WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Privacy service provided by Withheld for Privacy ehf / asddwq qwdasd, av, Igor Kosuems, Nikolai Arka, Yurii Frol

Case No. D2021-2660

1. The Parties

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

The Respondents are Privacy service provided by Withheld for Privacy ehf, Iceland / asddwq qwdasd, av, Igor Kosuems, Nikolai Arka, and Yurii Frol, Russian Federation.

2. The Domain Names and Registrar

The disputed domain names <skyscanner.bond>, <skyscanner.global>, <skyscanner.one>, <skyscanners.life>, and <skyskanner.store> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2021, followed by a revised version with two added domain names on that same day. On August 13, 2021 and August 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 14 and 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent email communications to the Complainant on August 17 and 19, 2021, providing the registrants 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 August 19, 2021.

The Center verified that the revised 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 Respondents of the Complaint, and the proceedings commenced on September 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 29, 2021.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 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 Background

The Complainant is a provider of flight search and price comparison as well as travel reservation services, also counting with a mobile application (“app”), downloaded over 70 million times.

The Complainant owns the <skyscanner.net> domain name which has been ranked 1,671th in global Internet traffic according to the Alexa platform (Annex 3 to the Complaint) and attracts more than 100 million monthly visits, offering its services in overt 30 languages and 70 currencies.

In addition to that, it is the owner of several trademark registrations around the world, amongst which are the following (Annex 2 to the Complaint):

- International registration No. 900393 for the word mark SKYSCANNER, registered on March 3, 2006, in classes 35, 38, and 39;
- International registration No. 1030086 for the word mark SKYSCANNER, registered on December 1, 2009, in classes 35, 39, and 42; and
- European Union registration No. 18069699 for the word mark SKYSCANNER, registered on September 28, 2019, in class 43.

The domain names under dispute are the following:

5. Parties’ Contentions

A. Complainant

The Complainant asserts to enjoy a substantial and global reputation in its SKYSCANNER trademark as recognized in past UDRP decisions (Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983, and Skyscanner Limited v. Contact Privacy Inc. Customer 1244355693 / Mrs. K Ananthan, WIPO Case No. D2019-0988).

According to the Complainant, the disputed domain names are under common control given that they were registered: (i) within a single one-month period; (ii) using the same Registrar; and (iii) sharing identical name servers.

Under the Complainant’s view, the disputed domain names are aurally identical to and visually similar to either an identical or highly similar degree with the Complainant’s SKYSCANNER trademark.

Regarding the absence of the Respondents’ rights or legitimate interests, the Complainant argues that:

i) the Respondents do not own any registered rights in any trademarks which comprise part or all of the disputed domain names;

ii) the term “skyscanner” is not descriptive in any way, nor does it have any generic, dictionary meaning, not having the Complainant given its consent for the Respondents to use its registered trademarks in domain name registrations;

iii) in spite of not being presently in use, prior to the filing of this complaint, the disputed domain names <skyscanner.one>, <skyscanners.life>, and <skyskanner.store> resolved to websites that offered travel arrangement services, in direct conflict with the services of the Complainant, being the website relating to <skyscanner.one>, a complete reproduction of the Complainant’s website dedicated to the Russian market (Annex 4 to the Complaint);

iv) given the famous nature of the Complainant’s trademark and the fact that no other individual or business owns registered trademark rights in the Skyscanner trademark, it is inevitable that visitors to the disputed domain names would mistakenly believe there to be an association with the Complainant.

As to the registration and use of the disputed domain names in bad faith, the Complainant states that:

i) the Respondents knew of the Complainant’s trademark which enjoys “global fame” when registering the disputed domain names given the reproduction of the Complainant’s website dedicated to the Russian market in the webpage that resolved from the <skyscanner.one> disputed domain name and the use of the disputed domain names <skyscanners.life> and <skyskanner.store> in connection with websites offering travel arrangement services in direct competition with the Complainant;

ii) the present passive holding of the disputed domain names constitutes use in bad faith especially since the Respondents have taken steps to mask its identity through WhoIs privacy services and there is no plausible explanation for the selection of the disputed domain names in view of the Complainant’s well-known trademark depicted therein.

