WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SA Airlink (Pty) Limited v. Themba Mohlabi, CEC-SA
Case No. D2019-2726
1. The Parties
The Complainant is SA Airlink (Pty) Limited, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Themba Mohlabi, CEC-SA, South Africa.
2. The Domain Name and Registrar
The disputed domain name <resortsairlink.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2019. On November 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 2019, 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 November 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2019.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on December 16, 2019. 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 was founded in South Africa in 1992 when its founders, Rodger Foster and Barrie Webb, successfully bid for and acquired the business of an airline named Link Airways which had in turn been formed by the merger of three small airlines; Magnum Airways, Border Air, and City Air in the late 1980s; and with its origins dating back to 1967. Messrs. Foster and Webb named the newly acquired airline AIRLINK and the name has been used since then. Despite its corporate name being SA Airlink (Pty) Limited, the Complainant trades merely as AIRLINK. Airlink acquired Midlands Aviation (Pty) Ltd in 1994, which had its origin in 1969, and the two businesses merged and continued trading as AIRLINK using the Midlands aviation corporate entity renamed to SA Airlink (Pty) Ltd. Airlink purchased Metavia (Pty) Ltd in 1998.
The Complainant developed into South Africa's first feeder network, specifically aimed at linking smaller towns, regional centers, and hubs throughout the country by air travel.
The Complainant is now the largest, privately-owned regional airline in Southern Africa, flying to 39 destinations in 10 countries, namely Botswana, Eswatini, Lesotho, Madagascar, Mozambique, Namibia, South Africa, St. Helena (Overseas Territory of the United Kingdom), Zambia, and Zimbabwe.
In 2013, the Complainant celebrated 21 years in the aviation industry and had a turnover of approximately ZAR 2.2 billion.
In October, 2017, the Complainant became the first commercial airline to schedule flights to St. Helena, an island in the Atlantic Ocean, which is part of the Overseas Territories of the United Kingdom.
On June 11, 2017, the Complainant celebrated its 25th anniversary.
The Complainant has therefore been instrumental in creating a prominent network of domestic and regional flights within Southern Africa, which has promoted business and tourism in areas which were otherwise not accessible or serviced by aircraft.
The Complainant is the proprietor of the trademark AIRLINK which it has registered in numerous countries around the world, including Botswana, Burundi, Eswatini, France, Lesotho, Madagascar, Malawi, Mozambique, Organisation Africaine de la Propriété Intellectuelle, Rwanda, St. Helena, Seychelles, South Africa, the United Kingdom, Zambia, and Zimbabwe. The Complainant's trademark rights in these countries are valid, particularly the South African trademark no. 2012/20273 issued for a period of 10 years from July 27, 2012.
As evidenced below, the Complainant has also made extensive use of the AIRLINK trademark in relation to transport and travel arrangement services and has established a significant reputation in this mark.
The Complainant also has an official website at “www.flyairlink.com”. Members of the public visiting that website have also been exposed to the Complainant's activities and its use of the AIRLINK trademark in relation to transport and travel arrangement services in Southern Africa.
The Complainant has therefore invested considerable time, money, and effort in the promotion and use of its AIRLINK trademark in South Africa and globally between 2011 and 2019, which amounted to over USD 8 million in advertising expenditures.
The Complainant first became aware of the Respondent on or about May 15, 2018, when its attorneys noted the existence of a company registered under the name RESORTS AIRLINK (PTY) LIMITED on the electronic records of the Companies and Intellectual Property Commission (CIPC) in South Africa. The company was registered in South Africa on July 15, 2014.
The disputed domain name was created on January 2, 2014. The disputed domain name resolves to a website appearing to offer air transport and travel arrangement services.
5. Parties’ Contentions
The Complainant contends that it had acquired a significant reputation and goodwill in the mark AIRLINK from a date earlier than the registration date of the disputed domain name in relation to air transport and travel arrangement services. Furthermore, the Complainant states that it is the proprietor of several earlier trademark registrations for the AIRLINK mark in international class 39.
