Westmore · UDRP DecisionSkyscanner-com.com
The Panel ordered transfer of <skyscanner-com.com>. It found the domain confusingly similar to the distinctive SKYSCANNER trademark because the mark remained recognizable and the addition of “-com” did not avoid confusion. The Respondent lacked rights or legitimate interests because she was not authorized or known by the disputed name, and the associated website imitated the Complainant while displaying PPC links. The Panel found bad-faith registration and use based on the Complainant’s pre-existing Internet reputation, the deliberate imitation of its web presence, and the use of confusion to generate click-through revenue.
The timeline behind skyscanner-com.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind skyscanner-com.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision illustrates that embedding “-com” after a distinctive trademark within the second-level portion of a domain does not avoid confusing similarity. It also shows how imitation of a complainant’s online presentation, coupled with PPC monetization, can support both the absence of legitimate interests and bad-faith registration and use.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Skyscanner Limited v. Hildegard Gruener Case No. D2018-2008 1. The Parties The Complainant is Skyscanner Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Keltie LLP, United Kingdom. The Respondent is Hildegard Gruener of Wien, Austria. 2. The Domain Name and Registrar The disputed domain name <skyscanner-com.com> is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2018. On September 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2018, 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 September 7, 2018, 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 September 7, 2018. The Center verified that the Complaint together with the amended 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 September 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 2, 2018. The Center appointed William A. Van Caenegem as the sole panelist in this matter on October 12, 2018. 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 asserts that it is the proprietor of 91 trademark registrations containing the term SKYSCANNER. Amongst those, the Complainant is the proprietor of: European Union designation of International Trade Mark Registration No. 900393 for SKYSCANNER (registered on March 3, 2006) for goods in Classes 35, 38 and 39; International Trade Mark Registration No. 1030086 for SKYSCANNER, designating inter alia Armenia, Australia, Azerbaijan, Bosnia & Herzegovina, Belarus, Switzerland, China, the European Union, Japan, Norway, Russian Federation, Singapore, Turkey and Ukraine, registered on December 1, 2009, for, inter alia , Services in Classes 35, 39 and 42; United States of America designation of International Trade Mark Registration No. 1133058 for SKYSCANNER & Cloud device; and also Indian Trade Mark Registration No. 1890840 for SKYSCANNER; Indian Trade Mark Application No. 2287020 for SKYSCANNER & Cloud Device; United Kingdom Trade Mark Registration No. 2313916 for SKYSCANNER; Canadian Trade Mark Registration No. TMA786689 for SKYSCANNER; and New Zealand Trade Mark Registration No. 816550 for SKYSCANNER. The Complainant also operates the “www.skyscanner.com” website which is said to attract 60 million visits per month, and its SKYSCANNER smart device app has been downloaded 70 million times. The disputed domain name was registered on August 21, 2015. 5. Parties’ Contentions A. Complainant The Complainant asserts that the disputed domain name is similar to what it refers to as the “Complainant’s Rights”. It incorporates the Complainant’s registered trademark SKYSCANNER in its entirety and the additional element <.com> merely alludes to the fact that the disputed domain name is a generic Top‑Level Domain. The Complainant asserts that the addition is not sufficient to avoid a finding of similarity between the disputed domain name and the Complainant’s Rights. The addition of a gTLD should be disregarded for the purpose of the comparative exercise, or so the Complainant contends. Further the Complainant asserts that the term “Skyscanner” is not descriptive in any way, and has no generic or dictionary meaning. The Complainant also states that it has not given its consent for the Respondent to use its registered trademarks in relation to a domain name registration, and that to the best of its knowledge the Respondent is not commonly known as “Skyscanner-com”. The Complainant also says that even if the Respondent refers to itself as “Skyscanner-com”, the Respondent’s use of this name cannot constitute a legitimate interest in (or a bona fide use of) the disputed domain name under the Policy. The screenshots submitted by the Complainant indicate that the Respondent pretends to be the Complainant; the Complainant’s logo is included on the pages. Nonetheless PPC links are displayed as well. There is no disclosure on the relevant website of the true nature of the Complainant’s relationship with the Respondent. According to the Complainant, the Respondent’s