WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2019-1951

1. The Parties

The Complainant is Skyscanner Limited, United Kingdom (“UK”), represented by Keltie LLP, UK.

The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Name and Registrar

The disputed domain name <skyscaners.net> is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2019. On August 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2019.

The Center appointed Peter Burgstaller as the sole panelist in this matter on September 9, 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 provides services under its trademark SKYSCANNER especially regarding flight search and price comparison on an online basis. In order to do this, the Complainant operates websites under its trademark SKYSCANNER which actually attract 80 million visits per month and provides smart device apps which have been downloaded over 70 million times. The Complainant’s services are available in over 30 languages and 70 currencies worldwide. Moreover, the acquisition of the Complainant by Ctrip, one of China’s largest online travel agency, attracted strong media attention in 2016 (Annex 3 to the Complaint).

The Complainant has registered several trademarks from 2002 onwards and is now the owner of various trademark registrations in connection with flight search and price comparison services throughout the world, especially the UK wordmark SKYSCANNER Registration No. 2313916 filed on October 23, 2002, and registered on April 30, 2004, which is also the basis mark for the European Union designation of International trademark Registration No. 900393 registered on March 3, 2006. All of these trademarks contain the word “skyscanner” (Annex 2 to the Complaint).

The disputed domain name <skyscaners.net> was originally registered by CKMK Holdings P/L at CK & MK Trust on February 13, 2006 (Annex 5 to the Complaint); the disputed domain name was finally acquired by the Respondent during the period December 23, 2017, to February 11, 2018 (Annex 5 to the Complaint). The disputed domain name automatically redirected to the Complainant’s website dedicated to the Irish market (Annex 4 to the Complaint). The disputed domain name was offered for sale for USD 5,000 (Annex 7 to the Complaint).

The Complainant’s trademark registrations predate the registration of the disputed domain name by the Respondent.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s registered SKYSCANNER trademarks. The Complainant is the owner of various word and figurative trademark registrations throughout the world which contain the word “skyscanner”; the trademarks are registered mostly for the service classes 35, 38, and 39 but also for the classes 9, 42 and 43.

The Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use or register its SKYSCANNER trademarks or to seek registration of any domain name incorporating the aforesaid trademarks.

The Respondent has registered the disputed domain name in bad faith since because of the widespread recognition of the Complainant and its rights in the mark SKYSCANNER throughout the world it is highly unlikely that the Respondent was unaware of the Complainant and the Complainant’s rights in the SKYSCANNER marks when registering the disputed domain name. The Respondent also uses the disputed domain name in bad faith even though the disputed domain name automatically redirects to the Complainant’s website.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:
(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 with respect to 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

The disputed domain name <skyscaners.net> almost entirely incorporates and reproduces the Complainant’s wordmark SKYSCANNER; the disputed domain name only differs from the Complainant’s distinctive trademarks inasmuch as it omits the letter “n” and contains an additional “s”. However, it is this Panel’s view that this does not eliminate confusing similarity with the trademarks of the Complainant since the disputed domain name remains visually, aurally and conceptually highly similar with the Complainant’s trademarks.

It has also long been established under UDRP decisions that suffixes such as “.net” generic Top-Level Domain (“gTLD”) cannot typically negate identity or confusing similarity where it otherwise exists, as it does in the present case. When assessing identity or confusing similarity under the first element of the Policy, the gTLD may be ignored (see Deutsche Telekom AG v. Dexcom Holdings B.V., WIPO Case No. DTV2006‑0001; Société Anonyme des Eaux Minérales d’Evian v. Mr. Omar Haddedou, WIPO Case No. D2005-0432; UNIQA Insurance Group AG v. Heinz Hayderer, WIPO Case No. D2016-0082 under section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, previous panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).

In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks SKYSCANNER in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.

C. Registered and Used in Bad Faith

As stated in many decisions rendered under the Policy (see Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001), the Complainant must show that:

- the disputed domain name was registered by the Respondent in bad faith, and

- the disputed domain name is being used by the Respondent in bad faith.

The disputed domain name was originally registered after the Complainant accrued its trademark rights shown in the Complaint, but before the Complainant became so well known under its mark SKYSCANNER that it is today throughout the world. The Panel notes that it is well established under UDPR decisions that merely because a domain name is initially created by a registrant other than the respondent does not mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name (WIPO Overview 3.0, section 3.8).

For this Panel therefore the relevant date for scrutinizing the evidence put forward in this case is the date where the Respondent acquired the disputed domain name and that is the year 2017 or 2018.

It is the Panel’s conviction that following the Complainant’s evidence in this case the reputation of the SKYSCANNER trademarks makes it inconceivable that the Respondent registered or has used the disputed domain name without knowledge of the Complainant’s trademark rights and further that this leads to the necessary inference of bad faith.

Bad faith can be found where the Respondent “knew or should have known” of the Complainant’s trademark rights and, nevertheless registered the disputed domain name in which it had no rights or legitimate interests.

The fact that the Complainant’s trademark rights predate the registration date of the disputed domain name by the Respondent is moreover a strong evidence of bad faith; this is especially true since it is well established by many UDRP decisions that the Complainant’s SKYSCANNER trademarks are well known (see Skyscanner Limited v. G K, WIPO Case No. D2019-1947; Skyscanner Limited v. Chun Yuan Jiang, WIPO Case No. D2018-1741; Skyscanner Limited v. Domain May Be For Sale, Check afternic.com Domain Admin / Hulmiho Ukolen, WIPO Case No. D2017-1946; Skyscanner Limited v. Sachin Rawat, WIPO Case No. D2018-0959; Skyscanner Limited v. Mohan Pillai, WIPO Case No. D2019-0690).

Another aspect which leads this Panel to the conclusion of bad faith registration is that the disputed domain name almost entirely reproduces the distinctive SKYSCANNER mark which is highly unlikely without knowledge of the Complainant or its marks. It is moreover well-settled case law that the practice of typosquatting (“skyscaners” instead of “skyscanner”) may in itself be evidence of a bad faith registration of a domain name (see, e.g., Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069; Wal‑Mart Stores, Inc. v. Longo,WIPOCase No. D2004-0816; E. Remy Martin & C° v. Tayguara Helou, WIPO Case No. D2017-0791; see also WIPO Overview 3.0, section 1.9).

The disputed domain name is also being actively used by the Respondent. As can be seen from Annex 4 to the Complaint, the disputed domain name automatically redirects to the Complainant’s website dedicated to the Irish market, “www.skyscanner.ie”.

Since the Respondent did not show any rights or legitimate interests in respect of the disputed domain name and the Respondent knew of the Complainant and its rights (the Respondent redirected the disputed domain name to the Complainant’s website), this leads the Panel to the conclusion that the disputed domain name is being used in bad faith by the Respondent; this is in the Panel’s view all the more true as the Respondent offered the disputed domain name for sale for USD 5,000 (Annex 7 to the Complaint).

On the basis of the evidence put forward by the Complainant, it is the Panel’s conviction that the Respondent has registered and is using the disputed domain name in bad faith, in accordance with 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 <skyscaners.net> be transferred to the Complainant.

Peter Burgstaller
Sole Panelist
Date: September 21, 2019