Skyscanner Limited v Nguyen Hoang Nhan (Nguyễn Hoàng Nhân)
WIPO Case No. D2025-0873
•15-04-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Nguyen Hoang Nhan (Nguyễn Hoàng Nhân)
Case No. D2025-0873
1. The Parties
The Complainant is Skyscanner Limited, United Kingdom, represented by Lewis Silkin LLP, United Kingdom.
The Respondent is Nguyen Hoang Nhan (Nguyễn Hoàng Nhân), Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <skyscannegroup.com> (the “Disputed Domain Name”) is registered with iNET
Corporation (the “Registrar”).
3. Procedural History
| 3, 2025. On March 4, 2025, the Center transmitted by email to the Registrar a request for registrar | The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March requesting the Center to add the Respondent’s details to the Complaint. |
| On March 5, 2025, the Center informed the parties in Vietnamese and English, that the language of the Registration Agreement for the Disputed Domain Name is Vietnamese. On March 6, 2025, the Complainant confirmed its request that English be the language of the proceeding as stated at point 10 of the Complaint. 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”). |
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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in English and Vietnamese, and the proceedings commenced on March 7, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2025.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on April 1, 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, a United Kingdom limited company, is a search aggregator and travel agency based in services are available in over 30 languages and 70 currencies.
London. The Complainant’s travel search engines website with tens of millions of unique visitors per month.
The Complainant is the owner of several registered trademarks including the sign SKYSCANNER, alone or
combined with another element, including but not limited to International Trademark Registration No.
1030086 for SKYSCANNER, registered on December 01, 2009; International Trademark Registration No.
900393 for SKYSCANNER, registered on March 03, 2006; United Kingdom Trademark Registration No.
UK00002313916 for SKYSCANNER, registered on April 30, 2004.
The Complainant is also the owner of the domain name <skyscanner.net>, registered on July 3, 2002.
The Disputed Domain Name was registered on September 18, 2024, and as of the date of this Decision, the
Disputed Domain Name does not resolve to an active website.
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.
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark, in which the
Complainant has rights.
The Complainant is the proprietor of several trademark registrations for SKYSCANNER, and thus enjoys a global reputation in this trademark.
The Complainant argues that the Disputed Domain Name incorporates the Complainant’s SKYSCANNER
trademark nearly in its entirety, simply missing the final ‘r’ and adding the word ‘group’ after the
Complainant’s trademark. The Complainant’s registered trademark is immediately identifiable within the
Disputed Domain Name, the missing letter would not be noticed or would be considered an error and the
additional word would be understood as referring to a group company or organization connected with the
Complainant, such that the Disputed Domain Name is highly similar to the Complainant’s trademark.
Further, the Complainant contends that the generic Top-Level-Domain (“gTLD”) (“.com”) is permissible to be ignored for the purposes of assessing identity and confusing similarity.
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(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant asserts that the Respondent does not own any registered rights in any trademarks which comprise part or all of the Disputed Domain Name. The term “skyscanne” is not descriptive in any way, nor does it have any generic, dictionary meaning and the Complainant has not given its consent for the
Respondent to use its registered trademarks in a domain name registration.
In addition, the Complainant argues that the Respondent was aware of the Complainant’s rights prior to registering the Disputed Domain Name and visitors to the Disputed Domain Name would mistakenly believe there to be an association with the Complainant.
The Complainant submits that it has made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name. While the Complainant has the burden of proof, the burden of production shifts so that it is now incumbent upon the Respondent to rebut the Complainant’s prima facie case.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Complainant submits that the Respondent registered and uses the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered over 20 years after the Complainant’s trademark
SKYSCANNER and the Respondent was aware of the reputation of the Complainant’s business under its
SKYSCANNER trademark at the time the Disputed Domain Name was registered, by which point the
Complainant already enjoyed global fame in its trademarks.
Further, the Complainant contends that, in consideration of the current inactive form of the Disputed Domain which amounts to registration and use in bad faith.
Name, although the actual way in which the Respondent seeks to make money from the Disputed Domain
Additionally, the Complainant asserts that, there can be no legitimate justification for the registration of the Disputed Domain Name that replicates the Complainant’s well-known trademark nearly in its entirety and in the absence of any meaningful justification, the Respondent’s passive holding of the Disputed Domain Name
constitutes use in bad faith.
