WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comair Limited v. Ebrahim Kaskar, Shalimar
Case No. D2016-1252
1. The Parties
The Complainant is Comair Limited of Johannesburg, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Ebrahim Kaskar, Shalimar of Cape Town, South Africa.
2. The Domain Name and Registrar
The disputed domain names <kulula.capetown>, <kulula.durban> and <kulula.joburg> are registered with Diamatrix CC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“the Center”) on June 21, 2016. On June 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 24, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2016.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on August 5, 2016. 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 following facts and circumstances are to be found in the Complaint and its annexures and, in the absence of challenges in a Response or otherwise dealing with the merits, can be accepted as background.
The Complainant is the proprietor of 32 registered trademarks for the mark KULULA and other marks incorporating the word “Kulula” in South Africa. It has made extensive use of its KULULA trademark for some fifteen years, and its earliest trademark applications date back to 2001. The Complainant’s trademark registrations date as far back as June 27, 2005. It holds registered trademarks in various classes in ten African countries including, in particular, South Africa where it holds registered trademarks No. 2001/10306-8 and No. 2002/18878-86, both in respect of KULULA in a variety of classes.
In addition to the registered trademarks, it claims common law rights in and to the trademark KULULA since 2001. The Complainant owns the domain names <kulula.com> and <kulula.co.za>, together with other domain names incorporating the mark KULULA. The Complainant has a website, namely “www.kulula.com”, which is its primary portal for conducting business.
The Complainant launched a low-fare air carrier in 2001. It currently operates more than 600 flights a month, including local flights between Johannesburg and Cape Town, Durban, East London, George and Port Elizabeth, and a coastal route from Cape Town to Durban, all in South Africa. In addition, it operates flights out of South Africa to neighboring African countries.
The growth of its business is demonstrated by a tabulation of its turnover figures from 2001 to 2015, with an annual turnover of ZAR 5,890,746,000.00 and marketing expenses of ZAR 101,914,166.00. The turnover has quintupled over this period and the marketing expenses have almost doubled.
The disputed domain names were registered on November 10, 2014 and currently resolve to parking pages, advertising services of domain name registration and webhosting.
5. Parties’ Contentions
The Complainant asserts that, as appears from the nature and extent of its business, it not only enjoys statutory rights in its trademark KULULA but it has also acquired substantial common law rights in the name and trademark KULULA. It contends that by reason of its substantial international reputation, it qualifies as a well-known trademark, as envisaged by Article 6bis of the Paris Convention for the Protection of Industrial Property.
The Complainant points out that the disputed domain names wholly incorporate its KULULA name and mark and therefore any Internet users visiting the Respondent’s websites under the disputed domain names will no doubt be deceived into believing that the websites are operated or endorsed by the Complainant or at the very least that the Respondent’s activities are somehow connected to or associated with the Complainant when this is not the case.
The Complainant contends further that the selection by the Respondent in the disputed domain names of the Top-Level Domains (“TLDs”) “.capetown”, “.joburg” and “.durban”, does not constitute a basis of distinguishing the respective disputed domain names from the Complainant’s well-known trademarks. In fact, the use of such extension is likely to contribute to confusion, since they correspond to cities in South Africa where the Complainant offers its services. The Complainant also contends that the Respondent is not only seeking to but is in fact benefiting from the goodwill and reputation of the Complainant, thus taking unfair advantage of its substantial reputation and goodwill.
The Complainant contends that it became aware of the fact that the Respondent had registered the disputed domain names during February 2016 and then instructed its attorneys to call on the Respondent to cease use thereof and transfer the disputed domain names to the Complainant. No response was received thereto or to the follow-up letter thereafter.
As has already been pointed out earlier in the Complainant’s contentions, the Respondent has no rights or legitimate interests in the disputed domain names, entitling it to register or use them, nor does it have any association or authority from the Complainant.
The Complainant therefore contends that it obviously follows from these circumstances that both the registration and use of the disputed domain names are in bad faith by the Respondent. In particular, the Complainant relies upon the decision of Encyclopaedia Britannica Inc. v. LaPorte Holdings, WIPO Case No. D2005-0866 and contends that where the registration and use of a domain name which is so obviously connected with a well-known product by someone who has no connection therewith clearly suggests opportunistic bad faith. Thus, the Respondent, having no connection with the Complainant’s well-known mark, is obviously acting in bad faith.
The Complainant adds further contentions that the registration of the disputed domain names will prevent it from registering or using identical domain names, thus limiting or preventing its use of its rights in the KULULA trademark. Furthermore there will be an unfair disruption, so it contends, of the Complainant’s business by diversion of consumers to the Respondent’s websites under the disputed domain names and the engendering of a belief in the minds of those so diverted that the Respondent has some link or authority to act in the manner in which it is, suggesting therefore an association or connection between the Complainant and the Respondent businesswise.
