WIPO Arbitration and Mediation Center

EXPERT DECISION

Skyscanner Limited v. Ms R. S.

Case No. DCH2020-0002

1. The Parties

The Claimant is Skyscanner Limited, represented by Keltie LLP, United Kingdom.

The Respondent is R. S., Slovakia.

2. Domain Name

The dispute concerns the following domain name <skyscaner.ch> (the “Disputed Domain Name”).

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2020. On February 28, 2020, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the Disputed Domain Name. On February 28, 2020, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the Disputed Domain Name and providing the relevant contact details. The Center verified that the Request satisfied the formal requirements of the Rules of procedure for dispute resolution procedures for “.ch” and “.li” domain names (the “Rules of Procedure”), adopted by SWITCH, on January 1, 2020.

In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the Dispute resolution procedure commenced on March 9, 2020. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was March 29, 2020.

On February 3, 2020, the Center notified the Claimant accordingly, who on March 31, 2020, made an application for the continuation of the Dispute resolution proceedings in accordance with specified in paragraph 19 of the Rules of Procedure and paid the required fees.

On April 24, 2020, the Center appointed Andrea Mondini as Expert in this case. The Expert finds that it was properly appointed. In accordance with Rules of Procedure, paragraph 4, the Expert has submitted his declaration of independence.

4. Factual Background

The Claimant is the owner of the Swiss designations of the International trademark registrations

- No. 1030086 for SKYSCANNER, registered on December 1, 2009 and

- No. 1133058 for the SKYSCANNER logo, registered on August 16, 2012,

which both claim travel-related services in Class 39.

The Disputed Domain Name was first registered on September 2, 2014.

The Disputed Domain Name resolved to a website offering travel arrangement services under the Claimant’s trademark.

5. Parties’ Contentions

A. Claimant

In summary, the Claimant asserts the following:

The Claimant owns the trademark SKYSCANNER in Class 39 in Switzerland and uses this trademark to offer online travel arrangement services.

The Disputed Domain Name is almost identical to the trademark SKYSCANNER and the Respondent is using it to direct consumers to a website that offers travel arrangement services under the Claimant’s trademark.

Such use without the consent of the Claimant constitutes an infringement of the Claimant’s rights in the trademark SKYSCANNER in Switzerland according to Art. 13 para. 1 of the Swiss Trademark Act (“STA”).

Such use further breaches Art. 3(d) of the Swiss Unfair Competition Act, which prohibits steps that create confusion with the goods or services of others (“SUCA”).

B. Respondent

The Respondent has not submitted a response.

6. Discussion and Findings

According to the Rules of Procedure, Paragraph 24(c), “the Expert shall grant the request if the allocation or use of the domain name constitutes a clear infringement of a right in a distinctive sign which the Claimant owns under the laws of Switzerland”.

The Rules of Procedure, Paragraph 24(d) specify that “a clear infringement of an intellectual property right exists when:

- both the existence and the infringement of the claimed right in a distinctive sign clearly result from the wording of the law or from an acknowledged interpretation of the law and from the presented facts and are proven by the evidence submitted; and

- the respondent has not conclusively pleaded and proven any relevant grounds for defense; and

- the infringement of the right justifies the transfer or revocation of the domain name, depending on the remedy requested in the request”.

A. The Claimant has a right in a distinctive sign under the law of Switzerland

The Claimant has established ownership of the Swiss designations of the International trademark registrations

- No. 1030086 for SKYSCANNER, registered on December 1, 2009 and

- No. 1133058 for the SKYSCANNER logo, registered on August 16, 2012,

which both claim travel-related services in Class 39.

Therefore, the Expert finds that the Claimant has established its exclusive right in its distinctive sign (i.e. the trademark SKYSCANNER) in Switzerland. Accordingly, the Claimant has provided sufficient evidence of Swiss trademark rights in accordance with Paragraph 24(d)(i) of the Rules of Procedure.

B. The allocation or use of the domain name constitutes a clear infringement of the Claimant’s right

According to Art. 13 para 1 and para. 2(c) STA, a trademark right confers on the proprietor the exclusive right to use the trademark to identify the goods or services for which it is claimed, and to prohibit others from offering or providing services under a sign that is identical or confusingly similar to its trademark.

According to Swiss supreme court rulings, the use of domain names that are identical or confusingly similar to a trademark on websites offering the same or similar goods constitutes trademark infringement (see e.g. decisions of the Swiss Federal Supreme Court 4C.31/2004, <riesen.ch> and 4C.341/2005 <swiss-life.ch>).

The Disputed Domain Name <skyscaner.ch> is almost identical to the trademark SKYSCANNER and its use by the Respondent to direct consumers to a website that offers travel arrangement services under the Claimant’s trademark clearly constitutes a trademark infringement under Swiss law.

Given that the transfer of the Disputed Domain Name is already justified on the basis of the clear trademark infringement, any potential infringement of the UCA does not need to be examined.

7. Expert Decision

For the above reasons, in accordance with Paragraph 24 of the Rules of Procedure, the Expert orders that the Disputed Domain Name <skyscaner.ch> be transferred to the Claimant.

Andrea Mondini
Expert
Dated: May 15, 2020