WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Oleg Ivanchenko

Case No. D2020-2670

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Oleg Ivanchenko, Russian Federation.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2020. On October 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 14, 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 October 16, 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 amendment to the Complaint on October 16, 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 the Respondent of the Complaint, and the proceedings commenced on October 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2020.

The Center appointed Dr. Beatrice Onica Jarka as the sole panelist in this matter on November 23, 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 operates an Internet based airline fare aggregation business through its websites and in particular at “www.skyscanner.net”. It owns 91 (ninety one) trade mark registrations worldwide for its SKYSCANNER trade mark including:

- International Trademark Registration No. 900393 for SKYSCANNER (registered on March 3, 2006), designating, inter alia, the European Union and covering “Advertising services provided via the Internet, opinion polling, data processing, provision of business information, business information services, namely data feeds, auctioneering” in International Class 35, “Providing telecommunications connections to a global computer network to allow for the navigation of search engines” in International Class 38 and “Travel information and arrangement services provided from an Internet website; providing information via means of a global computer network; travel information provided online from a computer database; travel information accessible via a mobile phone utilising wireless application protocol technology” in International Class 39;

- International Trademark Registration No. 1030086 for SKYSCANNER (registered on December 1, 2009), designating, inter alia, the Russian Federation and covering “Advertising services provided via the Internet, opinion polling, data processing, provision of business information, data feeds, auctioneering, all relating to travel” in International Class 35, “Travel information and arrangement services provided from an Internet website providing information via means of a global computer network; travel information provided online from a computer database; travel information accessible via a mobile phone utilising wireless application protocol technology” in International Class 39 and “Operating of a search engine relating to travel” in International Class 42.

The Complainant also has registered trademarks for SKYSCANNER in Indian, Canada, New Zealand, United Kingdom, and United States of America.

The disputed domain name was registered by the Respondent on July 29, 2020, having originally been registered under WhoisGuard Protected, WhoisGuard, Inc. The disputed domain name resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

By the Complaint, the Complainant asserts that:

- The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights as it includes the Complainant’s SKYSCANNER trade mark in its entirety.

- The Respondent does not own any registered rights in any trade marks which comprise part or the entirety of the disputed domain name.

- The term “Skyscanner” is not descriptive in any way, nor does it have any generic, dictionary meaning, which is highly distinctive in the context of the services that the Complainant offers under its SKYSCANNER trade mark.

- There is no cause for any party other than the Complainant to use SKYSCANNER as a trade mark in the course of business, as the Complainant has not given its consent for the Respondent to use its registered trade mark in a domain name registration (or in any other manner).

- To the best of the Complainant’s knowledge the Respondent is not commonly known as “Skyscanner”. However, even if the Respondent does refer to itself by this name, the Complainant submits that the Respondent’s use of Skyscanner name constitutes bad faith insofar as the Respondent’s interest cannot be legitimate nor is there a bona fide use of the disputed domain name (under the Policy).

- The disputed domain name is inactive.

- There is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name nor is there any evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services.

- Given the famous nature of the Complainant’s SKYSCANNER mark and the fact that no other individual or business owns rights (whether registered or unregistered) in the trade mark, not only is it highly likely that the Respondent was aware of the Complainant’s rights prior to acquiring or registering the disputed domain name, but once the disputed domain name is pointed to an active website it is inevitable that visitors to the website would mistakenly believe there to be an association with the Complainant.

- The Respondent registered the disputed domain name in the knowledge of the Complainant’s rights. By July 29, 2020 the Complainant enjoyed a global reputation in its SKYSCANNER trade mark, following 18 years of aggressive international growth.

- On the balance of probability, it can be no coincidence that the Respondent chose to register a domain name that replicates the Complainant’s distinctive trade mark and thus the Respondent registered the disputed domain name in bad faith. The Complainant submits that the Respondent’s use of a privacy service is designed to shield the Respondent from its identification in UDRP proceedings.

