#FlyScanner : UDRP complaint denied due to descriptive nature of the #domain

UDRP has been denied.

The UDRP complaint against the domain Fly-Scanner.com was denied, on the basis of descriptiveness in its use.

The Complainant is Skyscanner Limited of London, United Kingdom, that possess trademarks for SKYSCANNER. Apparently, they considered the Fly-Scanner.com domain and service to be unfair competition, although the marks involved are distinctively different.

According to the Respondent:

“The Respondent argues that the Domain Name is not confusingly similar to the Complainant’s mark, because many search and travel websites use “scanner” descriptively. The Respondent argues that it has a legitimate interest in using the Domain Name appropriately for this descriptive purpose, of scanning for flights, as well as for hotels and car rentals. The Respondent observes that there is no resemblance between the Respondent’s and the Complainant’s websites and denies any attempt to exploit the Complainant’s mark and mislead consumers.”

W. Scott Blackmer, sole panelist at the WIPO, agreed that the domain is generic and descriptive, making use of words that have no relation to the mark and offering an actual service:

“On the available record, the Panel finds that the Respondent has made a plausible case for legitimately selecting and using the Domain Name for its descriptive value, rather than for its potential to confuse Internet users as to source or affiliation. The Panel finds it more probable than not that, even assuming the Respondent was aware of the Complainant, the Respondent acquired the Domain Name for its descriptive sense and proceeded to use it for a relevant, commercial purpose. This is also true of many other enterprises operating “scanner” websites, some of which also evidently compete with the Complainant. As the Complainant holds the ultimate burden of proof on each element, the Panel concludes, therefore, that the Respondent prevails on the second and third elements of the Complaint.”

Full details of this UDRP decision follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Fabio Passal, BLUE SAS
Case No. D2018-1782

1. The Parties

The Complainant is Skyscanner Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Keltie LLP, UK.

The Respondent is Fabio Passal, BLUE SAS of Clichy, France, represented by Studio Legale Bird & Bird, Italy.

2. The Domain Name and Registrar

The disputed domain name <fly-scanner.com> (the “Domain Name”) is registered with Gandi SAS (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2018. On August 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 10, 2018, 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 16, 2018 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 amended Complaint on August 20, 2018.

The Center verified that the Complaint together with the amended 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 August 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2018. On September 12, 2018, the Respondent sent an email communication to the Center requesting an additional four (4) calendar days in which to submit a Response. The Response was filed with the Center on September 16, 2018.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 27, 2018. 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

According to the Complaint, the Complainant’s founders in Edinburgh, Scotland developed a travel metasearch engine and travel fare aggregator website with the “Skyscanner” name in 2002 and 2003, respectively, forming a UK limited company in 2004. The Complainant’s website at “www.skyscanner.com” is now available in more than 30 languages and is used by over 60 million people monthly. The website also includes travel news and tips. In addition, the Complainant operates a mobile application with similar functionality. The Complainant acquired travel companies in other countries and was in turn acquired in 2016 by Ctrip, the largest travel company in China. Previous UDRP panels have recognized the Complainant’s rapid growth, its portfolio of “skyscanner” domain names, and its large following of international online users. See Skyscanner Limited v. Ali Karatas, Fast Line (UK) Ltd, WIPO Case No. D2016-0176; Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983.

The Complainant holds numerous trademark registrations for SKYSCANNER, including the following:

MARK

JURISDICTION

REGISTRATION NUMBER

REGISTRATION DATE

SKYSCANNER (word)

UK

2313916

April 30, 2004

SKYSCANNER (word)

European Union

0900393

March 3, 2006

SKYSCANNER (standard characters)

United States

3242752

May 15, 2007

SKYSCANNER (word)

International Trademark (WIPO)

1030086

December 1, 2009

According to the Registrar, the Domain Name was created by an individual in China in 2012 and then acquired by “Arnaud Cohen Scali” on behalf of the organization BLUE in July 2014, with the name of the registrant subsequently changed to that of the Respondent Fabio Passal of the organization BLUE SAS. Both are referred to collectively as the “Respondent” hereafter.

