Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
Respondent is Domain Administrator, Hong Kong, China.
The disputed domain name <skyskanner.net> (the “Domain Name”) is registered with Above.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2020. On June 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 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 Complainant on June 22, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 23, 2020.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on June 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 16, 2020.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on August 3, 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.
Complainant is Skyscanner Limited, a company incorporated in the United Kingdom in 2003. Complainant operates a travel search, travel information and arrangement website hosted at a range of domain names in various jurisdictions, including <skyscanner.net>, registered in 2002.
Complainant owns numerous trademark registrations worldwide for SKYSCANNER and variations thereof, including:
- United Kingdom Trademark Registration No. UK00002313916 for SKYSCANNER, registered on April 30, 2004;
- International Trademark Registration No. 1030086 for SKYSCANNER, registered December 1, 2009, which designates numerous jurisdictions, including China; and
- International Trademark Registration No. 900393 for SKYSCANNER, registered March 3, 2006.
The record shows that Complainant’s website “www.skyscanner.net” attracts approximately 100 million visits per month and to date, its Skyscanner smart device mobile application has been downloaded over 70 million times. Complainant’s services are available in over 30 languages and in 70 currencies.
The Domain Name was registered on October 1, 2004. The historical WhoIs record provided by Complainant shows that since it was first registered, the Domain Name changed hands several times, and Respondent acquired the Domain Name some time between October 14, 2018 and October 3, 2019.
At the time of filing of the Complaint, the Domain Name was inactive. At the time of the decision, the Domain Name redirected to Complainant’s official website.
Complainant contends that (i) the Domain Name is confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.
In particular, Complainant contends that it has trademark registrations for the SKYSCANNER marks and have rights in several domain names incorporating the SKYSCANNER mark. Complainant contends that Respondent registered and is passively holding the Domain Name, which is a deliberate misspelling of Complainant’s well-known mark. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name which is a deliberate misspelling of Complainant’s mark, and that Respondent has no rights or legitimate interests in the acquisition and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name and website, when Respondent clearly knew of Complainant’s rights.
Respondent did not reply to Complainant’s contentions.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1.
Complainant provided evidence of its rights in the SKYSCANNER marks, which have been registered since at least as early as 2004. With Complainant’s rights in the SKYSCANNER marks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the generic Top-Level Domain (“gTLD”) in which it is registered (in this case, “.net”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
Here, the Domain Name is confusingly similar to Complainant’s SKYSCANNER trademark. This mark, which is fanciful and inherently distinctive, is recognizable in the Domain Name. The voluntary substitution of the letter “c” with the letter “k” in relation to the SKYSCANNER mark in the Domain Name, <skyskanner.net>, does not change the overall impression produced by the Domain Name and does not prevent a finding of confusing similarity between Complainant’s trademarks and the Domain Name registered by Respondent.
Thus, Complainant has satisfied the first element of the Policy.
Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the SKYSCANNER trademarks or to seek registration of any domain name incorporating the trademarks.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that Respondent was passively holding the Domain Name at the time of filing of the Complaint. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that the respondent has registered or 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 complainant, for valuable consideration in excess of your 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 you have engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to 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 your website or location.”
The historical WhoIs record provided by Complainant shows that Respondent acquired the Domain Name some time between October 14, 2018 and October 3, 2019. Even if Respondent registered the Domain Name on October 1, 2004, the Panel notes that Complainant’s earliest SKYSCANNER trademark on record has been registered since April 30, 2004. Therefore, the Panel finds that Complainant’s registration and use of the SKYSCANNER marks predate the registration of the Domain Name by Respondent. Complainant is also well established and known worldwide, including China, where Respondent resides. In addition, the record shows that Complainant’s trademark and services were exposed to international media attention in November 2016, after Complainant was acquired by Ctrip, China’s largest online travel agency in a transaction worth approximately GBP 1.4 billion.
Therefore, Respondent was likely aware of the SKYSCANNER marks when Respondent registered the Domain Name, or knew or should have known that the Domain Name was confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
Further, the Domain Name is an intentional misspelling of Complainant’s well-known SKYSCANNER trademark, with the substitution of the letter “c” with the letter “k”, which suggests that Respondent’s actual knowledge of Complainant’s rights in the SKYSCANNER mark at the time of registration of the Domain Name and its effort to opportunistically capitalize on the registration and use of the Domain Name. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,
WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,
WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,
WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks.
At the time of filing of the Complaint, the website was inactive, indicating that the Domain Name was being passively held. The Panel finds that the non-use of the Domain Name would not prevent a finding of bad faith under the doctrine of passive holding in this case. See WIPO Overview 3.0, section 3.3. At the time of the decision, the Domain Name redirected to Complainant’s official website. UDRP panels have found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. See WIPO Overview 3.0, section 3.1.4,
In addition to the circumstances referred to above, Respondent’s failure to file a response and the undelivered Written Notice to Respondent due to false contact details are further indicative of Respondent’s bad faith.
Accordingly, the Panel finds in view of the above, that Respondent has registered and used the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <skyskanner.net> be transferred to Complainant.
Kimberley Chen Nobles
Date: August 11, 2020
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