WIPO Arbitration and Mediation Center

EXPERT DECISION

Skyscanner Limited v. D.B.

Case No. DCH2020-0011

1. The Parties

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

The Respondent is D.B. Poland.

2. Domain Name

The dispute concerns the following domain name <wwwskyscanner.ch>.

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2020. On May 18, 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 May 19, 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 procedure for “.ch” and “.li” domain names (the “Rules of Procedure”), adopted by SWITCH, on January 1, 2020.

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 May 20, 2020. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was June 9, 2020.

On June 10, 2020, the Center notified the Claimant accordingly, who on June 10, 2020, made an application for the continuation of the Dispute resolution proceedings in accordance with specified in paragraph 19 of the Rules of procedure and paid the required fees.

On June 12, 2020, the Center appointed Philippe Gilliéron as Expert in this case. The Expert finds that it was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties.

4. Factual Background

The Claimant is a leading global travel search site that was created in 2003. It currently employs more than 1’000 people split in 11 offices worldwide.

The Claimant in particular holds the international verbal trademark SKYSCANNER (IR N° 1030086) since December 1, 2009, registered under classes 35, 39 and 42, whose protection extends to Switzerland. It further holds the domain name <skyscanner.ch> since August 31, 2005.

On May 3, 2019, the Respondent registered the domain name <wwwskyscanner.ch>. The site is inactive. Over the years, the Respondent registered numerous domain names consisting in all or in part of third parties’ trademarks, slightly misspelt to benefit from users’ typo mistakes.

5. Parties’ Contentions

A. Claimant

The Claimant first argues that it holds several international trademarks consisting of the verbal sign SKYSCANNER.

It then considers that the registration of the domain name <wwwskyscanner.ch> is essentially identical to its trademarks and infringes its exclusive rights in accordance with Art. 13 of the Swiss Trademark Act, as it prevents the Claimant from using a variation of its registered trademark in a domain name on the one hand, and further leads Internet users to assume that there is an affiliation with or in connection to the Claimant, which is not the case, on the other hand.

The Claimant further points out that the pattern of conduct of the Respondent to register misspelt third parties’ trademarks falls under the Swiss Unfair Competition Act, notably Art. 2 and 3 lit. d UCA.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 24(c) of the Rules of Procedure, the Expert shall grant the Request if the allocation or use of the disputed domain name constitutes a clear infringement of a right in a distinctive sign which the Claimant owns under the law of Switzerland.

Paragraph 24(d) of the Rules of Procedure further adds that in particular, 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 defense; and

(iii) the infringement of the right justifies the transfer or deletion of the disputed domain name, depending on the remedy requested in the request.

A. The Claimant has a right in a distinctive sign under the law of Switzerland

In the present case, the Claimant demonstrates to enjoy exclusive rights in the term SKYSCANNER as a trademark validly registered internationally on December 1, 2009 (IR N° 1030086), whose scope of protection extends to Switzerland.

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

In the present case, the Expert has no difficulty in holding that the allocation or use of the domain name constitutes a clear infringement of this right.

The domain name <wwwskyscanner.ch> entirely incorporates the Claimant’s trademark. The addition of the acronym “www” is entirely descriptive and meant to benefit from users’ searching for the Claimant’s website and benefitting from their typo mistakes.

Such a usage cannot be considered a bona fide use of a domain name. Although one may not be in a position to assess whether the domain name will be used in relation with identical or similar goods or services as the ones for which the Claimant’s trademark has been registered in the absence of any related active website (Art. 3 and 13 of the Swiss Trademark Act), such a usage undoubtedly falls under the Swiss Unfair Competition Act, more particularly under Art. 2 of the Unfair Competition Act, as it clearly distorts the competition in an unfair manner.

The Respondent, which did not take part in the proceedings, did not come forward with any explanation to rebut these findings and explain the reason why it would have chosen a domain name consisting of the Claimant’s trademark. Considering the pattern of conduct demonstrated by the Respondent to register domain names consisting of third parties’ misspelt trademarks, the infringement of Art. 2 of the Swiss Unfair Competition Act is clear and leaves no room for discussion.

As a result, the overall circumstances of the case thus make it clear that the requirements of paragraph 24 of the Rules of Procedure have been fulfilled, and that the allocation the disputed domain name clearly fall under Art. 2 of the Swiss Unfair Competition Act.

7. Expert Decision

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

Philippe Gilliéron
Expert
Dated: June 16, 2020