WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comair Limited v. Kagiso Interactive RSA, Domain Management
Case No. D2018-1396
1. The Parties
The Complainant is Comair Limited of Johannesburg, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Kagiso Interactive RSA, Domain Management of Durban, South Africa, represented by Azgar Ally Khan & Associates, South Africa.
2. The Domain Name and Registrar
The disputed domain name <kulula.app> is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 22, 2018. On June 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 28, 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 July 2, 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 July 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2018. The Response was filed with the Center on July 24, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 2, 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
The Complainant has been operating an airline services business for at least 70 years. In 1998, it became publicly listed on the Johannesburg Stock Exchange.
In 2001, the Complainant launched South Africa's first low-fare air carrier under the brand name "Kulula". Under that name, it has been operating flights within South Africa and to several international destinations since that date. The business has expanded to include other services including car hire services, financial services such as a credit card, and accommodation booking services.
The Complainant registered the domain name <kulula.com> in 2001. It is the primary portal for conducting its "Kulula" business. The Complainant has also registered a number of other domain names based on "Kulula".
The Complainant's revenues under its KULULA brand have grown from R1,160,000,000 in 2001 to R5,900,000,000 in 2015.
The Complainant's annual marketing expenditure has grown from R55,293,798 in 2001 to R101,914,000 in 2015.
The Complaint includes evidence that the Complainant has registered at least 17 trademarks for KULULA in a number of countries: South Africa, Botswana, Egypt, Kenya, Malawi, Namibia, Nigeria, Uganda, and Zimbabwe.
It is not clear when the disputed domain name was first registered by the Respondent. When the Complainant discovered the registration of the disputed domain name in May 2018, the disputed domain name resolved to a "parking page". At the time the Complaint was filed and after the Complainant's lawyers sent a cease and desist letter to the Registrar, the disputed domain name ceased to resolve to any website.
According to the Response, the disputed domain name was registered on behalf of a client in China which is a privately owned psychic group that promotes the services of "triple tested" psychic readers.
At the time this decision is being prepared, the disputed domain name resolves to a website apparently offering professional psychic reader services.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the 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.
Paragraph 15(a) of the Rules directs the Panel to decide the 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 first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in section 4 above. The Complainant also contends it has developed a substantial reputation in the name "Kulula" sufficient to give it rights at common law. Having regard in particular to the length and extent of the Complainant's use of the trademark KULULA, the Panel accepts that claim: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.3.
Disregarding the generic Top Level Domain ("gTLD") ".app", the disputed domain name is identical to the Complainant's trademark.
The Respondent contends that this requirement under the Policy is not satisfied because, it says, its client's business is in China where it uses the name widely. The Respondent says that the Complainant has provided no evidence of rights in China. Accordingly, the disputed domain name is not identical or confusingly similar to any rights the Complainant may claim.
This argument misunderstands the nature of the test under the first requirement of the Policy. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the gTLD component as a functional aspect of the domain name system: WIPO Overview 3.0, section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name 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 name, 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 name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is not derived from the Respondent's name. As the Respondent has not disclosed the name of its client in China, it cannot claim derivation from the client's name either.
Having regard to the circumstances prevailing when the Complaint was filed, the Panel finds that the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
As will be apparent from section 4 above, the Respondent seeks to rebut that prima facie case by reference to both the location of its client in China and the nature of the services being promoted from its client's website. The Panel does not accept the Respondent's contentions in the circumstances of this case.
First, it does not appear that there was any website promoting any services prior to the filing of the Complaint or, at the least, the Complainant's cease and desist letter. The Respondent has not sought to claim, on behalf of its client, any preparations for or difficulties or delays in setting up the website to which the disputed domain name now resolves. Nor has it sought to support such a claim with any contemporaneous documentary records. See WIPO Overview 3.0, section 2.2.
Secondly, so far as the Panel is aware, the word "kulula" does not appear to have any significance, descriptive, geographic or otherwise in relation to psychic services. If it does, the Respondent has not made any claim to that.
Thirdly, the Response claims that the disputed domain name "is widely used in China", but no evidence to support that claim has been provided.
Further, the website to which the disputed domain name now resolves is entirely in English. It does give the address of the business as an address in China. However, the Panel finds it surprising that a business which is said by the Respondent to be directed to the market in China is wholly in English. In any event, there is nothing in the contents of the website to indicate that the business is confined just to China. It appears to be an invitation to the world at large (or at least the English-speaking world at large).
It is also noteworthy that the Respondent is located in South Africa where the Complainant's reputation is presumably strongest.
Finally, it is noticeable that some errors in the Response are reproduced on the website to which the disputed domain name resolves. For example, both the Response and the "About KULULA" section of the website state "KULULA is private-owned psychic group to promote tripple-tested [sic] professional psychic readers."
In these circumstances, it is not possible to conclude that the disputed domain name is being used in connection with a bona fide offering of goods and services, let alone such an offering before notice of the dispute was given.
The Panel is also unable to accept the Respondent's claim that the use of the disputed domain name is "making fair use" without intent for commercial gain. As already noted, there does not appear to be any link between the word "kulula" in relation to psychic services. While there do not appear to be any prices listed on the website to which the disputed domain name resolves, the website does emphasise that potential users of the services are "clients" and the services are being provided by "professionals".
Accordingly, the Panel finds that the Complainant has established that the neither the Respondent nor its client have rights or a legitimate interest in the disputed domain name under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Respondent has not advanced, either on its own account or that of its client, any explanation about how the disputed domain name came to be adopted. In such circumstances, the rejection of the Respondent's claim to its client having rights or a legitimate interests in the disputed domain name leads to a strong inference that the disputed domain name was registered and is being used in bad faith.
The Panel finds therefore that the Complainant has also established the third requirement under the Policy.
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 name, <kulula.app> be transferred to the Complainant.
Warwick A. Rothnie
Date: August 20, 2018