201810.23

Skyscanner loses UDRP complaint in surprising decision

On 5th October 2018, the WIPO Arbitration and Mediation Centre published a decision related to the domain name fly-scanner.com and ordered that the domain name remains with the respondent (D2018-1782).
This decision may appear as surprising at first sight given Skyscanner’s huge market share and 60 million active users.
Let’s try and understand the decision.
The Complainant states that the domain fly-scanner.com is highly similar to its marks SKYSCANNER. Globally, the domain indeed seems very similar, as shown below:
S K Y   S C A N N E R
F L YS C A N N E R . com
A great part of the mark can be found in the domain name. The Panel agrees with this approach, against the Defendant’s argument who contested the similarity between the signs due to the descriptive character of the term “scanner”. However, the Panel insists that the threshold for the comparison is a rather low and that the terms “fly” and “sky” are additionally very similar from an intellectual point of view.
The Complainant further argued that the owner of the domain did not have a legitimate interest in the registration of this domain name, which the latter denies. The Panel considered that the long-standing use of the domain fly-scanner.com in connection with a plane ticket comparison tool created a legitimate interest in the domain for the respondent.
That analysis does not appear to take into consideration all factors of the case at hand, which we detail below:

The websites

The website of both parties are, according to the complaint, similar:
Indeed, both use the same structure overall: a header banner with the logo, a background image on which a search engine is available, and secondary information below.
At first glance, both websites deliver the same impression to first time users, and we believe the likelihood of confusion is genuine.
This idea is reinforced by the fact that both websites offer comparisons not only on plane tickets but also on accommodation and car rentals. In addition, search results are displayed in a very similar fashion:

The logos

According to the decision, the logo used on fly-scanner.com does not mimic that of Skyscanner. While it is true that colours, icons, and typography differ, several factors also bring them closer, in particular, the use of the arcs, representing the search, or the “scan”. A first-time user of either website is, in our opinion, likely to believe that both originate from the same company, or at least to confuse the one with the other.
The likelihood of confusion is reinforced by the fact that no other actor in the industry uses the same graphic elements:
The logos of the complainant and respondent appear highly similar, in comparison with the logos of other actors in the industry, to first-time users. While the intention of the respondent may not be to take advantage of the reputation of Skyscanner, his website appears to do just that, at least in its current use.

The competition

The Panel acknowledged that both parties are active in the same field of business and are competitors. The defendant nevertheless denies willingly creating a likelihood of confusion so as to attract customers for commercial gain. This statement was accepted by the Panel.
The decision states that the terms “fly” and “sky” are indeed intellectually similar, but refuses to recognize a likelihood of confusion on the basis that the term “scanner” is used in its general meaning, by other actors of the industry, on other domain names: <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 would justify the legitimacy of the defendant’s argument that the term “scanner” is used in its general meaning. But arguably, competing businesses, and highly similar domains and websites are strong signs of a potential active action on the party of the defendant. In addition, the use of the term « scanner » in the industry does not justify per se the use of the same term by a precise person, as it all depends on the circumstances of the case.

The lack of legal information

One of the pivot arguments for the decision lies in the fact that the domain name was used in connection with a bona fide offer of services.
However, the use of a business website directed to European customers requires a number of mandatory information, which allow to identify the person or entity responsible for the website and to contact them. This legal information generally comes together with terms and conditions, a privacy policy etc.
The website linked to fly-scanner.com only comprises a page with information related to the collection of cookies, which appears to be a simple copy of the same on another website, FindWorks.

The use of fly-scanner.com

According to the decision, fly-scanner.com has been used as a plane ticket search engine for at least two years. Indeed, in June 2017, the corresponding website did exist, but looked nothing similar:
At the time, the use of the website was clearly not mimicking Skyscanner. However, one of the UDRP conditions is the use of the website at the time of the complaint: with the logo, the search engine and the lack of legal information.
* *
Be it SKYSCANNER or FLY-SCANNER, both terms are highly descriptive and, under trademark law, are granted a lesser protection.
The current use of the domain fly-scanner.com seems to attempt to take advantage of Skyscanner. Nevertheless, and we believe that is the pivot argument of the decision, the complainant did not put forward any argumentation to prove the domain was registered in bad faith. If the complainant had done so, the decision might not have been the same.

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