Skyscanner Limited v Qi Qi and bai sheng

WIPO Case No. D2024-0042

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Qi Qi and bai sheng

Case No. D2024-0042

1. The Parties

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

The Respondents are Qi Qi, Malaysia (the “First Respondent”), and bai sheng, Hong Kong, China, and

Malaysia (the “Second Respondent”).

2. The Domain Names and Registrar

The disputed domain names <skyscannerf reelance.com>, <skyscannermember.top>,
<skyscannerpage.com>, <skyscannerwebsite.com>, <skyscannerwed.com>, and

<theskyscanner-member.top> are registered with Gname.com Pte. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2024. On January 8, 2024, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain names. On January 9, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which dif fered f rom the named Respondent (Redacted) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 9, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that the disputed domain names are under common control. The Complainant f iled an amendment to the Complaint in English on January 9, 2024.

On January 9, 2024, the Center informed the Parties in Chinese and English, that the language of the
Registration Agreement for the disputed domain names <skyscannermember.top> and
<theskyscanner-member.top> is Chinese. On January 9, 2024, the Complainant confirmed its request that
English be the language of the proceeding. The Respondents did not submit any comment on the
Complainant’s submission.

The Center verif ied that the Complaint together with the amendment to the Complaint satisf ied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for

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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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on January 15, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2024. The Respondents did not submit any response. Accordingly, the Center notif ied the Respondents’ default on February 5, 2024.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on February 8, 2024. The Panel f inds 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 based in the United Kingdom and is of fering travel-related services. The Complainant states that its main website “ attracts tens of millions of unique visits per month and that, to date, the Complainant SKYSCANNER smart device app has been downloaded over 70 million times. The Complainant’s services are available in over 30 languages and in 70 currencies. In the month of August 2023 alone, the Complainant’s main website was visited 46.59 million times.

The Complainant owns a large international trademark portfolio for the mark SKYSCANNER, including, in particular the following trademarks: International trademark registration number 900393 for SKYSCANNER registered on March 3, 2006 and International trademark registration number 1030086 for SKYSCANNER registered on December 1, 2009, and designating jurisdictions including Switzerland, China, Norway,

Russian Federation, and Türkiye. The Complainant also has a strong online presence and is the owner of a portfolio of domain names for or incorporating the SKYSCANNER mark, including <skyscanner.com>.

The disputed domain names were registered by the Respondents on the following dates:
<skyscannermember.top>, registered on December 20, 2023; <skyscannerf reelance.com>, registered on
December 15, 2023; <theskyscanner-member.top>, registered on December 20, 2023;
<skyscannerwebsite.com>, registered on January 2, 2024; <skyscannerpage.com>, registered on January
2, 2024; and <skyscannerwed.com>, registered on January 2, 2024. According to the Complainant’s
evidence, the disputed domain names <skyscannermember.top> and <theskyscanner-member.top>
resolved to identical websites which displayed the Complainant’s logo, required a phone number or
username with a password to login, and indicated “Find and Book Cheap Hotels Anywhere” and “©
Skyscanner Ltd 2002-2023”); the disputed domain names <skyscannerpage.com> and
<skyscannerwebsite.com> resolved to identical websites which also requested login information or register
in order to purchase air tickets; the other disputed domain names <skyscannerf reelance.com> and

<skyscannerwed.com> did not connect to active websites.

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 names.

Notably, the Complainant contends that it is the owner of a number of registered trademarks consisting of SKYSCANNER (in various combinations) and that this trademark has a strong reputation, which has already been recognized by panels applying the Policy in earlier cases such as Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983. The Complainant asserts that the disputed domain names are confusingly similar to the abovementioned trademarks since they incorporate such trademarks combined with ordinary dictionary words like “member”, “freelance”, “website”, “page”, and “wed”. The Complainant also argues that

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those of the disputed domain names directing to active websites displayed websites impersonating the Complainant and were used to pose as the Complainant’s business and entice consumers in to booking f lights through such disputed domain names, to receive commission, or, for those disputed domain names not directing to active websites, are likely to be used as such imminently. The Complainant alleges that in these circumstances the Respondents have no rights or legitimate interests in the disputed domain names, which were registered and are being used in bad faith.

B. Respondents

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

6. Discussion and Findings
6.1 Preliminary Issues
A. Consolidation of the Respondents

The Complainant requests consolidation in regard to the Respondents, as the disputed domain names are currently owned by seemingly multiple registrants. In this regard, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) states in section 4.11.2: “Where a complaint is f iled against multiple respondents, panels look at whether (i) the domain names or

corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural ef f iciency would also underpin panel consideration of such a consolidation scenario.” (see in this regard also prior UDRP decisions such as Speedo Holdings B.V. v. Programmer, Miss Kathy Bekerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281).

The Panel has carefully reviewed all elements of this case, giving particular weight to the following elements and facts: (A) all of the disputed domain names consist of a combination of the Complainant’s trademarks with another term, thereby exposing a pattern; (B) the Registrar for the disputed domain names is identical (i.e., Gname.com Pte. Ltd.); (C) the Second Respondent is the registrant for four of six disputed domain names, the email address of the First Respondent is virtually identical to one of the email addresses of the Second Respondent, and the First Respondent’s postal address and post codes are similar to the Second Respondent’s contact information in Malaysia; (D) the disputed domain names were registered within three weeks of one another; and (E) those of the disputed domain names connected to active websites (namely <skyscannermember.top>, <skyscannerpage.com>, <skyscannerwebsite.com>, and

<theskyscanner-member.top>) displayed similar websites, requesting login information in order to find hotels or purchase air tickets. The Panel also notes that the Respondents did not submit any arguments and did not contest the request for consolidation.

