Skyscanner Limited v Pashina Olga Nikolaevna

WIPO Case No. D2022-3165

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Pashina Olga Nikolaevna

Case No. D2022-3165

1. The Parties

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

The Respondent is Pashina Olga Nikolaevna, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <skyscannerj.com> (the “Domain Name”) is registered with RU-CENTER-MSK

(Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August

26, 2022. On August 26, 2022, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the Domain Name. On August 29, 2022, the Registrar 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 August 31, 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 August 31, 2022.

On August 31, 2022, the Center sent an email to the Parties in both English and Russian regarding the language of the proceedings. On August 31, 2022, the Complainant reconfirmed its request that English be the language of the proceedings referring to the respective arguments contained in the Complaint in support

of its request. The Complainant also informed that the Respondent’s reply in Russian would be accepted.

The Respondent did not provide any comments regarding the language of the proceedings.

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 both English and Russian, and the proceedings commenced on September 7, 2022.

In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2022.

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on

September 30, 2022.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on October 6, 2022. 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 is a company operating a travel search site which provides instant online comparisons for flights, car hire and hotels.

The Complainant is the owner of numerous SKYSCANNER trademark registrations, including:

- the United Kingdom Trademark Registration SKYSCANNER No. 2313916 registered on April 30, 2004; - the International Trademark Registration SKYSCANNER No. 1030086 registered on December 1, 2009; - the European Union Trade mark Registration SKYSCANNER No. 0900393 registered on March 3, 2006.

The Complainant’s primary domain name incorporating its SKYSCANNER trademark is <skyscanner.net>.

The Domain Name was registered on July 11, 2022.

The Complaint contains evidence that at the time the Complaint was filed, the Domain Name resolved to a

website providing tourism and travel information (the “Website”). As of the date of this Decision, the Domain

Name resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the Domain Name be transferred to the Complainant. According to the case.

First, the Complainant submits that the Domain Name is identical or confusingly similar to the

SKYSCANNER trademark in which the Complainant has rights.

Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the

Domain Name.

Third, the Complainant submits that the Domain Name was registered and is being used in bad faith.

B. Respondent

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

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6. Discussion and Findings

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

The requested remedy may only be granted if the above criteria are met.

At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A. Language of the Proceeding

The language of the Registration Agreement for the Domain Name is Russian. Paragraph 11(a) of the Rules

provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement,

the language of the administrative proceeding shall be the language of the Registration Agreement, subject

to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative

proceeding”. The Panel may also order that any documents submitted in a language other than that of the

proceeding be translated.

As noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case, and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).

The Complainant has submitted a request that the language of the proceeding be English.

The Complainant notes that the Domain Name consists of the Complainant’s SKYSCANNER trademark

which constitutes an English term. Moreover, the Complainant submits that it does not have a working
knowledge of Russian. It would thus place a disproportionate burden on the Complainant to require it to
translate the proceedings into Russian. According to the Complainant, it would be procedurally efficient and
fair on both Parties to hold proceedings in English.

The Panel considers that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian. Moreover, the Panel notes that the Respondent did not comment on the language of the proceeding, even though it was notified in English and Russian regarding the language of

the proceeding.

Thus, taking these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English.

B. Identical or Confusingly Similar

The first element that the Complainant must establish is that the Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights.

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The Complainant holds valid SKYSCANNER trademark registrations which precede the registration of the Domain Name. The Domain Name incorporates this trademark in its entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or

confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS

Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).

The Domain Name contains additional letter “j” after the Complainant’s SKYSCANNER trademark. UDRP

panels have consistently held that a domain name which consists of a common, obvious, or intentional
misspelling of a trademark, such as the addition or interspersion of other terms or numbers, is considered by

panels to be confusingly similar to the relevant mark for purposes of the first element.

The Top-Level Domain (“TLD”) “.com” in the Domain Name is viewed as a standard registration requirement

and as such is disregarded under the first element confusing similarity test. See section 1.11.1,

WIPO Overview 3.0.

Given the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s

trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name.

The respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that it has used or made 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 prior to the dispute; or

(ii) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or

(iii) that it is 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.

Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.

On the contrary, it results from the evidence in the record that the Complainant’s SKYSCANNER trademark

registrations predate the Respondent’s registration of the Domain Name. There is no evidence in the case

file that the Complainant has licensed or otherwise permitted the Respondent to use the SKYSCANNER
trademark or to register the Domain Name incorporating this trademark. There is also no evidence to
suggest that the Respondent has been commonly known by the Domain Name.

Moreover, it results from the evidence in the record that the Respondent does not make use of the Domain Name in connection with a bona fide offering of goods or services, as well as it does not make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain. On the contrary, the

Domain Name has been used to attract Internet users to the Website providing tourism and travel

information in direct competition with the Complainant’s services. Such use of the Domain Name does not

confer rights or legitimate interests on the Respondent.

Given the above, the Respondent has failed to invoke any circumstances, which could demonstrate,
pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name.

Thus, there is no evidence in the case file that refutes the Complainant’s prima facie case. The Panel

concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

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D. Registered and Used in Bad Faith

The third requirement the Complainant must prove is that the Domain Name has been registered and is being used in bad faith.

Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See section 3.1, WIPO Overview 3.0.

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use includes without limitation:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling,
renting, or otherwise transferring the domain name registration to the owner of a trademark or to a
competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket

costs directly related to the domain name; or

(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a
trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct;

or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the
business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a

product or service on a website or location.

As indicated above, the Complainant’s rights in the SKYSCANNER trademark predate the registration of the

Domain Name. This Panel finds that the Respondent was or should have been aware of the Complainant’s

trademark at the time of registration of the Domain Name. This finding is supported by the content of the

Website suggesting association with the Complainant. Moreover, it has been proven to the Panel’s satisfaction that the Complainant’s SKYSCANNER trademark is well known and unique to the Complainant.

Thus, the Respondent could not likely reasonably ignore the reputation of products and services under this trademark. In sum, the Respondent in all likelihood registered the Domain Name with the expectation of

taking advantage of the reputation of the Complainant’s SKYSCANNER trademark.

Moreover, the Complainant presented evidence that the Domain Name has been used in bad faith by the Respondent to attract Internet users to the Website providing tourism and travel information in competition

with the Complainant’s services and suggesting legitimate association with the Complainant. There is thus

little doubt that the Respondent intended to earn profit from the confusion created with Internet users and
give credibility to its operations. In sum, this Panel finds that the Respondent used the Domain Name in an
attempt to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion
with the SKYSCANNER trademark as to the source, sponsorship, affiliation, or endorsement of the Website
or the activity carried out through the Website by the Respondent.

For the reasons discussed above, the Panel finds that the Complainant has proved the requirements under paragraph 4(a)(iii) 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 Domain Name <skyscannerj.com> be transferred to the Complainant.

/Piotr Nowaczyk/

Piotr Nowaczyk

Sole Panelist
Date: October 20, 2022