The Complainant avers that the disputed domain name, <resortsairlink.com>, wholly incorporates the Complainant’s registered and well-known AIRLINK mark. The word “resorts” is descriptive of some of the services that the Respondent purportedly intends offering and is non-distinctive and draws attention to the fact that the inclusion of the generic Top-Level Domain (gTLD) “.com” does not distinguish the disputed domain name from the Complainant's mark and that, in the circumstances, the disputed domain name is confusingly similar to the Complainant’s AIRLINK trademark.
The Respondent is purportedly trading as RESORTS AIRLINK and advertises its services or intended services on the website at “www.resortsairlink.com”. Overall, the impression created by the website is that the Respondent operates a successful and established airline under the name or mark RESORTS AIRLINK.
The Complainant had already established significant user and registered rights in its trademark prior to the Respondent’s registration and use of the disputed domain name on January 2, 2014. Considering the evidence adduced above, particularly the manner in which the disputed domain name is used, and that the Respondent is based in the Complainant’s country of origin, it seems unlikely that the Respondent did not have knowledge of the Complainant’s rights in its AIRLINK trademark at the date of registration of the disputed domain name.
The Complainant contends that there is no evidence to suggest that the Respondent is actually trading under the mark or name RESORTS AIRLINK in relation to air transport or travel arrangement services or that it is commonly known by the disputed domain name. Moreover, the Complainant points out that, despite having traded in the aviation industry since 1992 and being a member of IATA, it has never encountered the Respondent or any other party in trade known by the name or mark RESORTS AIRLINK. The Respondent is not a member of IATA.
Investigations carried out by the Complainant into the Respondent did not reveal the provision by the Respondent of any actual air transport or travel arrangement services under the name or mark RESORTS AIRLINK, despite the appearance of its website.
The Complainant submits that, the only reasonable inference that can be drawn is that the Respondent intentionally sought to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark, and that the disputed domain name has been registered and is being used in bad faith.
The Complainant also expresses concern that the disputed domain name may be used in future to perpetrate fraud or a phishing attack aimed at vulnerable consumers. It is not clear why the Respondent is seeking to give the impression that there is an airline operating under the name Resorts Airlink when there clearly is not. However, one reason for this could be an intention to defraud consumers by having them book air travel with this non-existent airline.
In the absence of any credible evidence from the Respondent which shows, even prima facie, that the disputed domain name has been registered and is or will be being used in a legitimate manner, the Complainant submits that the only conclusion that can be drawn is that the disputed domain name has been registered and is being used in bad faith.
The decision and actions of the Respondent to retain ownership of the disputed domain name in the absence of any legitimate interest in it and despite the existence of a court order restraining the Respondent, inter alia, from using the disputed domain name in the course of trade and having full knowledge of the steps being taken by the Complainant against him to preserve its rights and reputation in the AIRLINK trademark, including a threatened UDRP complaint, also constitutes an act of bad faith use. The Complainant does not intend to proceed with an application to the Respondent to compel the court order infra.
The Respondent did not reply to the Complainant’s contentions.
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 Complainants must prove each of the following:
(i) that the disputed domain name registered by the Respondent is 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 name; and
(iii) that the disputed domain name has been registered and is 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 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 favor 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). In that regard, the Panel should evaluate the Complainant’s claims in the context of the full submission and evidence, rather than rely on mere conclusory statements in the Complaint (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).
However, 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).
From this the Panel considers that it may be accepted that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (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 Innovative Corporation v. Shopintimates USA, supra; VKR Holdings A/s v. Above.com Domain Privacy/Host Master, Transure Enterprises Ltd., WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, 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, supra; RX America LLC. v. Matthew Smith, WIPO Case No. D2005-0540; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holdings A/s v. Above.com Domain Privacy/Host Master, Transure Enterprises Ltd., supra; Group Auchan v. Anirban Mitra, WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc, WIPO Case No. D2012-1213).
C. Court Proceedings and Their Effect
Proceedings were instituted against the Respondent and company, Resorts Airlink (Pty) Ltd, by the Complainant in the Gauteng Division, Pretoria, of the High Court of South Africa in an attempt to restrain the use by the Respondent and the company of the name or claimed mark “RESTORS AIRLINK” within, inter alia, the company name, the disputed domain name, and on the website at “www.resortsairlink.com”, on the grounds of trademark infringement, as envisaged by sections 34(1)(a) and (c) of the South African Trade Marks Act, 194 of 1993, relating to passing-off and unlawful competition.
