WIPO Arbitration and Mediation Center

EXPERT DECISION

Skyscanner Limited v. A. S.

Case No. DCH2020-0004

1. The Parties

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

The Respondent is A. S., Georgia.

2. Domain Name

The dispute concerns the domain name <scyscanner.ch>.

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2020. On March 10, 2020, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the disputed domain name. On March 11, 2020, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the domain name and providing the relevant contact details. The Center verified that the Request satisfied the formal requirements of the Rules of procedure for dispute resolution procedures for “.ch” and “.li” domain names (the “Rules of Procedure”), adopted by SWITCH, and in effect as of January 1, 2020.

On March 17, 2020, the Center received from the Registry and the concerned registrar information that the Respondent might be willing to revoke the disputed domain name. On March 31, 2020, the Center informed the Claimant accordingly and suggested that the Claimant request a suspension of the procedure to explore settlement options, according to the Rules of Procedure, paragraph 8. The Claimant informed the Center that it did not wish to suspend the procedure. The Center did not receive any communication from the Respondent.

In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the Dispute resolution procedure commenced on April 17, 2020. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was May 7, 2020. The Respondent did not submit a Response.

On May 8, 2020, the Claimant made an application for the continuation of the Dispute resolution procedure in accordance paragraph 19 of the Rules of Procedure.

On May 13, 2020, the Center appointed Anne-Virginie La Spada as Expert in this case. The Expert finds that she was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared her independence of the Parties.

4. Factual Background

The Claimant is the British company Skyscanner Limited incorporated under the Laws of England & Wales. It operates a global travel search site.

The Claimant is the owner of the following trademark rights covering Switzerland:

- SKYSCANNER, international registration No. 1030086 of December 1, 2009 for services of classes 35, 39 and 42 including “travel information and arrangement services provided from an Internet website” and “operating of a search engine related to travel”;

- SKYSCANNER & design, international registration No. 1133058 of August 16, 2012 for services of classes 35, 39 and 42 including “travel information and arrangement services provided from an Internet website” and “operating of a search engine related to travel”.

The Claimant also owns the domain name <skyscanner.ch>, registered on August 31, 2005, which resolves to the Claimant’s website from where the latter provides its services. According to the web traffic analytics website “alexa.com”, the Claimant’s website is ranked 173rd in Switzerland.

The disputed domain name was registered on August 30, 2013. According to the information provided by SWITCH, the disputed domain name is currently held by the Respondent.

The disputed domain name redirected before the filing of the Request to a website “www.cheapperfllights.nl”, featuring links with travel related content (such as “book flights”).

5. Parties’ Contentions

A. Claimant

The Claimant alleges that the Respondent has registered a domain name that is very similar to its prior trademarks and domain name. The Claimant claims that the disputed domain name is a classic case of typosquatting.

Moreover, according to the Claimant, the disputed domain name is used to direct consumers to a website offering travel arrangements that compete with those offered by the Claimant.

Therefore, the Claimant argues that the disputed domain name is used to mislead consumers as to an affiliation with or connection to the Claimant for commercial gain and that there is a damage to the reputation of the Claimant. The Claimant considers that the disputed domain name infringes its prior exclusive rights in SKYSCANNER.

The Claimant further argues that the registration and use of the disputed domain name constitutes unfair competition under the law of Switzerland.

The Claimant submits that there is a pattern of conduct on the part of the Respondent, who registered several domain names including a famous trademark (or deliberate misspelling thereof) in bad faith.

The Claimant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

According to paragraph 24(c) of the Rules of Procedure, the Expert shall grant the request if the allocation or use of the domain name constitutes a clear infringement of a right in a distinctive sign which the Claimant owns under the law of Switzerland (in disputes over a domain name under the country code Top-Level Domain “.ch”).

The Rules of Procedure, paragraph 1, define a “right in a distinctive sign” as any right recognised by the legal system devolving from the registration or use of a sign, which protects the holder of the right from infringement of his interests as the result of registration or use of an identical or similar sign by third parties, including, but not limited to, the right in a registered business name, a personal name, a trade mark, a geographical indication and the defensive rights devolving from the law on unfair competition.

According to paragraph 24(d) of the Rules of Procedure, a clear infringement of an intellectual property right exists when:

i. both the existence and the infringement of the claimed right in a distinctive sign clearly result from the wording of the law or from an acknowledged interpretation of the law and from the presented facts and are proven by the evidence submitted; and

ii. the Respondent has not conclusively pleaded and proven any relevant grounds for defence; and

iii. the infringement of the right justifies the transfer or revocation of the domain name, depending on the remedy requested in the request.

