WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Az Ha, Silver

Case No. D2020-0921

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Az Ha, Silver, United States of America.

2. The Domain Name and Registrar

The disputed domain name <skyskanner.xyz> 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 15, 2020. On April 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2020, 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 23, 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 24, 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 May 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2020.

The Center appointed Tuukka Airaksinen as the sole panelist in this matter on June 22, 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 is a travel agency providing, e.g., flight arrangements throughout the world. The Complainant is the proprietor of the trademark SKYSCANNER, registered, e.g., as an International trademark No. 900393 on March 3, 2006 designating inter alia the European Union and the United States of America. The Complainant’s trademark has been found to be well known by previous UDRP panels.

In 2016, the Complainant was acquired by Ctrip, which is China’s largest online travel agency in a deal worth approximately GBP 1.4 billion.

The disputed domain name was registered on March 28, 2020, and redirects to a website indicating that the disputed domain name has been suspended.

5. Parties’ Contentions

A. Complainant

The disputed domain name is virtually identical with the Complainant’s trademark SKYSCANNER. The only difference is that the letter “c” in the Complainant’s trademark is replaced with the letter “k” in the disputed domain name. That is not sufficient to render the disputed domain name visually or phonetically different from the Complainant’s trademark.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, the disputed domain name is not used for the bona fide offering of goods or services and the Respondent is not making any legitimate or noncommercial fair use of the disputed domain name. The Complainant has not authorized the Respondent to register the disputed domain name.

The Respondent is also using a privacy service to shield the Respondent’s identification in UDRP proceedings.

The disputed domain name was registered and is being used in bad faith. Because of the Complainant’s rights and the exposure its trademark enjoys, the Respondent must have been aware of the Complainant when registering the disputed domain name. The Respondent cannot provide a reasonable or meaningful reason to justify its acquisition of the disputed domain name. The Complainant submits that the disputed domain name is a classic case of cybersquatting.

B. Respondent

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

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.

In the disputed domain name, the Complainant’s trademark is included in its entirety with the only exception being that the middle letter “c” is replaced with the letter “k”. The letter “k” is phonetically identical with the letter “c” in the present case. The Panel considers that this is a typical case of typosquatting, see section 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Accordingly, the Panel finds that the disputed domains name is confusingly similar to the Complainant’s trademark and hence the first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.

It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, and section 2.1 of WIPO Overview 3.0.

The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has the Respondent been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.

Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that [the Respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or

(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or

(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.”

The Panel agrees with previous UDRP panels in that the Complainant’s trademark is well known. By registering a domain name that closely resembles the Complainant’s trademark, it is obvious that the Respondent must have been aware of the Complainant’s when registering the disputed domain name.

The disputed domain name currently resolves to a website indicating that the disputed domain name has been suspended. It is apparent that this is the Registrar’s website to which the disputed domain name is directed. Accordingly, the disputed domain name is not in active use.

This, however, does not prevent the finding of bad faith under the doctrine of passive holding. See section 3.3 of WIPO Overview 3.0. Considering that the Panel has found that the Complainant’s trademark and the disputed domain name are almost identical, the Respondent has not responded to the Complaint, the Respondent has concealed its identity, there are no obvious good faith or legitimate interests for the Respondent to register the disputed domain name, the Panel considers, on balance, that the disputed domain name has been registered and is being used in bad faith.

Therefore, the Panel finds that the third element of the Policy is fulfilled.

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 <skyskanner.xyz> be transferred to the Complainant.

Tuukka Airaksinen
Sole Panelist
Date: July 6, 2020