WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Marko Nikolic

Case No. DNL2020-0004

1. The Parties

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

The Respondent is Marko Nikolic, Serbia.

2. The Domain Name and Registrar

The disputed domain name <skyscannee.nl> (the “Domain Name”) is registered with SIDN through the Registrar, 1API GmbH.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2020. On January 29, 2020, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On January 30, 2020, SIDN transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 30, 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 January 30, 2020. The Center verified that the Complaint, together with the Amended Complaint, satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 31, 2020. In accordance with the Regulations, article 7.1, the due date for Response was February 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2020.

The Center appointed Wolter Wefers Bettink as the panelist in this matter on February 24, 2020. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

The Complainant is active in the provision of travel information and arrangement services by means of an Internet website and operates a search engine relating to travel. The website resolving to the Complainant’s domain name <skyscanner.net> attracts 100 million visits per month. The Complainant’s services are available in over 30 languages and in 70 currencies.

The Complainant owns a number of trade mark registrations worldwide, consisting of or containing the term “skyscanner”, including:

- International Registration No. 1133058 for SKYSCANNER & Cloud Device, registered on
August 16, 2012, extended to the European Union;
- International Registration No. 0900393 for SKYSCANNER, registered on March 3, 2006, extended to the European Union; and
- International Registration No. 1030086 for SKYSCANNER, registered on December 1, 2009, extended to the European Union;

hereafter together referred to as the “Trade Marks”.

The Domain Name was registered on February 24, 2019, and does not resolve to a website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Domain Name is virtually identical to and confusingly similar with the Trade Marks as it merely replaces the “r” at the end of the Trade Marks with the letter “e”. Given that the letters “r” and “e” sit next to each other on the standard QWERTY keyboard, the Complainant asserts that the Domain Name is a deliberate misspelling of the Trade Marks. According to the Complainant, this immaterial difference is not sufficient to render the visual or phonetic characteristics of the Domain Name distinct from the Trade Marks.

The Complainant contends that the Respondent does not own any registered rights in any trade marks which comprise part of or the entirety of the Domain Name, nor has the Complainant given its consent for the Respondent to register the Domain Name. In addition, the Complainant states, as “Skyscanner” is not a descriptive term in any way, nor does it have any generic, dictionary meaning, there is no cause for any party other than the Complainant to use it in the course of business. Moreover, the Complainant submits, to the best of its knowledge the Respondent is not commonly known under the name “Skyscannee”.

According to the Complainant, the Domain Name was registered in bad faith by the Respondent as it registered the Domain Name in awareness of the Trade Marks, since at the time of registration, the Trade Marks enjoyed a global reputation, following 17 years of international growth, and a great deal of exposure in the international media in November 2016, after the Complainant was acquired by Ctrip, China’s largest on-line travel agency in a deal worth approximately GBP 1.4 billion. Furthermore, the Complainant submits, that a deliberate misspelling of the Trade Marks is further evidence of bad faith registration.

The Complainant also submits that the Domain Name is used in bad faith. Although the Domain Name does not currently resolve to a website, the passive holding thereof in the opinion of the Complainant constitutes bad faith use since (i) the Complainant has registered the Trade Marks in many countries around the world; (ii) the Complainant transacts an enormous volume of business by reference to the Trade Marks; (iii) the Complainant has received considerable publicity by reference to its corporate name over the years; (iv) the Domain Name is confusingly similar to the Trade Marks; and (v) any use of the Domain Name anywhere in the world is likely to be actionable; while (vi) it is very likely that the Respondent registered the Domain Name to make money from it, e.g., by selling it to the Complainant, a competitor or a critic, or to set up its own flight fare aggregator. Finally, in the absence of a response from the Respondent, the Complainant submits that, on the balance of probability, the Respondent has registered and used the Domain Name in bad faith for purposes of the Regulations. According to the Complainant, even if the Respondent would refer to itself as “Skyscannee”, the Complainant submits that the Respondent’s use of this name constitutes bad faith insofar as the Respondent’s interest cannot be legitimate nor is there a bona fide use of the Domain Name.

Therefore, the Complainant concludes, the Domain Name was registered and is being used by the Respondent in bad faith.

B. Respondent

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

6. Discussion and Findings

Pursuant to article 2.1 of the Regulations the Complainant must prove each of the following three elements:

a. the Domain Name is identical or confusingly similar to:

I) a trademark or trade name protected under Dutch law in which the Complainant has rights; or

II) a personal name registered in the General Municipal Register (Gemeentelijke Basisadministratie) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and

b. the Respondent has no rights to or legitimate interests in the Domain Name; and

c. the Domain Name has been registered or is being used in bad faith.

Article 10.3 of the Regulations provides that in the event a respondent fails to submit a response, the complaint shall be granted unless the panel considers it to be without basis in law or in fact. The Panel thereby notes that this does not mean that the requested remedy should automatically be awarded. The Panel will have to determine whether the Complainant’s prima facie case meets the requirements of article 2.1 of the Regulations.

A. Identical or Confusingly Similar

The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the mark SKYSCANNER in its entirety, with the exception of the letter “r”, which was substituted by an “e”. This misspelling of the Trade Marks does not alter the confusing similarity (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7)¹. The country code Top-Level Domain (“ccTLD”) “.nl” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.2).

Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights.

B. Rights or Legitimate Interests

Under article 3.1 of the Regulations, the Complainant has to make out a prima facie case that the Respondent does not have rights to or legitimate interests in the Domain Name, upon which the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights to or legitimate interests in the Domain Name (WIPO Overview 3.0, section 2.1).

Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, nor has it otherwise been authorized to use the Trade Marks. The Respondent has not provided evidence, nor is there any indication in the record of this case that the Respondent is commonly known by the Domain Name (article 3.1(b) of the Regulations). The Panel furthermore notes that the Domain Name does not resolve to an active website and that the written notice sent to the postal address as provided by the Respondent to SIDN at the time of registration of the Domain Name was undeliverable, which casts doubt on the authenticity of the Respondent’s operations.

The Panel concludes that the Complainant has met the second requirement of article 2.1(b) of the Regulations.

C. Registered or Used in Bad Faith

In accordance with article 3.2 of the Regulations, the Complainant has to show that the Domain Name was registered or is being used in bad faith.

Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was aware of and indeed specifically targeted the Complainant and the Trade Marks. In particular, such knowledge and intent is derived from the following facts: (i) the Respondent’s registration of the Domain Name occurred 13 years after the filing of the earliest of the Trade Marks, which, as the record shows, have attained considerable international reputation; (ii) the element SKYSCANNER of which the Trade Marks consists, is incorporated in its entirety in the Domain Name, and does not appear to be a name of which the Respondent was likely to spontaneously or accidentally think; (iii) a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name would have informed the Respondent of the existence of the Trade Marks; and, (iv) the Respondent did not file a Response.

The Panel concludes that the Domain Name was registered in bad faith.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name <skyscannee.nl> be transferred to the Complainant.

Wolter Wefers Bettink
Panelist
Date: March 9, 2020

¹ In view of the fact that the Regulations are to an extent based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that cases decided under the UDRP, and therefore the WIPO Overview 3.0, are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050).”