WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Nitish Gupta, Aeromax travels private limited

Case No. D2020-0877

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Nitish Gupta, Aeromax travels private limited, India.

2. The Domain Name and Registrar

The disputed domain name <skyscaner.club> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2020. On April 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 April 20, 2020, 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 April 20, 2020.

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 April 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2020. The Center received an informal email communication from the Respondent on April 22, 2020. On May 13, 2020, the Respondent requested an extension of the Response due date. On May 14, 2020, the Center granted a ten-day extension to file a Response and confirmed that the new Response due date was May 23, 2020. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties on May 25, 2020, that it would proceed to panel appointment.

The Center appointed Marilena Comanescu as the sole panelist in this matter on June 2, 2020. 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, a company incorporated in the United Kingdom in 2001, is a global travel search site allowing clients to compare prices and to book flights, hotels, and car rentals. Currently, the Complainant’s websites attract circa 100 million visits per month, the SKYSCANNER smart device app has been downloaded over 70 million times, and the Complainant’s services are provided in over thirty languages and in seventy currencies.

In November 2016, the Complainant was acquired by Ctrip, a Chinese tourism group, in a deal worth approximately USD 1.7 billion.

The Complainant holds about ninety trademarks for or including the word “skyscanner”, such as the following:

- the International Trademark Registration No. 1030086 of December 1, 2009 for SKYSCANNER (word), covering services in classes 35, 39, and 42 and designating many jurisdictions worldwide; and

- the Indian Trademark Registration No. 1890840 of March 21, 2011 for SKYSCANNER (word), covering services in class 35.

The Complainant’s main website is available at “www.skyscanner.net”.

The disputed domain name <skyscaner.club> was registered on December 9, 2019, and at the time of filing the Complaint, it resolved to a parking page. When the Panel visited the website under the disputed domain name, the parking page was removed and there was no content but an error message.

On April 22, 2020, the Respondent sent an email communication to the Center stating that he wishes to conclude the case if he receives the money spent on the disputed domain name, without specifying an amount. The Complainant did not react to such communication. Further, on May 13, 2020, the Respondent sent an email communication requesting a deadline extension to submit its Response. Such extension was granted, however no Response was submitted.

The same parties were involved in at least one previous dispute regarding the domain name <skyscaner.us>, decided in the favour of the Complainant. See Skyscanner Limited v. Nitish Gupta / Aeromax travels private limited, FORUM Claim No. FA2001001880602.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is virtually identical to its trademark SKYSCANNER whichs enjoys global reputation, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In view of the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

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

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

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

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

The Complainant holds rights in the SKYSCANNER trademark.

The disputed domain name incorporates the Complainant’s trademark SKYSCANNER with a minor misspelling, the omission of one letter “n”. However, such misspelling does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.

Numerous UDRP panels have considered that a domain name which consists of a common, obvious or intentional misspelling of a trademark is confusingly similar to the relevant mark for the purpose of the first element. See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,“.com”, “.info”, “.club”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.

Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark SKYSCANNER, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark SKYSCANNER, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.

Under the Policy, “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 section 2.1 of the WIPO Overview 3.0.

The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.

There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name.

In fact, the Respondent registered the disputed domain name incorporating a a third party’s trademark widely used worldwide, without any authorization and keeps it inactive.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).

D. Registered and Used in Bad Faith

The Complainant holds trademark rights for SKYSCANNER since at least 2002. Due to its extensive use and marketing, the SKYSCANNER trademark has become distinctive and enjoys significant reputation in its field of activity.

The disputed domain name was registered in 2019 and incorporates the Complainant’s mark in its entirety with a minor alteration. Furthermore, the Respondent’s name suggests an apparent involvement of the same in the travel industry.

From the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.

At the time of filing the Complaint the disputed domain name resolved to a parking page.

From the inception of the UDRP, UDRP panels have found that the non-use of a domain name (including a blank or “coming soon” or other similar inactive page) would not prevent a finding of bad faith under the doctrine of passive holding. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be relevant circumstances found to be indicative of bad faith include the degree of distinctiveness or reputation of the Complainant’s mark and the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use. See section 3.3 of the WIPO Overview 3.0.

The Complainant’s trademark enjoys worldwide reputation and there is no plausible reason for the Respondent to choose and register the disputed domain name other than to create confusion or association with the Complainant and its SKYSCANNER mark.

Further, the Respondent registered the disputed domain name under a privacy service and refused to participate in the present proceedings in order to put forward any arguments in its favor, although he received a deadline extension for submitting such Response.

The Respondent sent an informal communication asking the refund of the amount spent for the registration of the disputed domain name, knowing that the disputed domain name incorporates a third party trademark. This is definitely not a good faith attitude and, having in view all the other facts and findings of this case, may fall under the circumstances listed by paragraph 4(b)(i) of the Policy when the respondent aquired a domain name primarily for the purpose of reselling it to the trademark holder, or a competitor of it for an amount exceeding the out-of-pocket documented costs.

Also, as provided in the amended Complaint, the Respondent has already been the subject of an adverse decision in at least one previous proceeding involving the same trademark, which affirms a finding of bad faith.

Furthermore, the disputed domain name consists of a typo of the Complainant’s widely known mark, which is a further indication of bad faith. See sections 3.1.4 and 3.2.1 of the WIPO Overview 3.0.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

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 <skyscaner.club> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: June 12, 2020