use of the disputed domain name is for commercial gain and misleadingly diverts Internet users to its website. The Respondent has no relevant and enforceable rights, and thus no rights or legitimate interests vest in the Respondent. The lack of response from the Respondent should, in any case, be taken to indicate an inability to establish that such rights or interests exist. The Complainant points out that until May 2018, when the General Data Protection Regulation came into force, the registrant was identified as Hildegard Gruener on WhoIs and therefore in all probability the Respondent is indeed Hildegard Gruener. As the Complainant’s trademark registrations date to 2002, and it subsequently enjoyed global success, it submits that the Respondent must have been aware of the reputation of the Complainant’s business under its SKYSCANNER trademark at the time of registration and thus filed the disputed domain name in bad faith. The Complainant asserts that the presentation of the website to which the disputed domain name resolves falsely suggests affiliation with the Complainant. The site also displays PPC links to third party businesses offering competing services. PPC advertising is a commercial use of a domain name and in circumstances where the core element of the disputed domain name is not an actual dictionary word and the PPC links relate to services covered by the Complainant’s legal rights, it amounts to bad faith use. Therefore the Complainant says that the Respondent uses the disputed domain name intentionally to attract, for commercial gain, Internet users to the relevant website by creating confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation of the website to which the disputed domain name resolves. Finally, the Complainant points out that Hildegard Gruener has been the Respondent in five UDRP cases since 2015, each of which resulted in an order for the transfer of the disputed domain name concerned to the complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The disputed domain name is not strictly speaking identical to the Complainant’s SKYSCANNER trademark, since the part before the generic extension includes a reiteration of that extension. If the actual extension is omitted for comparison purposes, as is normally required, then the operative part of the disputed domain name is still different as it includes “–com” with the trademark. However, the trademark SKYSCANNER is distinctive and easily recognizable within the disputed domain name. The inclusion of “–com” effectively alters nothing. Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s SKYSCANNER trademark. B. Rights or Legitimate Interests There is nothing to indicate that the Respondent is known by the name “skyscanner” or does legitimate business by reference to that mark, or that mark combined with “-com”. Before the operation of GDPR the Respondent appeared as Hildegard Gruener in WhoIs, a name bearing no apparent connection or resemblance with the relevant trademark. The Respondent was not authorized to use the Complainant’s trademark or incorporate it in a domain name to be registered. Further, the website to which the disputed domain name resolves is designed to resemble the Complainant’s web presence, including unauthorized reproductions of the distinctive SKYSCANNE trademark. It contains PPC links and it is reasonable to infer that the Respondent is seeking to make an illegitimate profit from impersonating the Complainant. None of this amounts to activity with the kind of legitimacy which might point to a finding of rights or legitimate interests. The Respondent made no effort to persuade the Panel otherwise, as it filed no Response. Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The relevant trademark registrations of the Complainant date back a fair while, and the figures concerning visits to its legitimate website and downloads of its proprietary app indicate that the Complainant had a very extensive reputation on the Internet prior to the date of registration of the disputed domain name. There is nothing before the Panel that suggests that the Respondent had any good reason or excuse to register a domain name including the distinctive and well‑established trademark of the Complainant. The inclusion of “‑com” in the central part of the disputed domain name itself is clearly just a ploy. On the material before the Panel, the Respondent has then set up an unauthorized shadow website which imitates the Complainant’s web presence in various misleading ways. It has sought to benefit from the misleading impression of affiliation with the Complainant which it has deliberately created, by including PPC links for the sake of gaining click-through fees. This is an activity which is redolent of bad faith. Therefore the Panel holds that the disputed domain name was registered and used in bad faith. 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-com.com>, be transferred to the Complainant. William A. Van Caenegem Sole Panelist Date: October 26, 2018.
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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