As pointed out earlier, in the absence of any response, reaction or communication from the Respondent, nothing is before the Panel reflecting any views, comments or likely defenses from the Respondent.
6. Discussion and Findings
A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration and use of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the Respondent’s rights or legitimate interests in a domain name for the purpose of paragraph 4(a)(ii) of the Policy.
B. Effect of Default
Notwithstanding the fact that the Respondent is in default, the Complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the Complainant to a finding in its favour by reason thereof, as failure by the Complainant to discharge the burden of proof will still result in the Complaint being denied (M. Corentin Benoit Thiercelin v. CyberDeal Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, a.k.a. Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).
The Center sent notice of the Complaint to the Respondent on July 5, 2016, and the Panel is nevertheless satisfied that the Respondent was appropriately notified in accordance with the Policy.
Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the requirement of the Rules (Allianz, Compañia de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942).
The Panel considers that it may accept the reasonable contentions made by the Complainant, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holding A/s v. Above.com Domain Privacy/Host Master, Transure Enterprise Ltd., WIPO Case No. D2012-0040).
C. Identical or Confusingly Similar
As pointed out above, the Complainant holds registered South African trademarks, all pre-dating the disputed domain names, as well as domain names based on the KULULA trademark.
The fact that the word mark KULULA has been incorporated entirely into the disputed domain names is sufficient in this case to establish that they are identical or confusingly similar to the Complainant’s registered mark (Quixtar Investments, Inc. v. Dennis Hoffmann, WIPO Case No. D2000-0253; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopking /Neo net Ltd, WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin/Moniker Privacy Services, WIPO Case No. D2008-0016).
The Panel agrees with the Complainant’s contention that the addition of the TLDs “.capetown”, “.durban” and “.joburg” after the trademark KULULA is not sufficient to exclude the confusing similarity (Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435; VRL International Ltd. v. Domaincar, WIPO Case No. D2006-0240; and Compagnie Gervais Danone of Paris v. Jose Gregorio Hernandez Quintero, WIPO Case No. D2009-1050).
In these circumstances, the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the disputed domain names for the purposes of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain names, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert customers or to target the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain names, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent to rebut or displace the Complainant’s evidence in this regard, despite the overall burden of proof remaining upon the Complainant to disprove each of the three elements of paragraph 4(a) of the Policy. (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, supra).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established.
The Complainant contends that it is the proprietor of the trademark KULULA, and that the Respondent has not been given any permission to register or use any domain name adopting or similar to the trademark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark as part of a domain name for purposes of the Policy. (Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055; Caesars World, Inc. and Park Place Entertain Corporation v. Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp. v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase, Inc. v. Analytical Systems, WIPO Case No. D2004-0360; San Lameer (Pty) Ltd. and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd., supra).
Apart from there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase, Inc. v. Analytical Systems, supra).
The Complainant also contends that the Respondent is using the disputed domain names for the purpose of advertising, inter alia, domain name registration services, thus relying on the reputation of the Complainant.
In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location.”
The Panel notes that the disputed domain names contain in their entirety the Complainant’s trademark, KULULA, which on the face of it is not a word having meaning in the English language.
The implication arising from the disputed domain names, in the mind of an Internet user, is that the Respondent is either of or in some way associated with the Complainant, in connection with the commercial links found at the Respondent’s websites. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith. (Media 24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer (Pty) Ltd. and Sanlam Ltd. v. Atlantic Internet Services (Pty) Ltd, supra).
Moreover, by use of the disputed domain names, which are confusingly similar to the Complainant’s trademark, the Respondent is trading on the value established by the Complainant in its marks and domain names to attract users and thereby deriving economic benefit from either those users attracted to the Respondent’s website or by receiving compensation from others if these would-be customers are routed elsewhere. Such a practice also would constitute bad faith (Yahoo! Inc. and Geo Cities v. Data Art Corp., Data Art Enterprises, Inc, Stonybrook Investments, Globalnet 2000, Inc., Powerclick, Inc., and Yahoo Search Inc., WIPO Case No. D2000-0587).
The selection of a domain name that is the same as, or confusingly similar to, the Complainant’s trademark, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant and intended to benefit therefrom. (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Barclays Bank PLC v. Miami Investment Brokers Inc, WIPO Case No. D2012-1213).
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain names <kulula.capetown>, <kulula.durban> and <kulula.joburg> be transferred to the Complainant.
Archibald Findlay S.C.
Date: August 18, 2016