Skyscanner Limited v Grand Vitara, Secure Life

WIPO Case No. D2022-1465

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Grand Vitara, Secure Life

Case No. D2022-1465

1. The Parties

The Complainant is Skyscanner Limited, United Kingdom (“UK”), represented by Lewis Silkin LLP, United

Kingdom.

The Respondent is Grand Vitara, Secure Life, India.

2. The Domain Name and Registrar

The disputed domain name <skyscanner-tickets.com> (the “Disputed Domain Name”) 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 April 23, 2022. On April 25, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2022, 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 April 27, 2022, 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 April 27, 2022.

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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2022. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2022.

The Center appointed Isabelle Leroux as the sole panelist in this matter on May 25, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of

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Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is Skyscanner Limited, a UK based company founded in 2003.

The Complainant operates an online flight search engine through which consumers can search for and book travel arrangements. The Complainant also offers a Skyscanner mobile application through which consumers can likewise search for and make travel arrangements.

The Complainant’s website “ attracts 100 million visits per month and, to date, its available in over thirty languages and in seventy currencies.

For the needs and purposes of its activities, the Complainant is the owner of numerous trademarks covering services in the field of travel, such as:

- UK word trademark SKYSCANNER no. 2313916 filed on October 23, 2002, and registered on

April 30, 2004, for goods and services in classes 35, 38, and 39;

- International word registration SKYSCANNER no. 900393 filed on March 3, 2006, under priority of United
Kingdom trademark no. 2313916, for goods and services in classes 35, 38, and 39, and designating the

European Union and the United States of America;

- International word registration SKYSCANNER no. 1030086, designating several countries including services in classes 35, 38, and 39;

Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Belarus, Switzerland, China, the European Union,
Egypt, Japan, Mexico, Norway, Russian Federation, Singapore, Turkey, and Ukraine, filed on
- New Zealand word trademark SKYSCANNER no. 816550 filed on December 1, 2009, and registered on

October 7, 2010, for goods and services in classes 35, 39, and 42;

- Indian word trademark SKYSCANNER no. 1890840 filed on December 2, 2009, for goods and services in

classes 35, 38, and 39;

- Canadian word trademark SKYSCANNER no. TMA786689 filed on December 2, 2009, under priority of UK
trademark no. 2313916, and registered on January 10, 2011, for services relating to the use of Internet for

travel information purposes;

- Indian trademark SKYSCANNER (and cloud device) no. 2287020 filed on February 22, 2012, for goods

and services in classes 35, 39, and 42;

- International registration SKYSCANNER (and cloud device) no. 1133058, designating Australia, for goods and services in classes 35, 39, and 42.

Switzerland, China, European Union, Norway, Russian Federation, Turkey, and the United States of
Hereafter the “Trademarks” or “Trademark”.

The Complainant also appears to operate the website associated to the domain name <skyscanner.net>, although it did not provide any registration certificate.

The Disputed Domain Name <skyscanner-tickets.com> was registered on December 8, 2021, and redirects

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to a parking page.

5. Parties’ Contentions

A. Complainant

The Complainant claims that:

a) The Disputed Domain Name is identical or confusingly similar to the Complainant’s Trademarks, since it is
virtually identical to the Trademarks, the only difference between them being the addition of the word
“tickets” in the Disputed Domain Name. Despite this difference, the Disputed Domain Name and the

Trademarks remain highly similar.

b) The Respondent has no rights nor legitimate interests in the Disputed Domain Name since:

- as far as the Complainant is aware the Respondent does not own any registered rights in any trademarks
including part or all of the Disputed Domain Name;
- the Complainant has not given its consent to the Respondent for registering the Disputed Domain Name;
- the term “Skyscanner” is not descriptive, nor generic and does not have any meaning;
- the Disputed Domain Name appears to be inactive and given the notoriety of the Complainant’s
Trademarks, there is a high risk of confusion for the consumers who will inevitably believe that there is an
association between the Complainant and the Disputed Domain Name or that they have reached the

