WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Gabriella Garlo
Case No. DCO2020-0087
1. The Parties
The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Gabriella Garlo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <skycanner.co> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2020. On November 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 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 the Complainant on November 26, 2020, 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 26, 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 the Respondent of the Complaint, and the proceedings commenced on November 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2020.
The Center appointed William R. Towns as the sole panelist in this matter on December 28, 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.
4. Factual Background
The Complainant, a company incorporated in the United Kingdom and trading since as early as 2002, operates a global travel search engine enabling customers to search for, find, and book flights, hotels and car rentals online. The Complainant’s “www.skyscanner.com” website receives approximately 100 million visits per month, and the Complainant’s smart device application to date has been downloaded a remarkable 70 million times. The Complainant’s services are provided in over thirty languages and in seventy currencies. The Complainant was acquired in November 2016 by Ctrip, a Chinese tourism group, for approximately GBP 1.4 billion.
The Complainant is the owner of numerous trademark registrations for its SKYSCANNER mark, including among others the following:
- United Kingdom trademark no. UK00002313916, filed on October 23, 2002, and registered on April 30, 2004;
- International trademark registration No. 1030086 for SKYSCANNER, designating, inter alia, the Russian Federation and the European Union, and registered on December 1, 2009, for services in international classes 35, 39, and 42;
- International trademark registration No. 1133058, SKYSCANNER (logo), designating, inter alia, the United States of America, and registered on October 22, 2013, for services in international classes 35, 39, and 42; and
- International trademark registration No. 0900393, SKYSCANNER (word), designating, inter alia, the United States and the European Union, and registered on May 15, 2007, for services in international classes 35, 38, and 39.
The Complainant’s SKYSCANNER mark consistently has been recognized by UDRP panelists as a well-known or famous mark. See, e.g., Skyscanner Limited v. Egor Kargapolov, WIPO Case No. D2018-0692; Skyscanner Limited v. Milen Radumilo, WIPO Case No. D2019-0787; Skyscanner Limited v. Domain Administrator, China Capital, WIPO Case No. D2019-2852; Skyscanner Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Petrov Petya, WIPO Case No. D2020-0854; Skyscanner Limited v. Sunne Khurana, Eros Group, WIPO Case No. D2020-0907; Skyscanner Limited v. WhoisGuard, Inc. / Julia Kitsune, WIPO Case No. D2020-2652; Skyscanner Limited v. Khaled Samir, WIPO Case No. D2020-2669.
The disputed domain name <skycanner.co> was registered on October 7, 2020, according to the Registrar’s WhoIs records. The disputed domain name presently does not resolve to an active website.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name <skycanner.co> is confusingly similar to the Complainant’s registered SKYSCANNER mark. The Complainant observes that that the disputed domain name <skycanner.co> is an intentional misspelling of the Complainant’s mark. The Complainant adds that the Top-Level Domain (“TLD”) need not be considered when assessing the identity or confusing similarity of the Complainant’s mark.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant explains that the Respondent has not been authorized to use the disputed domain name, the Complainant’s SKYSCANNER mark, or any variation thereof. The Complainant submits that the Respondent has not been commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant further observes that the Respondent has neither used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, adding that the disputed domain name does not resolve to any active website.
The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent was aware of the Complainant’s SKYSCANNER mark when registering the disputed domain name, given the Complainant’s 18 years of international growth and the much publicized acquisition of the Complainant by Ctrip in 2016 for approximately GBP 1.4 billion. The Complainant asserts there is no other plausible reason why the Respondent would have deliberately registered a misspelling of the Complainant’s well-known SKYSCANNER mark if not to exploit and profit from the Complainant’s mark. The Complainant further submits that the Respondent’s passive holding of the disputed domain name does not preclude a finding of bad faith in the attendant circumstances of this case, citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is concerned with providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <skycanner.co> is confusingly similar to the Complainant’s SKYSCANNER mark, in which the Complainant has established rights through registration and extensive use in commerce. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
The Complainant’s distinctive SKYSCANNER mark is recognizable in the disputed domain name.2 The Respondent’s omission of the second letter “s” in disputed domain name does not dispel the confusing similarity of the disputed domain name to the Complainant’s SKYSCANNER mark, and as such constitutes typosquatting.3 When the relevant trademark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.4 The country-code Top-Level Domain (“ccTLD”) – in this case “.co” – is generally disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy.5
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s SKYSCANNER mark. The Respondent nevertheless registered the disputed domain name, which is confusingly similar to the Complainant’s mark, and has knowingly engaged in typosquatting. The disputed domain name does not resolve to an active website.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the 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 has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel concludes from the record in this case that the Respondent was aware of the Complainant and had the Complainant’s SKYSCANNER mark in mind when registering the disputed domain name. As noted above, the Respondent has engaged in the bad faith practice of typosquatting, and the Panel concludes that the Respondent in all likelihood registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s SKYSCANNER mark.
Having regard to the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel finds that the Respondent has neither used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services within the meaning paragraph 4(c)(i) of the Policy, and is not making a legitimate noncommercial or fair use of the disputed domain names for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the contemplation of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As previously noted, the Panel finds that the Respondent was aware of the Complainant and had the Complainant’s distinctive and well-known SKYSCANNER mark in mind when registering the disputed domain name. The Respondent intentionally has engaged in the bad faith practice of typosquatting, seeking to capitalize on the reputation and goodwill of the Complainant’s mark.
The Respondent’s passive holding of the disputed domain names does not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, “[…] the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” See also Red Bull GmbH v. Kevin Franke, WIPO Case No. D2012-1531.
The Panel considers the following circumstances to be indicative of the Respondent’s bad faith under Telstra Corporation Limited v. Nuclear Marshmallows, supra. As previously noted, the Complainant’s SKYSCANNER mark is distinctive and well known, and it is clear beyond cavil that the Respondent was aware of and targeted the Complainant’s mark when registering the disputed domain name. Absent any explanation from the Respondent, the Panel cannot conceive of any plausible good faith use of the disputed domain name that could be made by the Respondent. The Respondent’s conduct in these circumstances suggests opportunistic bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <skycanner.co> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: January 7, 2021
1 See WIPO Overview 3.0, section 1.7.
2 See WIPO Overview 3.0, section 1.8. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
3 Typosquatting is characterized by a domain name consisting of a common, obvious, or intentional misspelling of a trademark, and is generally held to be confusingly similar for purposes of the first element of the Policy. See WIPO Overview 3.0, section 1.9, and relevant decisions.
4 WIPO Overview 3.0, section 1.8.
5 See WIPO Overview 3.0, sections 1.11.1 and 1.11.2.