- The use of a privacy service does not, in isolation, constitute use in bad faith but it indicates that the disputed domain name is used in bad faith inasmuch as the disputed domain name is used as a blocking registration to prevent the Complainant from using a domain name that is virtually identical to its rights, for legitimate commercial purposes.

- Once the disputed domain name is inevitably used by the Respondent, it will be used to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

- Moreover, it is implausible to presume that the Respondent chose to adopt the Complainant’s SKYSCANNER trade mark in the disputed domain name for any other reason than to deliberately create a false impression of an association with the Complainant and to target its business.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the SKYSCANNER trade mark acquired through registration.

The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights as it includes the Complainant’s SKYSCANNER trade mark in its entirety (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) and it is only adding the Top-Level Domain (“TLD”) “shop”.

The applicable TLD in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1).

The Panel therefore finds that the disputed domain name is identical or confusingly similar to the Complainant’s trade mark and the first element under paragraph 4(a) of the Policy is established.

B. Rights or Legitimate Interests

In order to establish the second element of the Policy, the Complainant has to show that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that prima facie showing, the burden of production shifts to the Respondent, according to WIPO Overview 3.0, section 2.1.

In this case, the Respondent, properly notified, has not rebutted any of the Complainant’s contentions as to:

- There is no cause for any party other than the Complainant to use SKYSCANNER as a trade mark in the course of business, as the Complainant has not given its consent for the Respondent to use its registered trade mark in a domain name registration (or in any other manner).

- To the best of the Complainant’s knowledge, the Respondent is not commonly known as “Skyscanner”. However, even if the Respondent does refer to itself by this name, the Complainant submits that the Respondent’s use of Skyscanner name constitutes bad faith insofar as the Respondent’s interest cannot be legitimate nor is there a bona fide use of the disputed domain name (under the Policy).

- The disputed domain name is inactive.

- There is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name nor is there any evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services.

- Given the famous nature of the Complainant’s SKYSCANNER mark and the fact that no other individual or business owns rights (whether registered or unregistered) in the trade mark, not only is it highly likely that the Respondent was aware of the Complainant’s rights prior to acquiring or registering the disputed domain name, but once the disputed domain name is pointed to an active website it is inevitable that visitors to the website would mistakenly believe there to be an association with the Complainant.

Moreover, the nature of the disputed domain name carries a high risk of implied affiliation with the Complainant (see WIPO Overview 3.0, section 2.5.1).

Therefore, in the opinion of this Panel, the Complainant has demonstrated a prima facie showing that the Respondent lacks any rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent and consequently the second element under paragraph 4(a) of the Policy is established.

C. Registered and Used in Bad Faith

This Panel considers that from the composition of the disputed domain name and prior registration and use of the Complainant’s SKYSCANNER trademark, it results, on the balance of probability, that the Respondent chose to adopt the Complainant’s SKYSCANNER trade mark in the disputed domain name with the clear intent to deliberately create a false impression of an association with the Complainant and to target its business.

Although the disputed domain name resolves to an inactive website, considering the fame of the Complainant’s SKYSCANNER trademark and the totality of the circumstances in this case, the Panel finds that the non-use of the disputed domain name would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3).

Moreover, the Respondent’s use of a privacy service is designed to shield the Respondent from its identification in UDRP proceedings and even if the use of a privacy service does not, in isolation, constitute use in bad faith but it indicates that the disputed domain name is used in bad faith inasmuch as the disputed domain name is used as a block or intentionally delay disclosure of the identity of the actual underlying registrant. The Panel therefore finds that the Respondent’s use of a privacy service in this case supports an inference of bad faith.

This Panel agrees with the Complainant that once the disputed domain name is used by the Respondent, it will be used to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Following the contentions of the Complainant, which remain unrebutted by the Respondent, the Panel holds that the disputed domain name was registered and is being used in bad faith and the third element of paragraph 4(a) of the Policy is, therefore, established.

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 <skyscanner.shop> be transferred to the Complainant.

Dr. Beatrice Onica Jarka
Sole Panelist
Date: December 7, 2020