B. Respondents

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain names.

In accordance with paragraph 14(a) of the Rules, if the Respondents do not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

Before turning to these questions, however, the Panel needs to address the issue of the consolidation of multiple Respondents.

A. Consolidation of Multiple Respondents

The Complainant requests that this Panel accept multiple Respondents in a single proceeding in view of the facts enumerated at the section 5.A. above.

Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”

All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the five disputed domain names dealt with at the same procedure, given that: (a) three of the five disputed domain names were registered on the same day and the remaining two disputed domain names within a few weeks; all disputed domain names share the (b) same Registrar (c) identical domain name servers and (d) a similar naming pattern; and (e) no objection was made by the Respondents regarding consolidation.

This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all Parties.

B. Identical or Confusingly Similar

The Complainant has established rights over the SKYSCANNER trademark duly registered in several jurisdictions across the world (Annex 2 to the Complaint).

The disputed domain names <skyscanner.bond>, <skyscanner.global>, <skyscanner.one> and <skyscanners.life> reproduce the Complainant’s trademark in its entirety. The disputed domain name <skyskanner.store> replaces the letter “c” in the Complainant’s trademark for the letter “k”, yet maintaining equivalent phonetical aspect.

It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. (WIPO Overview 3.0, section 1.7).

For the reasons above, the Panel finds that the disputed domain names are either identical or confusingly similar to the Complainant’s trademark.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that may indicate the Respondents’ rights or legitimate interests in the disputed domain names. These circumstances are:

(i) before any notice of the dispute, the Respondents’ use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondents (as an individual, business, or other organization) have been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or

(iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondents, in not responding to the Complaint, have failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondents under the second UDRP element.

In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondents which have not been commonly known by the disputed domain names and neither has received the Complainant’s consent to use its registered trademarks in domain name registrations.

Also according to the evidence submitted by the Complainant, the use made of one of the disputed domain names in connection with a reproduction of the Complainant’s website dedicated to the Russian market and the use of the disputed domain names <skyscanners.life> and <skyskanner.store> in connection with websites offering travel arrangement services in direct competition with the Complainant, clearly suggests at least an affiliation with the Complainant which in fact does not exist. Such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain names in these circumstances. Notwithstanding the content, the construction of the disputed domain names themselves, the majority being identical to the Complainant’s trademark, carries a high risk of implied affiliation that cannot confer rights or legitimate interests upon the Respondents.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondents do not have rights or legitimate interests with respect to the disputed domain names.

D. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, both the registration and use of the disputed domain names in bad faith can be found pursuant to Policy, paragraph 4(b)(iv) in view of the reproduction of the Complainant’s website dedicated to the Russian market in the webpage that resolved from the <skyscanner.one> disputed domain name and the use of the disputed domain names <skyscanners.life> and <skyskanner.store> in connection with websites offering travel arrangement services in direct competition with the Complainant.

There is no evidence demonstrating that the remaining two disputed domain names have resolved to an active website. Regardless, and in consideration that all of the disputed domain names are presently inactive, the passive holding of a disputed domain name does not prevent a finding of bad faith as explained in section 3.3 of WIPO Overview 3.0.

Other factors that corroborate the Panel’s finding of bad faith of the Respondents are:

a. the absence of a formal Response by the Respondents;
b. the choice to retain a privacy protection service so as to conceal the Respondents’ identities; and
c. the indication of what appears to be false or incomplete contact details provided in WhoIs information relating to the disputed domain name, communication not being delivered to it by courier.

For the reasons above, the Respondents’ conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names.

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 names, <skyscanner.bond>, <skyscanner.global>, <skyscanner.one>, <skyscanners.life>, and <skyskanner.store> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: October 21, 2021