A. The Claimant has a right in a distinctive sign protected in Switzerland

The Claimant is the owner of international trademark registrations for SKYSCANNER and SKYSCANNER & design covering Switzerland (international registrations No. 1030086 and No. 1133058). The Claimant therefore owns trademark rights in SKYSCANNER.

The Claimant is also the owner of the domain name <skyscanner.ch> registered on August 31, 2005. Although Swiss law does not attach specific intellectual property rights to a domain name, the ownership and use of an earlier domain name in Switzerland are relevant from the point of view of unfair competition law.

The Claimant has provided sufficient evidence that it has a right in a distinctive sign protected in Switzerland, in accordance with paragraph 24(d)(i) of the Rules of Procedure.

B. The allocation or use of the domain name constitutes a clear infringement of the Claimant’s right

(a) Trademark infringement

According to Article 13, paragraph 1 of the Federal Act on the Protection of Trademarks and Indications of Source (Trademark Protection Act (TmPA)), a trademark right confers on the owner the exclusive right to use the trademark to identify the goods or services for which it is claimed and to dispose of it. The owner may prohibit others to use signs that are excluded from protection under Article 3, paragraph 1 TmPA, namely identical or similar signs intended for identical or similar goods and services such that a likelihood of confusion results.

In the present case, the disputed domain name consists of the sole word “scyscanner” in association with the “.ch” extension. It differs from the protected trademark SKYSCANNER by a single letter placed in second position in the word. Visually, the difference is therefore minimal. Phonetically, the term “scyscanner” is identical to the Claimant’s trademark, if “c” is pronounced “k”. Conceptually, the prefix “scy” – which has no recognizable meaning – is likely to be perceived as a mistyped version of the word “sky”. Consequently, the substitution of the letter “k” by the letter “c” does not sufficiently differentiate the disputed domain name from the prior trademarks of the Claimant.

Furthermore, the disputed domain name redirected to a website featuring links in relation to travel arrangement services and in particular the booking of flight tickets, i.e. services that are very similar to the services claimed in the Claimant’s trademark registrations and actually offered by the Claimant.

In view of the high level of similarity between the signs and between the services, Internet users are at risk to believe that there is a link between the Claimant and the Respondent or that the Respondent’s website is operated by the Claimant. In addition, there is a risk that the user will unintentionally access the Respondent’s website by mistyping the domain name of the Claimant. There is therefore a likelihood of confusion between the disputed domain name and the Claimant’s earlier marks.

The allocation and use of the disputed domain name is therefore clearly infringing the Claimant’s trademark rights under the law of Switzerland.

(b) Infringement of the rules on unfair competition

The Claimant claims that the Respondent has also committed a violation of the Federal Act against Unfair competition (UCA).

According to Article 3, paragraph 1 of the UCA, whoever “takes measures which are likely to cause confusion with the goods, works, services or business operations of another person” acts unfairly. Also, “any deceptive behavior or business conduct or conduct in any other way contrary to the principle of good faith which influences the relationship between competitors or between suppliers and customers” is unfair and unlawful according to the so-called general clause of Article 2 UCA.

As business identifiers, domain names are subject to the fair trading principle of unfair competition law (Decision of the Federal Tribunal, DFT 128 II 353, cons. 4).

In the present case, as explained under section 6(B)(a) above, the disputed domain name almost identically reproduces the distinctive signs of the Claimant (trademarks, trade name and domain name). In addition, the disputed domain name redirects to a website (“www.cheapperflights.nl”) that provides links in relation to travel arrangements and flight bookings, which constitutes the core business of the Claimant.

As a result, when registering and using such a domain name, the Respondent created a likelihood of confusion to the effect that Internet users are likely to assume a connection between the Respondent’s website and the Claimant’s trademark, company and protected services. In this respect, the Respondent has acted in violation of Article 3, paragraph 1 UCA.

Furthermore, the documents communicated by the Claimant show that there is pattern on the part of the Respondent of registering domain names that include a famous trademark (or a deliberate misspelling thereof). This conduct is contrary to the principle of good faith and supports a finding that Respondent deliberately and in bad faith chose a domain name that could be mistaken with the Claimant’s marks and domain name, for a commercial gain. In this respect, the Respondent has acted in violation of Article 2 UCA.

Since the Respondent has not put forward any conclusive grounds for defense that would rebut the Claimant’s representations or justify his own legitimate interest, and having regard to the submissions, the Expert finds that the Claimant has fulfilled paragraph 24(c) and (d) of the Rules of Procedure.

7. Expert Decision

For the above reasons, in accordance with Paragraphs 24 of the Rules of Procedure, the Expert orders that the domain name <scyscanner.ch> be transferred to the Claimant.

Anne-Virginie La Spada
Expert
Dated: May 27, 2020