Finally, the Complainant submits that, in the absence of a response from the Respondent as to why the use could be in good faith, on balance of probability, the Respondent registered and used the Disputed Domain Name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Language of the Proceeding
The language of the Registration Agreement for the Disputed Domain Name is Vietnamese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
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The Complaint was filed in English. The Complainant requested that the language of the proceeding be
English for several reasons, including the fact that:
i. The Respondent clearly has a working knowledge of English as it has chosen to register the Disputed
Domain Name that is a portmanteau of the English words, “Sky”, “Scanner”, and “Group”.
ii. The Complainant does not have a working knowledge of Vietnamese and to require the Complainant to
translate proceedings into Vietnamese would place a disproportionate burden on it.
iii. Holding proceedings in English would be procedurally efficient and fair on both parties.
The Respondent did not make any specific submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
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.
The Panel finds that the Complainant has evidenced that it has rights in and to the SKYSCANNER trademark, which was registered in several countries before the registration of the Disputed Domain Name.
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.
The Disputed Domain Name consists of the term “skyscanne” which differs from the SKYSCANNER trademark only in the missing of the final “r”. The Panel considers this to be an obvious misspelling of the trademark and finds that the Disputed Domain Name is confusingly similar to the mark for purposes of the first element. WIPO Overview 3.0, section 1.9
Although the addition of other term “group” may bear on assessment of the second and third elements, the
Panel finds the addition of such term does not prevent a finding of confusing similarity between the Disputed
Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
In addition, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the viewed as a standard registration requirement. WIPO Overview 3.0, section 1.11.1.
The Panel finds the first element of the Policy has been established.
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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.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain
name or a name corresponding to the domain name in connection with a bona fide offering of goods or
services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name,
even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no
license, permission or authorization in any kind to use the Complainant’s SKYSCANNER trademark has
been granted to the Respondent. There is no evidence available that the Respondent holds any registered
or unregistered trademark rights in any jurisdiction related to “SKYSCANNER”. Thus, the Panel finds that
the Respondent has no rights in the SKYSCANNER trademark or any trademarks which comprise part or all
of the Disputed Domain Name.
The Disputed Domain Name is resolving to an inactive website as of the date of the Complaint and this under the Disputed Domain Name if it has such intention. However, no evidence is available on the Respondent’s preparation to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Hence, in absence of this evidence, the Panel is of the view that paragraph 4(c)(i) is not met.
Decision. The Panel also notes that it has been more than 6 months from the registration of the Disputed
Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds no evidence indicating that the Respondent, whether as an individual, business, or entity, is commonly known by the Disputed Domain Name, nor is the Respondent making a legitimate noncommercial or fair use of it. In fact, the Disputed Domain Name appears as an obvious and intentional misspelling of the Complainant’s SKYSCANNER trademark, and the adoption of such misspelling may be regarded as a sign of an intention to confuse and
attract Internet users seeking for the Complainant, which cannot constitute fair use.
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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, including:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from
reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such
conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a
competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet
users to your website or other online location, by creating a likelihood of confusion with the Complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or
service on your website or location.”
In the present case, the Panel finds that the Complainant has put forth evidence that the Respondent has
registered and used the Disputed Domain Name in bad faith. The Respondent did not formally reply to the
Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.
The Panel has considered the Complainant’s assertions and evidence relating to the Respondent’s
registration and use of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s
SKYSCANNER trademark has been registered and put in use in numerous countries worldwide, including
Viet Nam, where the Respondent resides.
Also, the Panel is of the view that, the Respondent intentionally chose to register the Disputed Domain Name, which is comprised of the Complainant’s SKYSCANNER trademark nearly in its entirety, missing the final “r” only and the descriptive element “group”, in order to somehow confuse Internet users that the Disputed Domain Name may have a connection with the Complainant. The Complainant’s trademark had been in use for several decades prior to the registration of the Disputed Domain Name. The extensive use and recognition of the SKYSCANNER trademark suggest that the Respondent was likely aware of the Complainant’s trademark at the time of registration. The Panel considers such registration is an attempt by the Respondent to take advantage of the Complainant’s goodwill. WIPO Overview 3.0, section 3.2.1.
Panels have found that the non-use of a domain name (including a blank 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 Complainant has established the third element of the Policy.
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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 <skyscannegroup.com> be transferred to the Complainant.
/Pham Nghiem Xuan Bac/
Pham Nghiem Xuan Bac
Sole Panelist
Date: April 15, 2025
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