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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Julian

Case No. D2021-2699

1. The Parties

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

The Respondent is Julian, the Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <skyiscanner.net> is registered with Eranet International Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2021. On the following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 2021, 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. On the same day, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Complainant filed an amendment to the Complaint.

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 August 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on October 14, 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 travel company. It holds multiple trademark registrations in multiple jurisdictions, including the following:

- United Kingdom trademark registration number UK00002313196 for SKYSCANNER, registered on April 30, 2004, specifying services in classes 35, 38, and 39, including certain travel information and arrangement services; and

- International trademark registration number 1030086 for SKYSCANNER, registered on December 1, 2009, designating multiple jurisdictions including the Russian Federation, and specifying services in classes 35, 39, and 42, including certain travel information and arrangement services.

The above trademark registrations remain current. The Complainant has registered the domain name <skyscanner.net> that it uses in connection with a global travel search site. According to evidence provided by the Complainant, Alexa ranked its website in 1671st position in global Internet traffic and engagement in the 90 day period ending November 12, 2019. Its acquisition by Ctrip International Ltd in 2016 received widespread international press coverage.

The Respondent is named in the Registrar’s WhoIs database merely as “Julian” with an incomplete contact address in the Russian Federation. The Respondent’s contact email username is “julianbates9193”.

The disputed domain name was registered on July 29, 2021. It resolves to a webpage displaying an image of an aeroplane wing in flight with a message in Russian inviting Internet users to confirm that they are not a robot by clicking on a button labelled “I am not a robot” in Russian.

The Registrar confirmed that the Registration Agreement for the disputed domain name is in English.

5. Parties’ Contentions

A. Complainant

The disputed domain name is virtually identical to the Complainant’s SKYSCANNER mark. The Complainant’s website currently attracts 100 million visits per month while its smart device application has been downloaded over 70 million times.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The term “Skyscanner” is not descriptive in any way, nor does it have any dictionary meaning. The Complainant has not given its consent for the Respondent to use its registered trademarks in a domain name registration. The Respondent is not commonly known by the disputed domain name. It is highly probable that the Respondent’s interest in the disputed domain name is to make money from it by creating a false association with the Complainant’s business. Such interest cannot be legitimate by any reasonable interpretation.

The disputed domain name was registered and is being used in bad faith. The disputed domain name was chosen deliberately by the Respondent, not only because of its proximity to the Complainant’s well-known SKYSCANNER trademark but also because of its proximity to the Complainant’s core domain name. The disputed domain name is used as a blocking registration. The Complainant submits that the Respondent’s passive holding of the disputed domain name constitutes use in bad faith, especially since the Respondent has taken steps to mask his identity.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

(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 respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the SKYSCANNER mark.

The disputed domain name wholly incorporates the SKYSCANNER mark with an additional letter “i” inserted after the “y”. The operational element of the disputed domain name is aurally identical to the SKYSCANNER mark. Further, the operational element of the disputed domain name is a misspelling of the mark, which constitutes an example of typosquatting. Given that every aspect of the mark remains clearly recognizable in the disputed domain name, this misspelling does not prevent a finding of confusing similarity with the Complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9.

The disputed domain name also includes a generic Top-Level Domain (“gTLD”) suffix “.net”. As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11.

Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or 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) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or

(iii) [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.

As regards the first and third circumstances set out above, the disputed domain name resolves to a webpage that asks Internet users to confirm that they are not a robot. The webpage does not state what, if anything, the site offers for Internet users who click on the “I am not a robot” button. The Panel recalls that the disputed domain name is a misspelling of the SKYSCANNER mark. The Complainant submits that it has not given its consent for the Respondent to use its registered trademarks in a domain name registration. In the Panel’s view, this evidence constitutes a prima facie case that the disputed domain name is not being used in connection with a bona fide offering of goods or services and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database is “Julian”, while his email username is “julianbates9193”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.

With respect to registration, the disputed domain name was registered in 2021, many years after the registration of the Complainant’s SKYSCANNER mark, including in the Russian Federation, where the Respondent is resident. The mark is not a dictionary word even though it is composed of two dictionary words. The disputed domain name incorporates the SKYSCANNER mark with an additional letter “i” inserted after the “y” and no other element besides the gTLD suffix “.net”. The operational element of the disputed domain name is aurally identical to the SKYSCANNER mark while the disputed domain name as a whole, including the gTLD suffix, is virtually identical to the Complainant’s domain name <skyscanner.net>. The Respondent offers no explanation for his choice of the disputed domain name. In view of these circumstances, the Panel is persuaded that the Respondent knew of the Complainant and its mark at the time at which he registered the disputed domain name.

With respect to use, the Respondent currently uses the disputed domain name to resolve to an active webpage. Although it is not clear what, if anything, the webpage offers to Internet users who click on the “I am not a robot” button, that circumstance does not preclude a finding of use in bad faith. In the present dispute, the evidence shows that the Complainant has acquired a strong reputation in the SKYSCANNER mark in the travel sector through its long-standing use of that mark in connection with its website and smart device application and through international press coverage. The disputed domain name appears to have no other purpose than to attract Internet users who seek the Complainant’s website but inadvertently mistype the Complainant’s website address in a browser and to divert them to the Respondent’s webpage. Further, the Respondent has provided incomplete contact name and address details in the Registrar’s WhoIs database to conceal his identity and whereabouts. The Respondent provides no explanation of any actual or potential good faith use of the disputed domain name. In all these circumstances, the Panel considers it more likely than not that the Respondent is using the disputed domain name in bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <skyiscanner.net> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: October 26, 2021

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