeed, the disputed domain name <flights-skysccanner.com> is confusingly similar to Complainant’s trademarks. It reproduces the SKYSCANNER marks with the mere inclusion of a letter “c”. This addition is only modifying the typological form of the said trademarks but does not modify its pronunciation.
Furthermore, the addition of the term “flights” at the beginning of the disputed domain name does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0.
Furthermore and regarding an established UDRP jurisprudence, the addition of the “.com” extension must only be perceived as a technical element of the disputed domain name. See Price Costco International Inc. v. Name Redacted, WIPO Case No. D2018-0102: “The extension ‘.com’ is considered as a technical element and has consequently no distinguishing effect”.
Therefore, the Panel considers that the disputed domain name <flights-skysccanner.com> is confusingly similar to the SKYSCANNER trademarks.
Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.
Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the disputed domain name.
Complainant is required to establish a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, Respondent fails to come forward with such relevant evidence, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
According to Complainant’s evidence, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
First, Complainant has shown that Respondent has no rights in the SKYSCANNER mark since it did not register any sign that would be similar.
Furthermore, Complainant did not give any authorization or license to Respondent to use its trademarks to register the disputed domain name and to directly refer to a sector of activity provided by Complainant.
Finally, Respondent did not respond to Complainant’s contentions, which is commonly considered as being capable of establishing the absence of rights or legitimate interests in the disputed domain name. See L’Oréal v. Yang Jian, WIPO Case No. D2018-2938: “Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name”.
Therefore, the Panel considers that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith.
First, Complainant alleged that the disputed domain name was registered in bad faith.
Respondent registered the disputed domain name many years after Complainant registered its trademarks. When looking for “skyscanner” on the Internet or even looking for “skysccanner”, the first results all point to Complainant’s website and are related to Complainant’s activity.
Furthermore, Complainant reasonably argued that the term “skyscanner” had no dictionary meaning. Thus, adding a simple letter to the SKYSCANNER mark does not change the pronunciation of the term and can appear as a mistake that many customers could make when looking for Complainant on the Internet. This is constitutive of typosquatting.
The addition of the term “flights” at the beginning of the disputed domain name increases the risk of confusion in public’s mind, since it designates one of the main parts of Complainant’s activity. It can easily be considered that the disputed domain name has been registered in bad faith.
As it has already been stated in a similar UDRP case, “[i]n the Panel’s view, it is obvious that at the time Respondent registered the disputed domain name it must have had the SKYSCANNER Trademark in mind, as Complainant secured registration for the trademark more than eight years before in India, and the SKYSCANNER Trademark has been used for many years worldwide, whereas Respondent immediately upon registration of the disputed domain name redirected the disputed domain name to a website offering services which competed with Complainant’s services and mimicked the SKYSCANNER Trademark” (see Skyscanner Limited v. Mohan Pillai, WIPO Case No. D2019-0690).
The Panel considers that the disputed domain name was registered in bad faith.
Secondly, Complainant argued that Respondent used the disputed domain name in bad faith.
The disputed domain name, at the time the Complaint was filed, was pointing to a website named “Flights Scanner Sky”, offering the same services as Complainant, namely flight arrangements, to different destinations.
Respondent did not use the same terminology for the disputed domain name and for the website. While the disputed domain name is <flights-skysccanner.com>, the terminology appearing on the website was different, namely “Flights-Scannersky”. This element may be constitutive of a use in bad faith, attracting users to the website by using a confusingly similar domain name to Complainant’s trademark.
As it has already been stated, Panel finds that the disputed domain name was used to disturb Complainant’s business. See Skyscanner Limited v. Sachin Rawat, Farebulk, WIPO Case No. D2018-0959: “[t]he Panel finds that Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under the Policy. The fact that the disputed domain name does not currently resolve to an active website does not preclude a finding of bad faith.”
Thus, the Panel finds that the disputed domain name is used in bad faith.
Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.
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 <flights-skysccanner.com> be transferred to Complainant.
Nathalie Dreyfus
Sole Panelist
Date: March 23, 2020