The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / VMI INC, United Kingdom.
The disputed domain name <scyscaner.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2019. On August 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 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 August 26, 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 August 27, 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 September 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2019.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on October 2, 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.
According to Annex 3 of the Complaint the Complainant is a leading online global travel search site specializing in offering a comparison website particularly for customers seeking cheap flights. It has been trading since 2003 and in late 2016 was sold to the Chinese Ctrip group as evidenced in Annex 5 to the Complaint.
It now has over 1,000 staff with offices in Barcelona, Beijing, Budapest, Edinburgh, Glasgow, London, Miami, Palo Alto, Shenzen, Singapore and Sofia. It estimates that it currently has over 700 million users.
As evidenced in the screenshot exhibited at Annex 3 to the Complaint the Skyscanner website now attracts 80 million visits per month and to date the SKYSCANNER smart device app has been downloaded over 70 million times. The Complainant’s services are available in over 30 languages and in 70 currencies.
The Complainant provides evidence of its trade mark rights throughout the world including:
(i). International Trade Mark Registration designating the European Union and the United States, no. 900393 for SKYSCANNER registered on March 3, 2006 in classes 35, 38 and 39 for inter alia; providing access to a search engine relating to travel, providing online travel information and arrangement services and travel information via a mobile phone.
(ii). International Trade Mark Registration designating the European Union, no 1030086 for SKYSCANNER registered on December 1, 2009, in classes 35, 39 and 42 for inter alia; providing advertising services via the Internet, travel information and arrangement services, and operation of a search engine related to travel.
(iii). International Trade Mark Registration designating Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Belarus, Switzerland, China, Japan, Norway, Russia Federation, Singapore, Turkey and Ukraine, no.1030086, for SKYSCANNER registered on December 1, 2009 in classes 35, 39 and 42 as in (ii) above.
In total the Complainant owns ninety one trade mark registrations containing the term SKYSCANNER including in the United States, India, United Kingdom, Canada and New Zealand.
Copies of certificates of registration for the above registrations or alternatively copies of trade mark office print-outs are exhibited at Annex 2 to the Complaint.
The Complainant also relies upon three previous UDRP Panel decisions: Skyscanner Limited v. Ali Karatas, Fast Line (UK) Ltd, WIPO Case No. D2016-0176; Skyscanner Limited v. Basit Ali,WIPO Case No. D2012-1983 and Skyscanner Limited v. Mohit Bajaj, WIPO Case No. D2016-1481 in which each of the UDRP Panels have held that the Complainant has rights in the mark SKYSCANNER.
In particular in Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983 the UDRP Panel held that the Complainant enjoys exclusive rights in the mark SKYSCANNER which when used in connection with its business and 30 million visits per month to its website constituted “compelling evidence that its SKYSCANNER trade mark enjoys considerable reputation”.
The disputed domain name <scyscaner.com> as evidenced in Annex 1 to the Complaint was registered on December 20, 2006. As evidenced in the Complaint, the disputed domain name redirects to the Complainant’s website “www.skyscanner.net”.
In the absence of a Response and evidence to the contrary the Panel finds the above evidence adduced by the Complainant to be true and proceeds to determine the Complaint accordingly.
The Complainant contends:
1. The Complainant has trade mark rights in the mark SKYSCANNER and that the disputed domain name is identical or confusingly similar to the trade mark SKYSCANNER;
2. The Respondent has no rights or legitimate interests in the disputed domain name;
3. The Respondent registered the disputed domain name in bad faith and uses it in bad faith, and at the date of acquisition of the disputed domain name the Respondent had knowledge of the Complainant’s rights.
The Respondent did not reply to the Complainant’s contentions.
Taking into account the evidence of the Complainant’s trade mark rights and reputation in the mark SKYSCANNER set out in section 4 above, the Panel finds that the Complainant has rights in the trade mark SKYSCANNER.
The Complainant submits that the disputed domain name is “virtually identical” to the Complainant’s rights in the mark. It points out that the disputed domain name uses the prefix “scy” rather than “sky” and omits one letter “n” from the word “scanner”. It states that these variances are insufficient to render the visual or phonetic characteristics of the disputed domain name distinct from the Complainant’s mark.
The Panel finds that these variances do not detract from the overall similarity of the disputed domain name to the mark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark SKYSCANNER. In reaching this conclusion the Panel also takes into account that it is entitled on long established authority to ignore the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant submits that as far as it is aware the Respondent does not own any registered rights in trade marks which comprise part or all of the disputed domain name.
The Complainant also confirms that the Complainant has not given its consent to the Respondent to use a virtually identical variation of its registered trade marks in the disputed domain name.
There is no evidence that the Respondent is commonly known as “Skyscanner”, “skyscaner”, “scyscaner” or “scyscanner”. Even if it refers to itself as “scyscaner” this would not be a legitimate or bona fide use.
The Complainant relies on the evidence that at the time of filing the Complaint the disputed domain name redirects to the Complainant’s website “www.skyscanner.net”. There is no evidence that this is being done for legitimate purposes nor a bona fide offering of goods and services. To the contrary this is prima facie an attempt to attract Internet users to the website by creating a likelihood of confusion with the Complainant’s trade mark. This cannot constitute a legitimate or a bona fide use of the disputed domain name whether it redirects Internet users to the Complainant’s website or not.
The Panel in the absence of a Response or evidence to the contrary accepts the Complainant’s submissions and finds that there is no evidence of a right or legitimate interest which leads to the presumption that no such right or interest exists.
As evidenced in Annex 1 to the Complaint the disputed domain name was first registered on December 20, 2006 (which is after the Complainant started trading and registered its first trade marks SKYSCANNER), and subsequently acquired by the Respondent between December 13, 2016 and April 28, 2018. The Respondent’s details were masked using a privacy service.
Annex 4 to the Complaint sets out details of the disputed domain name’s history. The Complainant submits that by late 2016 the Complainant owned a global reputation in the mark SKYSCANNER as a result of its substantial online trading using the mark SKYSCANNER from 2003. It also relies upon the publicity relating to the acquisition of the Complainant by Ctrip China’s largest on line travel agency. A collection of press releases is exhibited at Annex 5 to the Complaint and which are dated in November 2016 one month before the earliest acquisition date of the disputed domain name by the Respondent. The Complainant submits that it can be no coincidence that the Respondent chose to register a domain name that is virtually identical to the Complainant’s rights at that time.
The Complainant also submits that the Respondent’s use of a WhoIs Privacy Service is designed to shield the Respondent from identification in UDRP proceedings and the failure of the Respondent to respond to the Complainant is itself evidence of bad faith and refers to earlier UDRP Panel decisions to support this.
The Complainant relies upon the screenshot from the domain name market place AfterNic exhibited at Annex 6 to the Complaint which shows the disputed domain name being offered for sale at a price of USD 14,819 which is in excess of out of pocket costs and that this is evidence of an intention to transfer the disputed domain name to the Complainant or a competitor.
Taking these submissions into account and in the absence of evidence or contrary submissions from the Respondent the Panel finds that the evidence adduced by the Complainant is sufficient to establish that the disputed domain name was registered and is being used in bad faith.
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 <scyscaner.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: October 15, 2019
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