In view of these elements, the Panel finds that the Respondents are the same or connected, and that in this case consolidation would be fair and equitable to all Parties involved and would safeguard procedural ef f iciency. The Panel therefore decides to grant the request for consolidation of the Respondents and shall hereaf ter refer to the Respondents jointly as “the Respondent”.

B. Language of the Proceeding

The language of the Registration Agreements for the disputed domain names <skyscannermember.top> and <theskyscanner-member.top> is Chinese. The language of the Registration Agreements for the disputed domain names <skyscannerwed.com>, <skyscannerwebsite.com>, <skyscannerf reelance.com> and

<skyscannerpage.com> is English. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement
between the parties, or unless specif ied otherwise in the registration agreement, the language of the

administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be
English for several reasons, including the fact that the disputed domain names are comprised of the

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Complainant’s trademark SKYSCANNER (which is comprised of the English words “sky” and “scanner”) and the words “member”, “freelance”, “website”, “page”, and “wed”, which are designed to mislead Internet users into believing they are accessing a members-only website for users of the Complainant’s services, such that the Respondent clearly has a working knowledge of English.

The Respondent did not make any specific submissions with respect to the language of the proceeding.

The Panel further notes that the disputed domain name <skyscannermember.top> and <theskyscanner- member.top> resolve to identical websites in English.

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 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.

6.2 Discussion and Findings on the Merits
A. Identical or Confusingly Similar

It is well accepted that the f irst 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 names, 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 entirety of the mark is reproduced within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, respectively “member”, “f reelance”, “the”, “website”, “page”, and “wed”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel f inds the f irst 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 of ten 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 names. The Respondent has

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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.

Moreover, upon review of the facts and evidence, the Panel notes that the Respondent has not provided any evidence of the use of, or demonstrable preparations to use, the disputed domain names in connection with a bona f ide offering of goods or services. Instead, upon review of the facts and the evidence submitted in this proceeding, the Panel notes that those of the disputed domain names directing to active websites, show a clear intent on the part of the Respondent to misleadingly pass it of f as the Complainant’s websites for commercial gain. It is clear to the Panel from the foregoing elements that the Respondent is not a good faith provider of goods or services under the disputed domain names, see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Given the abovementioned elements, the Panel concludes that the Respondent’s use does not constitute a bona f ide of fering of goods or services, nor a legitimate

noncommercial or fair use of the disputed domain names.

Panels have held that the use of a domain name for illegal activity here, impersonation/passing off can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Furthermore, the Panel notes that according to the Complainant’s evidence, some of the disputed domain names direct to inactive or blank webpages. In this regard, the Panel f inds that holding these disputed domain names passively in this proceeding, without making any use of them, also does not confer any rights or legitimate interests in these disputed domain names on the Respondent (see in this regard earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691; and

Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui), WIPO Case No. D2021-1685).

Finally, the Panel also finds that the nature of all of the disputed domain names, being confusingly similar to the Complainant’s trademarks and consisting of additional dictionary terms which seem to refer to the Complainant, such as “member”, “freelance”, “website”, “page”, and “wed”, carries a risk of implied aff iliation and cannot constitute fair use, as it effectively impersonates the Complainant and its products or suggests sponsorship or endorsement by the Complainant (see WIPO Overview 3.0, section 2.5.1).

The Panel f inds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Given the intensive use, fame and distinctiveness of the Complainant’s prior registered trademarks, the Panel f inds that the subsequent registration of the disputed domain names, which are confusingly similar to such marks, clearly and consciously targeted the Complainant’s prior registered trademarks (see for instance Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983). The Panel therefore deducts f rom the

Respondent’s ef forts to consciously target the Complainant’s well-known prior trademarks that the
Respondent knew of the existence of the Complainant’s trademarks at the time of registering the disputed
domain names. This f inding is conf irmed by the fact that the disputed domain names
<skyscannermember.top> and <theskyscanner-member.top> resolve to active websites displaying the
Complainant’s logo with a copyright notice “© Skyscanner Ltd 2002-2023”, since this proves that the
Respondent was fully aware of the Complainant. In the Panel’s view, the foregoing elements clearly indicate
bad faith on the part of the Respondent, and the Panel therefore finds that it has been demonstrated that the
Respondent registered the disputed domain names in bad faith.

As to use of the disputed domain names in bad faith, the Complainant provides evidence that the use of the disputed domain names which are linked to active websites shows the Respondent’s clear intent to create a likelihood confusion with the Complainant for commercial gain. The Panel concludes f rom these facts that the Respondent has intentionally attracted Internet users for commercial gain to such websites, by creating consumer confusion between the websites associated with the disputed domain names and the

Complainant’s trademarks. This constitutes direct evidence of the Respondent’s bad faith under paragraph 4(b)(iv) of the Policy. The Panel therefore f inds that it has been demonstrated that the Respondent has used, and is using these disputed domain names in bad faith.

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Moreover, the Panel notes that according to the Complainant’s evidence, some of the disputed domain names direct to inactive or blank webpages. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a f inding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain names does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and well-known nature of the Complainant’s trademarks, the composition of the disputed domain names, and the Respondent’s possible use of false or incomplete contact details (the Written Notice was not delivered by courier service) and f inds that in the circumstances of this case the passive holding of these disputed domain names does not prevent a f inding of bad faith under the Policy.

The Panel f inds that the Complainant has established the third element of the Policy.

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 names <skyscannerf reelance.com>, <skyscannermember.top>,
<skyscannerpage.com>, <skyscannerwebsite.com>, <skyscannerwed.com>, and

<theskyscanner-member.top> be transferred to the Complainant.

/Deanna Wong Wai Man/
Deanna Wong Wai Man
Sole Panelist
Date: February 21, 2024