Complainant’s website by following the Disputed Domain Name.

c) The Respondent registered and used the Disputed Domain Name in bad faith given the following factors:

- the Respondent was clearly aware of the Complainant’s rights, since the Trademarks were filed many years
before the registration of the Disputed Domain Name and enjoy a global fame;
- it is likely that the Respondent registered the Disputed Domain Name for the purpose of making money out
of it since the Complainant’s Trademarks are widely known;
- there is no explanation from the Respondent and therefore there can be no legitimate reason to register

and passively hold a domain name composed of a widely known trademark in its entirety.

Finally, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

First of all, the Panel finds that the Complainant has provided evidence that it has prior rights in the

SKYSCANNER Trademarks.

Then, the Panel notices that the Disputed Domain Name is composed of the identical reproduction of the and descriptive, (ii) as well as the generic Top-Level Domain (“gTLD”) “.com”.

The addition of the term “tickets” does not avoid a finding of a confusing similarity since the Complainant’s
Trademark is clearly recognizable in the Disputed Domain Name. See section 1.8 of the WIPO Overview of
WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the relevant

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trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

Furthermore, the gTLD “.com” does not affect the confusing similarity between the Disputed Domain Name and the Complainant’s earlier Trademarks. See section 1.11 of the WIPO Overview 3.0.

Consequently, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s

Trademark. The first element of paragraph 4(a)(i) of the Policy is thus fulfilled.

B. Rights or Legitimate Interests

Numerous UDRP panels have found that, even though the Complainant bears the general burden of proof
under paragraph 4(a)(ii) of the UDRP, the burden of production shifts to the Respondent once the
Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests. See
Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Hence, after the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name, it will be deemed to have satisfied paragraph 4(a)(ii) of the UDRP when the Respondent fails to submit a response.

In this case, the Complainant brings forward the following elements:

- The Trademarks are well-known all over the world;
- No license or authorization has been granted by the Complainant to the Respondent;
- The Respondent does not appear to be known under the Disputed Domain Name, nor to have any
trademark rights in such name; and
- The Complainant has no relationship whatsoever with the Respondent.

Therefore, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.

The Respondent has not come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name.

Given these circumstances, the Panel finds that the second element of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the Disputed Domain Name was registered and is being used by the Respondent in bad faith.

The Complainant’s Trademarks have been recognized as enjoying a considerable reputation by previous
UDRP panels. See in particular: Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983;
Trumpington Investments Limited v. Edward Shelton, WIPO Case No. D2019-0888; Skyscanner Limited v.

Sachin Rawat, Farebulk, WIPO Case No. D2018-0959.

Accordingly, the Panel considers that the Respondent could not plausibly ignore the existence of the

Complainant’s Trademarks at the time the Disputed Domain Name was registered.

As to the use of the Disputed Domain Name in bad faith, prior UDRP panels have recognized that a passive
holding can be found to be a bad faith use. See in particular Telstra Corporation Limited v. Nuclear
Marshmallows, WIPO Case No. D2000-0003.

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In this case:

- The Disputed Domain Name reverts to a parking page;
- The Complainant’s Trademarks are included in their entirety in the Disputed Domain Name;
- The Complainant’s Trademarks enjoy a strong reputation worldwide,

The Respondent’s failure to reply to the Complainant’s contentions give no other basis to the Panel to believe that the Disputed Domain Name might conceivably be put to good faith use.

Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the Disputed Domain Name by the Respondent that would not be illegitimate.

Consequently, the Panel finds that the Disputed Domain Name was registered and used in bad faith, so that the third and final element of paragraph 4(a)(iii) of the Policy is met.

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-tickets.com> be transferred to the Complainant.

/Isabelle Leroux/
Isabelle Leroux
Sole Panelist
Date: June 8, 2022