WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Colours Ltd

Case No. D2019-1541

1. The Parties

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

The Respondent is Colours Ltd, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <sky-scanner.net> is registered with Key-Systems GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2019. On July 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 2019, 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 July 8, 2019 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 July 9, 2019.

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 July 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2019.

The Center appointed Alistair Payne as the sole panelist in this matter on August 22, 2019. 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 operates an Internet based airline fare aggregation business through its SKYSCANNER websites and in particular at “www.skyscanner.net”. It owns numerous trade mark registrations worldwide for its SKYSCANNER trade mark including the European Union designation of International Trade Mark Registration No. 900393 registered on March 3, 2006, and United Kingdom Trade Mark Registration No 2313916 registered on April 30, 2004.

The disputed domain name was registered by the Respondent on December 9, 2010, having originally been registered by a third party who had used it to point to a website containing pictures of the sky taken from commercial air plane flights. At the date of the Complaint the disputed domain name redirected to the Complainant’s own website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights in its SKYSCANNER trade mark as noted above and that the part of the disputed domain name before the Top-Level Domain root “.net” only differs from its SKYSCANNER trade mark by the addition of a hyphen. This says the Complainant is not sufficient to distinguish the disputed domain name and as a result it is confusingly similar to the Complainant’s SKYSCANNER trade mark.

The Complainant says that so far as it is aware the Respondent does not own any registered rights in any trade marks for SKYSCANNER, the Complainant has never consented to the Respondent’s use of the SKYSCANNER mark, the Respondent is not commonly known by the SKYSCANNER name or mark and the SKYSCANNER mark is not a generic or commonly used dictionary term. In addition, it says that the disputed domain name automatically diverts to the Complainant’s website and there is no evidence that the Respondent has ever made any demonstrable preparations to use the disputed domain name for legitimate purposes or in relation to a bona fide offering of goods or services.

The Complainant submits that it is Europe’s largest travel fare aggregator and travel metasearch engine and that its SKYSCANNER website at “www.skyscanner.net” now attracts 80 million visits per month and that its smart device application has been downloaded 70 million times. It says that even seven years ago it was noted by a panelist in a previous domain name dispute case that the Complainant’s website enjoyed 30 million visits per month (Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983). Considering the degree of renown attaching to its mark even as the date of acquisition being December 8, 2010, the Complainant submits that the Respondent must have been aware of its SKYSCANNER mark and business when it acquired the disputed domain name in 2010 and that it did so in bad faith for its own purposes.

The Complainant notes that prior to the Respondent’s acquisition of the disputed domain name, the disputed domain name was owned by an individual based in the United Kingdom who used it to resolve to a website containing pictures of the sky taken by commercial airline pilots and that after acquisition the Respondent carried over this usage until it eventually redirected the disputed domain name to the Complainant’s website. The Complainant also notes that two months before the Respondent’s acquisition of the disputed domain name, it registered the domain name <kirtgeiger.com> which it says is a deliberate misspelling of the trade mark owned by Kurt Geiger, the upmarket British footware and accessories retailer. This says the Complainant is evidence not only the Respondent was aware of typosquatting at this time, but that it was actively engaged in typosquatting of British based businesses. It notes also that by 2013, the Respondent had been involved in three adverse UDRP decisions which indicates a pattern of bad faith conduct.

In essence the Complainant submits that the Respondent has registered the disputed domain name as a “blocking” registration. In addition it says that the Respondent’s use of the disputed domain name is designed to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website which use takes unfair advantage of the reputation in the Complainant’s trade mark rights. Further, it submits that this is otherwise a passive holding of the disputed domain name by the Respondent which in the circumstances and in the absence of explanation by the Respondent amounts to a holding in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns numerous registered trade mark rights for its SKYSCANNER mark including the European Union designation of International trade mark registration number 900393 registered on March 3, 2006, and United Kingdom trade mark registration number 313916 registered on April 30, 2004. The only difference between the main element of the disputed domain name (not including the “.net” generic Top-Level Domain root) and these marks is the inclusion of a hyphen. This does not prevent a finding of confusing similarity and the Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s SKYSCANNER trade mark and accordingly that the Complainant succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that so far as it is aware the Respondent does not own any registered rights in any trade marks for SKYSCANNER and that it has never consented to the Respondent’s use of the SKYSCANNER mark. The Complainant also asserts that the Respondent is not commonly known by the “sky-scanner” name or mark and that the SKYSCANNER mark is not a generic or commonly used dictionary term. The Complainant notes that the disputed domain name automatically redirects Internet users to the Complainant’s website and that there is no evidence that the Respondent has ever made any demonstrable preparations to use the disputed domain name for its own legitimate purposes or in relation to a bona fide offering of goods or services offered by the Respondent.

