Skyscanner Limited v Agustin Cruz Ortiz

WIPO Case No. D2025-0337

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Agustin Cruz Ortiz

Case No. D2025-0337

1. The Parties

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

The Respondent is Agustin Cruz Ortiz, Spain.

2. The Domain Name and Registrar

The disputed domain name <skiscanner.travel> is registered with Soluciones Corporativas IP, LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2025. On January 29, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2025, 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 (Redacted for privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 30, 2025, 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 February 3, 2025.

On January 30, 2025, the Center informed the parties in Spanish and English, that the language of the registration agreement for the disputed domain name is Spanish. On February 3, 2025, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.

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”).

page 2

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on February 6, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 26, 2025. The Respondent sent email communications to the

Center on February 3 and 4, 2025.

The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on March 4, 2025. 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, Skyscanner Limited, has achieved worldwide recognition by virtue of its longstanding success as one of the world’s leading travel metasearch companies. In 2016, the Complainant was acquired by China’s largest online travel business, Ctrip.com in a deal worth around GB £1.6 billion, which attracted global press attention.

The Complainant is the proprietor of many registered trademarks for SKYSCANNER, including the following:

European Union designation of International Trademark Registration No. 900393 SKYSCANNER, registered on March 3, 2006, in classes 35, 38 and 39;

International Trademark Registration No. 1030086 SKYSCANNER, designating registered trade mark protection in inter alia Armenia, Australia, Azerbaijan, Bosnia & Herzegovina, Belarus, Switzerland, China, Egypt, Japan, Mexico, Norway, Russian Federation, Singapore, Republic of Türkiye and Ukraine registered on December 1, 2009, in classes 35, 39 and 42.

The above trademarks form part of a global portfolio of registered trademarks containing the term
SKYSCANNER owned by the Complainant.

At the time the Complaint was filed the disputed domain name was inactive. Currently, the disputed domain name leads to a blog website.

Language of Proceedings

Pursuant to paragraph 11 of the Rules unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement. In this case the language of the registration agreement is Spanish and the Complaint has been filed in English.

Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the Rules vests a panel with the authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and are given the opportunity to present its case.

The Complainant requests that the language of the proceeding to be English. In this connection, the to register a domain name comprised of two words, ‘Ski’ (phonetically the same as the English word “sky”) and the English word ‘Scanner’. It has also chosen the new gTLD .travel” over the Spanish counterpart, ”viajes”, indicating that it plans to market to English-speaking consumers.

The Complainant requests in the event its petition for English language is rejected it is permitted to submit the complaint in English and that in that case the Respondent may file its response in Spanish.

page 3

The Panel accepts the above unrebutted arguments made by the Complainant and considers that it is appropriate for the language of the proceeding to be English, which does not affect the principle of treating the parties with equality and helps to conduct the proceeding with due expedition.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that several UDRP panels have held that the Complainant enjoys a
reputation in its SKYSCANNER trademark, including but not limited to Skyscanner Limited v. Basit Ali, WIPO
Case No. D2012-1983: (the Complainant had presented)compelling evidence that its SKYSCANNER trade
mark enjoys considerable reputation among potential customers” and WIPO Case No. D2024-3122 :
Skyscanner Limited v. Md AL Mamun: “(1):… has registered its SKYSCANNER marks in many countries
around the world; (2), transacts an enormous volume of business by reference to those marks; (3) has
received considerable publicity by reference to its corporate
name over the years… and (5) any use of that name anywhere in the world is likely to be
actionable”.

The Complainant’s website “ attracts tens of millions of unique visits per month and, to date, its SKYSCANNER smart device app has been downloaded over 70 million times. The Complainant’s services are available in over thirty languages and in seventy currencies. In the month of October 2024

alone, the Complainant’s core website, “ was visited 32.6 million times.

So far as the Complainant is aware, the Respondent does not own any registered rights in any trade marks which comprise part or all of the disputed domain name.

The term “Skyscanner” is not descriptive in any way, nor does it have any generic, dictionary meaning.

The Complainant has not given its consent for the Respondent to use its registered trade marks in a domain name registration.

The disputed domain name is inactive. Given the famous nature of the Complainant’s mark and the fact that
no other individual or business owns registered trade mark rights in the SKYSCANNER trademark, not only
is it likely that the Respondent was aware of the Complainant’s rights prior to registering the disputed domain
name but it is inevitable that visitors to the disputed domain name would mistakenly believe there to be an
association with the Complainant.

In its current form, the overwhelming likelihood is that the Respondent registered the disputed domain name to make money from it. The actual way in which it seeks to do so is unclear; it may intend to sell the disputed domain name to the Complainant, a competitor or a critic. Alternatively, it may intend to set up a service in direct competition with the Complainant’s, or, as the case is likely here, to pose as the Complainant. Regardless, the Respondent has registered the disputed domain name that it cannot use lawfully. That, of itself, amounts to registration and use in bad faith.

The domain name is inactive. In accordance, with the passive holding doctrine, the Respondent registered and used the disputed domain name in bad faith.

B. Respondent

The Respondent sent email communications to the Center on February 3 and 4, 2025, none of which answer the Complainant’s contentions.

page 4

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

Almost the entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed
domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section
1.7.

The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7 and section 1.9, since the only difference in the disputed domain name and the mark is that in the disputed domain name the letter “y” in the trademark SKYSCANNER has been replaced by the letter “i” and phonetically they both sound de same.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

page 5

The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademark SKYSCANNER mentioned in section 4 above (Factual Background) when it registered the disputed domain name on May 20, 2024. By that time, the Complainant had long ago registered and intensely used the trademark SKYSCANNER.

The Panel also finds that by registering the disputed domain name which includes the Complainant’s trademark SKYSCANNER in its entirety and replacing the letter “y” by the letter “i” the Respondent was targeting the Complainant and its business with the intention to capitalize on the fame of the Complainant’s trademark for its own benefit.

Further, the fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name and the nature of the disputed domain name are indicative of bad faith (as stated in section 3.2.1 of the WIPO Overview 3.0).

Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not
prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having
reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s
trademark, and the composition of the disputed domain name, and finds that in the circumstances of this
case the passive holding of the disputed domain name does not prevent a finding of bad faith under the

Policy.

The Panel finds that the Respondent registered and is using the disputed domain name in bad faith and that
the requirements of paragraph 4(a)(iii) of the Policy have been established.

7.

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 <skiscanner.travel> be transferred to the Complainant.

/Miguel B. O'Farrell/
Miguel B. O'Farrell
Sole Panelist
Date: March 9, 2025