WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Leena Padhra

Case No. D2018-2276

1. The Parties

The Complainant is Skyscanner Limited of London, the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by Keltie LLP, United Kingdom.

The Respondent is Leena Padhra of Enfield, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <skyscan.flights> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2018. On October 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 10, 2018 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 16, 2018 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 October 16, 2018

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 October 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2018. The Response was filed with the Center on October 29, 2018.

The Center appointed David Taylor as the sole panelist in this matter on November 16, 2018. 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, Skyscanner Limited, is a company based in the United Kingdom. The Complainant was founded in 2004 and specialises in travel search and booking services online available at “www.skyscanner.net”. The Complainant has registered trade mark rights in the term SKYSCANNER for services in classes 35, 38, 39 and 42, in many jurisdictions around the world, such as, but not limited to:

- International Trade Mark No. 1030086, SKYSCANNER, registered on December 1, 2009;

- International Trade Mark No. 1133058, SKYSCANNER, registered on October 22, 2013;

- Indian Trade Mark No. 2287020, SKYSCANNER, registered on February 22, 2012 and

- United Kingdom Trade Mark No. 2313916, SKYSCANNER, registered on April 30, 2004.

The Respondent is Leena Padhra, an individual based in the United Kingdom. No additional information about the Respondent is known.

The Domain Name <skyscan.flights> was registered by the Respondent on November 24, 2016. At the time the Complaint was filed the Domain Name pointed to a website mimicking the Complainant’s official website and offering travel arrangement services. The website to which the Domain Name used to point also comprised a truncated version of the Complainant’s logo.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that its official website attracts sixty million visits per month and that its SKYSCANNER smart device app has been downloaded seventy million times. According to the Complainant, its services are available in over thirty languages and in seventy currencies. The Complainant states that its SKYSCANNER trade mark, first adopted in the year 2004, has gained substantial and worldwide reputation. As evidence, the Complainant supplied a list of its trade mark registrations certificates.

In response to each of the requirements under the Policy, the Complainant asserts as follows:

(i) The Domain Name is confusingly similar to the Complainant’s trade mark

The Complainant argues that the Domain Name <skyscan.flights> is highly similar to its SKYSCANNER trade mark as the Domain Name replicates the first seven characters of the Complainant’s trade mark, with the addition of a dot and the suffix “.flights”, which refers to the Respondent’s target industry and the industry in which the Complainant enjoys global reputation.

(ii) The Respondent has no rights or legitimate interests in the Domain Name

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name. Moreover, the Complainant asserts that the Respondent does not own any registered rights in the Complainant’s trade mark which is partly comprised in the Domain Name. The Complainant also states that the terms “SKYSCANNER” and “SKYSCAN” are not descriptive in any way, nor do they have any generic or dictionary meaning.

Furthermore, the Complainant underlines that it has not given its consent for the Respondent to use a confusingly similar variation of its registered trade mark in a domain name registration.

The Complainant also argues that the Respondent is not commonly-known as “SKYSCAN” and even if the Respondent considers itself commonly-known as “SKYSCAN”, the Complainant submits that the Respondent’s use of such name constitutes bad faith insofar as the Respondent’s interest cannot be legitimate nor is there a bona fide use of the Domain Name under the Policy.

The Complainant submits that the Domain Name points to a copycat website offering travel arrangement services. According to the Complainant, there is no evidence that the Respondent is using the Domain Name in connection with a bona fide offering of goods and services since the website to which the Domain Name is pointing contains a truncated version of the Complainant’s Skyscanner logo. The Complainant therefore argues that the Respondent is targeting the Complainant’s famous trade mark in a manner that will damage the Complainant’s reputation. According to the Complainant, such use cannot constitute a legitimate interest of bona fide use of the Domain Name.

Moreover, the Complainant makes reference to the Oki Data Americas, Inc. v. ASD Inc., WIPO Case No. D2001-0903 to assert that there is more than one element indicating the Respondent’s lack of legitimacy and commercial use of the Domain Name. The Complainant asserts that the Respondent’s website associated with the Domain Name offering goods and services does not include a disclosure of the Respondent’s relationship with the trade mark owner.

As a result, the Complainant submits that the Respondent cannot have a legitimate or noncommercial interest in the Domain Name.

(iii) The Domain Name was registered and is being used in bad faith

The Complainant submits that the Respondent registered and uses the Domain Name in bad faith.

The Complainant submits that according to the WhoIs record, the Domain Name <skyscan.flight> was registered on November 24, 2016, fourteen years after the Complainant first applied to register its SKYSCANNER trade mark. The Complainant further submits that the Respondent registered the Domain Name in full knowledge of the Complainant’s Rights.

The Complainant underlines that the Domain Name points to a live website displaying a travel aggregator tool which contains a strikingly similar logo to the Complainant’s Skyscanner logo and deliberately targets the Complainant’s famous trade mark in a manner that will damage the Complainant’s reputation.