The Respondent has not rebutted this prima facie case that it has no rights or legitimate interests in the disputed domain name and for that reason and also considering the evidence of bad faith discussed under Part C below, the Panel finds that the Complainant has made out its case that the Respondent has no rights or legitimate interests in the disputed domain name. As a result, the Complainant also succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was acquired by the Respondent on December 8, 2010, having originally been registered by a third party who had used it to point to a website containing pictures of the sky taken from commercial airplane flights. By this date the Complainant had been using its SKYSCANNER mark for a number of years since at least 2004 which was also the year of its United Kingdom trade mark registration with numerous other trade mark registrations to follow in the succeeding years. The evidence, as noted in a previous decision (Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983), suggests that the Complainant had developed a very substantial following of 30 million views per month for its websites by 2012. Therefore, the Panel infers that by the date of the Respondent’s acquisition of the disputed domain name in 2010, the Complainant’s SKYSCANNER mark had developed a substantial reputation with Internet users and it is more likely than not that the Respondent was aware of the Complainant’s mark when it registered the disputed domain name and did so purposefully with knowledge.

This inference is only reinforced by the Complainant’s evidence that the Respondent has been associated with a number of cases of typosquatting in the past and only two months before the Respondent’s acquisition of the disputed domain name had registered the domain name <kirtgeiger.com> which would appear to be a deliberate misspelling of the trade mark owned by Kurt Geiger, the upmarket British footwear and accessories retailer. Further the Complainant has submitted evidence that the Respondent has registered other domain names which appear to typosquat the trade marks of well reputed brands and in addition it appears that the Respondent has been involved in three adverse UDRP decisions in relation to cases of cybersquatting, all of which is indicative of a pattern of bad faith conduct (Military Order of the Purple Heart and Military Order of the Purple Heart Service Foundation, Inc. v. Colours Ltd,WIPO Case No. D2013-0950; Asurion, LLC v. Colours Ltd, WIPO Case No. D2013-0388; Inter Ikea Systems B.V. v. Colours Ltd, WIPO Case No. D2011-1939).

Based on the evidence from the Way Back Machine, as submitted by the Complainant, the Respondent facilitated, by December 30, 2011, that the disputed domain name would resolve to the website operated by another aggregator, Cheapoair and at some point after that time redirected it to holding websites. By March 2015 the Respondent had redirected the disputed domain name to what appears to be a search engine’s site. Finally, the Respondent redirected the disputed domain name to the Complainant’s own website. Thus, at the date of the Complaint the disputed domain name redirected Internet users to the Complainant’s website.

It seems to this Panel likely that the Respondent has finally sought to redirect the disputed domain name to the Complainant’s website in order to try to avoid a finding of bad faith use. However, such use cannot amount to a use of the disputed domain name in good faith and even prior to the date on which the disputed domain name was redirected to the Complainant’s site, there is evidence that the disputed domain name redirected Internet users to another aggregator’s (Cheapoair’s) website. This is evidence under paragraph 4(b)(iv) of the Policy that by using the disputed domain name the Respondent has intentionally attempted to attract Internet users to an online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of that location or of the service at that location. The Panel infers, based on the evidence of the history of the Respondent’s other cybersquatting activities, that this was most likely for commercial gain.

The Complainant has submitted that the Respondent has registered the disputed domain name as a “blocking” registration. It certainly appears to the Panel that considering the evidence of the Respondent’s reputation in its mark by the date of the Respondent’s acquisition of the disputed domain name and the Respondent’s apparent failure during a period of many years to use or to make demonstrable preparations to use the disputed domain name for bona fide purposes, that this is a case of registration and use in bad faith.

Under paragraph 4(b)(ii) of the Policy there is evidence of the registration and use of a domain name in bad faith where a respondent has registered a domain name in order to prevent the owner of a trade mark or service mark from reflecting the mark in a corresponding domain name, provided that there is evidence of a pattern of such conduct. In this case the Panel finds that the Respondent has registered the disputed domain name in order to block the Complainant’s registration of this slight variant of its mark and the Panel notes that the disputed domain name, even including the Top-Level Domain root only differs from the Complainant’s domain name “www.skyscanner.net” by the addition of a hyphen. Considering the evidence, as noted above of the Respondent’s past history of cybersquatting cases the Panel therefore finds that the requirements of paragraph 4(b)(ii) of the Policy are satisfied and that this is exactly the sort of conduct that the Policy was intended to proscribe.

Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith and that the Complainant succeeds under this limb 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 <sky-scanner.net> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: September 5, 2019