The Response says very little about the Respondent’s business or principals. It appears from the official French government website at “www.sirene.fr” that BLUE SAS is a limited share company established in 2013, with no employees at the time of the latest (2017) report. The Respondent’s website associated with the Domain Name does not describe the Respondent, and its “About Us” tab links only to a privacy policy. The privacy policy refers to Findworks, a Parisian technology enterprise that appears to be associated with the French travel website “www.liligo.fr”. The business relations among these companies cannot be ascertained from the Response and the Respondent’s website. Lacking employees, it would seem that the Respondent’s operation must be automated and linked to affiliates in the travel business who effectively compete with the Complainant.

From screenshots attached to the Complaint, the Internet Archive’s Wayback Machine, and an examination of the Respondent’s website at the time of this Decision, it is clear that the Respondent has used the Domain Name since at least March 2016 to offer travel search and booking services similar to the Complainant’s, covering flights, hotels, and car rentals, but on a somewhat more limited scale. Services are offered to users in eight languages, for example, not 30, and without the additional news, articles, media, and the wider range of affiliates, travel agents, and special offers that are featured on the Complainant’s website. The Respondent’s tools are more basic and less illustrated, and its website does not mimic the logo or design of the Complainant’s. The Complainant observes that the Respondent’s website does not link to the Complainant or the Complainant’s affiliates.

Attached to the Complaint is a screenshot of a search conducted on Google.es using “skyscanner” as a search term, in which the first advertisement displayed is for the Respondent’s website. This strongly suggests that the Respondent successfully bid on Google AdWords for advertising placements based on the Complainant’s mark. The screenshot is undated but was presumably captured in 2018 along with the other screenshots attached to the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its SKYSCANNER trademark, which the Respondent has used without permission and otherwise without rights or legitimate interests.

The Complainant argues that the Respondent must have been aware of the Complainant’s mark when the Respondent acquired the Domain Name in 2014 and targeted the mark in bad faith to operate a competing business, offering the same services of search and booking for flights, hotels, and car rentals. The Complainant asserts that the Respondent’s Google AdWords competitor targeting (as the practice is known) also demonstrates bad faith.

B. Respondent

The Respondent argues that the Domain Name is not confusingly similar to the Complainant’s mark, because many search and travel websites use “scanner” descriptively. The Respondent argues that it has a legitimate interest in using the Domain Name appropriately for this descriptive purpose, of scanning for flights, as well as for hotels and car rentals. The Respondent observes that there is no resemblance between the Respondent’s and the Complainant’s websites and denies any attempt to exploit the Complainant’s mark and mislead consumers.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar

The Complainant indisputably holds a registered SKYSCANNER trademark. The Domain Name replicates the latter part of that string and is aurally similar to the entire string. Moreover, the sense is similar, since both are comprised of two English dictionary words, and things that “fly” are often in the “sky”. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.7. The Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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.

Although the Respondent does not itself have a corresponding name, it appears that the Respondent has used the Domain Name commercially for a travel aggregator website for more than two years before notice of this dispute. This would satisfy paragraph 4(c)(i) so long as the preponderance of the evidence supported the Respondent’s argument that this is a bona fide use of the Domain Name for its descriptive meaning, referring to searches for flights and other travel arrangements, and not an intentional exploitation of the Complainant’s trademark. That question involves essentially the same facts that are considered in connection with the element of bad faith and, therefore, is discussed more fully below.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”

The Complainant suggests precisely that the Respondent meant to misdirect Internet users and trade on the Complainant’s reputation. According to the Complaint, by the beginning of 2014, when the Respondent acquired the Domain Name, the Complainant had 30 million monthly users on its website and had opened offices in Miami, Beijing, and Singapore in addition to Edinburgh. By that time, the Complainant also had received awards in the UK and had been mentioned in the UK media as offering a highly competitive online fare-searching and travel booking service. These facts make it more likely that the Respondent was aware of the Complainant in July 2016, and the Response does not expressly deny prior awareness.