Furthermore, the Complainant submits that the Respondent uses the Domain Name to attract the Complainant’s consumers for commercial gain. According to the Complainant, the Respondent’s use of the Domain Name results in the creation of a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

The Complainant also argues that the Respondent’s ownership of the Domain Name may cause damage to consumers visiting the website associated with the Domain Name and to the reputation that the Complainant enjoys in its SKYSCANNER trade mark. The Complainant submits that it is a matter of time before actual damage is caused, if it has not been caused already.

Finally, the Complainant underlines that the absence of a response from the Respondent indicates that the Domain Name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.

In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel notes that the Respondent did not reply to the Complainant’s contentions. The Respondent’s failure to respond, however, does not automatically result in a decision in favor of the 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 aforementioned provisions into consideration, the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has supplied evidence that it has registered trade mark rights in the term SKYSCANNER in many jurisdictions and in connection with travel search and booking services online. The Panel is therefore satisfied that the Complainant has established relevant trade mark rights.

The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trade mark. In this regard, the Panel notes that the Domain Name <skyscan.flights> incorporates the dominant part of the Complainant’s distinctive SKYSCANNER trade mark. The Panel finds that the omission of the three letters “NER” in the Domain Name is insufficient to avoid the confusing similarity with the Complainant’s trade mark. See section 1.8 of the WIPO Overview 3.0: “Where the relevant trade mark is recognizable within the Domain Name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”.

Furthermore, it is widely accepted that the generic Top-Level Domain (“gTLD”) is generally irrelevant for the purpose of assessing identity or confusing similarity between a trade mark and a domain name.
The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trade mark.

The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including but not limited to:

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

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
A complainant is required to make a prima facie case that the 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 the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name in question. If, however, the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See section 2.1 of the WIPO Overview 3.0.

The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Name and that, as a result of his default, the Respondent has failed to rebut such a showing.

The Complainant has asserted that the Respondent is not affiliated or connected in any way with the Complainant and nor has he been authorised by the Complainant to make any use of its SKYSCANNER trade mark. There is no evidence that the Respondent is commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy.

The Respondent’s use of the Domain Name which is confusingly similar to the Complainant’s trade mark, for a website offering identical or similar services to those for which the Complainant’s trade mark has been registered (mainly travel services, hotel booking and car rentals via the internet) cannot constitute a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy. See, for instance, America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (holding that “it would be unconscionable to find a bona fide offering of services in a respondent’s operation of website using a domain name which is confusingly similar to the complainant’s mark and for the same business”). Furthermore, the Respondent’s use of the Domain Name to point to a website mimicking the Complainant’s official website demonstrates that the Respondent was seeking to take advantage of the Complainant’s rights and therefore such use cannot be considered legitimate non-commercial or fair use of the Domain Name, in accordance with paragraph 4(c)(iii) of the Policy.

Finally, the Respondent’s lack of rights or legitimate interests in the Domain Name may be inferred from the Respondent’s failure to submit a response to the Complaint. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).

The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainant’s trade mark rights in SKYSCANNER in connection with travel search and booking services online significantly predate the registration date of the Domain Name. As described above, the Complainant’s rights date back to 2004 whereas the Domain Name was registered in 2016.

Furthermore, the Domain Name consists of the dominant part of the Complainant’s SKYSCANNER trade mark under the gTLD “.flights” which refers to the Complainant’s industry. Given this, together with the Respondent’s use of the Domain Name as described below, the Panel is of the view that the Respondent registered the Domain Name with prior knowledge of the Complainant’s trade mark rights with the intention of taking advantage of such rights. As such, the Panel finds that the Respondent registered the Domain Name in bad faith.

The Panel further finds that the Respondent’s use of the Domain Name also constitutes bad faith. At the time of the filing of the Complaint, the Domain Name, which is confusingly similar to the Complainant’s trade mark, was being used by the Respondent to resolve to a website offering identical or similar services to those for which the Complainant’s trade mark has been registered and prominently displaying a truncated version of the Complainant’s logo. Furthermore, the website associated with the Domain Name had the same “look and feel” as that of the Complainant’s official website. The registration of the Domain Name under the “.flights” gTLD, reflecting the sector in which the Complainant operates, increases the likelihood that Internet users may associate the Domain Name with the Complainant and its trade mark. The Panel therefore finds that by using the Domain Name the Respondent was intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the its website, in accordance with paragraph 4(b)(iv) of the Policy.

The Panel therefore finds that the Respondent registered and was using the Domain Name in bad faith.

Accordingly, the Complainant has satisfied 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 Domain Name <skyscan.flights> be transferred to the Complainant.

David Taylor
Sole Panelist
Date: November 30, 2018