WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Host Master, 1337 Services LLC

Case No. D2019-2664

1. The Parties

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

The Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <sky-skanneruk.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2019. On October 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 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 October 31, 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 October 31, 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 November 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2019.

The Center appointed Theda König Horowicz as the sole panelist in this matter on November 27, 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 is the owner of several trademark registrations for the word SKYSCANNER, notably:

- Canadian Registration No. TMA 786,689 of January 10, 2011, for services inter alia “advertising the wares and services of others via the Internet, opinion polling, data processing […]”.
- International Registration No. 1030086 of December 1, 2009, in international classes 35, 39 and 42.
- United Kingdom Registration No. UK00002313916 of April 30, 2004, in international classes 35, 38 and 39.

The Complainant operates a website under the domain name <skyscanner.net> where it is explained that it was founded in 2003 and that it specializes in providing services in the travel business area. In particular the Complainant developed a free mobile application promoting and offering its services worldwide.

The disputed domain name was registered on July 29, 2019.

The Complainant tried to check on the content of the website linked to the disputed domain name but the said website was blocked by its system due to a spam risk. When accessing the website at the disputed domain name from a mobile device, it indicated that “This website may be impersonating ‘www.sky-scannerul.com’ “to steal your personal of financial information. You should close this page.”

5. Parties’ Contentions

A. Complainant

The Complainants alleges to have trademark rights in the word SKYSCANNER, a trademark which enjoys considerable reputation notably due to the significant online presence of the Complainant which proposes travelling services worldwide. In this frame, the Complainant alleges that the disputed domain name is virtually identical to its SKYSCANNER trademark, in particular aurally. The additional term “uk” in the disputed domain name reflects the country in which the Complainant’s business is incorporated.

The Complainant further alleges that the Respondent has no registered rights in the terms comprised in the disputed domain name and the Complainant did not consent to the use by the Respondent of its mark SKYSCANNER. In addition, the Respondent is not known as being “Skyscanner”. Furthermore, there is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name or that it is used in relation to bona fide offering of goods and services. All these elements show that the Respondent has no rights or legitimate interests in respect of the domain name.

Finally, the Complainant invokes that its registered rights in SKYSCANNER date back in 2002 while the disputed domain name was registered in 2019. Consequently, the Respondent should have been aware of the reputation of the Complainant’s business under its SKYSCANNER trademark at the time the Respondent registered the disputed domain name. Indeed, at this stage the Complainant already enjoyed international success following seventeen years of growth and through exposure in the media. Actually, its acquisition in November 2016 by Ctrip, a Chinese online travel agency, was widely commented. The Complainant is also of the opinion that the disputed domain name is used in bad faith due to passive holding and to the fact that the disputed domain name is being used as a blocking registration. At last, the Complainant draws the Panel’s attention to the fact that the virus threat connected to the disputed domain name might divert its customers and could damage the Complainant’s reputation in relation with its SKYSCANNER trademark.

B. Respondent

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

6. Discussion and Findings

Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant showed that it has trademark rights in SKYSCANNER through several trademark registrations (with and without logo) in many countries, including the United Kingdom.

This trademark is almost reproduced in its entirety in the disputed domain name. The misspelling of the word “scanner”, that is “skanner” with a [k] is not relevant due to the fact that it remains visually similar and phonetically identical to the Complainant’s registered trademark.

The fact that the geographical designation “uk” is added to the word “sky-skanner” does not dispel the confusing similarity. See Section 1.9 of the WIPO Overview of WIPO Panel View on elected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Finally, the fact that the disputed domain name places a hyphen between the words “sky” and “skanner” is not sufficient to make a clear distinction with the trademark SKYSCANNER which is spelled in one word.

Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:

(1) the use of the domain name in connection with a bona fide offering of goods or services;

(2) being commonly known by the domain name; or

(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See section 2.1 of the WIPO Overview 3.0

The content of the website linked to the disputed domain name is not accessible since it is blocked because of its qualification as dangerous website containing viruses which could infect the computers surfing on the said site.

In this frame, the Panel finds that the Complainant has successfully presented a prima facie case against the Respondent since that:

(i) the Respondent does not own registered rights in “skyscanner” or “sky-skanner”;
(ii) the Complainant has not given its consent to the Respondent to use its protected SKYSCANNER trademark;
(iii) the Respondent is not commonly known by the disputed domain name; and
(iv) the Respondent has not made demonstrable preparations to use the disputed domain name.

The Respondent submitted no reply to the case against the case presented by the Complainant.

There is otherwise no evidence in the case file to suggest that the Respondent might have some rights or legitimate interests in the disputed domain name.

For these reasons, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The third matter which the Complainant must prove is that the disputed domain name was registered and is being subsequently used in bad faith.

The Complainant has shown that its SKYSCANNER trademark has been widely used and promoted on the Internet, notably through an online application, in relation to travel services.

It is therefore very likely that the Respondent knew the said application and the related name SKYSCANNER when it adopted and registered the disputed domain name.

The disputed domain name could thus not have been registered in good faith by the Respondent.

Nothing in the file indicates that the Respondent would be using the disputed domain name other than in bad faith.

In particular, the case file contains several elements evidencing that that the disputed domain name is not used in good faith.

For example, the fact that the website connected to the disputed domain name is qualified as a high-risk website which might contain dangerous viruses is an indication that its content is potentially illicit.

Consequently, there is indeed a reputational risk for the Complainant who might be associated by the public to the disputed domain name and damageable website. This may also disrupt the Complainant’s business,

The Respondent’s lack of response within these proceedings may be further indication of bad faith.

For these reasons, the Panel finds that the Complainant has established its case under 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 <sky-skanneruk.com> be transferred to the Complainant.

Theda König Horowicz
Sole Panelist
Date: December 16, 2019