The parties are unquestionably in the same business, and their markets overlap. They are competitors, and the Complainant is much better known. Thus, there would be an incentive for the Respondent to attract Internet users familiar with the Complainant’s brand. The Respondent denies this motivation, and the question is whether that denial is plausible. On balance, the Panel finds that it is.

The beginning of the Domain Name, “fly”, is somewhat similar in sound and meaning to “sky” at the beginning of the Complainant’s mark, but it is much less likely to mislead than an instance of typo-squatting or the more common simple addition of a descriptive or generic word to a trademark. The rest of the Domain Name, “scanner”, is identical to the last part of the mark, but a similar ending is less likely to confuse than a similar beginning. Moreover, the Respondent observes that many other website operators, particularly in the travel industry, use “scanner” or “scan” descriptively. Examples include <flightscanner.co.uk>, <hotels-scanner.com>, <cars-scanner.com>, <rentacarscanner.com>, <charterscanner.com>, <seascanner.com>, <beach-scanner.com>, <garagescanner.com>, <sailingscanner.com>, <bikescanner.net>, <myroomscanner.com>, and <hotelscan.com>. This tends to support the legitimacy of the Respondent’s claim to a descriptive use of the word “scanner” for a travel booking site.

The Respondent’s logo and website do not mimic the Complainant’s, and “skyscanner” does not appear in the metadata for the Respondent’s website. The Complainant points out that the tag line at the bottom of some pages on the Respondent’s website includes the word “sky”: “Find cheap flights with Flyscanner – Sky is the limit”. But this line is not especially prominent; it does not even appear on the home page. There is no disclaimer of affiliation on the website, but there is also no evident effort to make it appear that “fly-scanner” (as each page is headed) has anything to do with “Skyscanner”.

The Complainant places much emphasis on the Respondent’s competitive purchase of Google AdWords using “skyscanner” as a search term. There is one apparent instance of that, in 2018. AdWords competitor targeting is not necessarily prohibited under Google’s “Advertising Policy” and Google’s “Trademarks in EU and EFTA Policy”, as these take into account legal trademark issues arising from the combination of keyword and advertising text and such additional context as descriptive or generic use, use by resellers, and use for informational sites. (See Google policies currently posted at “https://support.google.com/adspolicy/answer/6118”). AdWords competitor targeting is a common practice with legal risks. It does not necessarily prove bad faith in the UDRP context, but it may be relevant. AdWords competitor targeting could serve as evidence of a respondent’s awareness of a mark, for example, and it could support the inference of intent to exploit a trademark held by another. In this case, however, it is suggestive but hardly dispositive of the Respondent’s intent four years earlier when acquiring the Domain Name. It may only reflect what some would consider a questionable business decision taken later.

The Complainant argues further that “UDRP panels have historically found that there can be a finding of registration and use in bad faith where there is passive use of a widely known trade mark in a domain name where there is no response and no explanation as to why the use could be good faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).” This argument is not apposite here. Telstra and the “passive holding” doctrine are concerned with cases where the registrant has not yet made any active use of the disputed domain name, not simply where no response has been filed. See WIPO Overview 3.0, section 3.3. Here, the Respondent uses the Domain Name for a commercial website, and it has also filed a Response.

On the available record, the Panel finds that the Respondent has made a plausible case for legitimately selecting and using the Domain Name for its descriptive value, rather than for its potential to confuse Internet users as to source or affiliation. The Panel finds it more probable than not that, even assuming the Respondent was aware of the Complainant, the Respondent acquired the Domain Name for its descriptive sense and proceeded to use it for a relevant, commercial purpose. This is also true of many other enterprises operating “scanner” websites, some of which also evidently compete with the Complainant. As the Complainant holds the ultimate burden of proof on each element, the Panel concludes, therefore, that the Respondent prevails on the second and third elements of the Complaint.

7. Decision

For the foregoing reasons, the Complaint is denied.

W. Scott Blackmer
Sole Panelist
Date: October 5, 2018


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