The matter was undefended, despite the Respondent and the company being aware thereof, and the Court determined that the claimed mark “RESORTS AIRLINK” was confusingly similar to the Complainant's AIRLINK trademark registered in relation to, inter alia, “transport” in class 39 in South Africa and that its use constituted infringement, passing-off, and unlawful competition. An order was issued accordingly. The Respondent has failed to comply with the order against it and the Complainant now seeks to address its continuing infringement through these proceedings.
The UDRP, paragraph 4(k), states:
“Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel’s decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our WhoIs database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel’s decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name.”
Paragraph 18 of the Rules, provides:
“Effect of Court Proceedings:
(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
(In this regard, see also Yves Saint Laurent v. Xian Wen, WIPO Case No. D2016-2622.)
In the present matter, the Panel considers that it can exercise its discretion to continue and the following factors operate in favor of the matter not being suspended or terminated:
(a) the Respondent is in default and, by applying the principles referred to earlier, the Panel can proceed on the basis that the Respondent has not raised any grounds for suspension or termination (Saia, Inc. v. Whois Privacy Services Pty Ltd / Damon Nelson – Manager, Quantec LLC/Novo Point, LLC, WIPO Case No. D2014-1158);
(b) moreover, nothing in the present matter or findings by the Panel conflicts with the terms of the court order (Media 24Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699);
(c) the court order does not give rise to a res judicata or issue estoppel, particularly as the cause of the action and relief claimed herein are different (Mr. Price Group Limited v. Registrations Private, Domains by Proxy, LLC / Mr Price, WIPO Case No. D2019-0878).
D. Identical or Confusingly Similar
The fact that the word mark AIRLINK has been incorporated entirely into the disputed domain name is sufficient in this case to establish that it is confusingly similar to the Complainant’s registered marks (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 also holds the view that the addition of the word “resorts” after the trademark AIRLINK is not sufficient to prevent a finding of confusing similarity (Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367; Fry’s Electronics, Inc. v. WhoIs ID Theft Protection, WIPO Case No. D2006-1435; VRL International Ltd. v. Domaincar, WIPO Case No. D2006-0240; Compagnie Gervais Danone v. Jose Gregorio Hernandez Quintero, WIPO Case No. D2009-1050; Statoil ASA (“Statoil”) v. Anoop Chetty, Telas, WIPO Case No. D2017-1884; Bristows LLP v. Protection of Private Person / Marilyn Steele, WIPO Case No. D2018-0685).
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.
E. 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 name 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 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 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 or legitimate interests in the disputed domain name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production of evidence 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 prove 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; Statoil ASA (“Statoil”) v. Anoop Chetty, Telas, supra).
Having defaulted, the Respondent 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 owner of the trademark AIRLINK, 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 rights 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).
Likewise, 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, express, implied, or otherwise, which also militates against the Respondent having rights or legitimate interests in the disputed domain name (Sybase, Inc. v. Analytical Systems, supra; Oki Data Americas, Inc. v. ASD Inc., WIPO Case No. D2001-0903; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, supra).
In view of the unchallenged facts and circumstances put up on this ground by the Complainant, 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.
F. 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 online 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 registration of the disputed domain name, which is confusingly similar to the Complainant’s trademark and domain name, with the addition of the word “resorts” is indicative of the Respondent’s intent to trade on the value established by the Complainant in its mark, to attract users and thereby derive economic benefit from those users attracted to the Respondent’s website as and when it may become operative and by receiving compensation from others if these would-be customers are routed away from the Complainant and to the Respondent. Such a practice also would constitute bad faith (Yahoo! Inc. and Geo Cities v. Data Art Corp., DataArt 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 identical or confusingly similar to the Complainant’s trademark and domain name, 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 Complainants and intended to benefit therefrom. (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Encyclopaedia Britannica, Inc. v. LaPorte Holdings, WIPO Case No. D2005-0866; Barclays Bank PLC v. Miami Investment Brokers Inc, WIPO Case No. D2012-1213).
Various letters sent to the Respondent did not elicit a response. However, the letter of September 26, 2018, was clearly received by the Respondent because he contacted the Complainant’s attorneys by telephone on September 27, 2018, that same day. During that conversation he alleged, inter alia, that:
(a) he was trading as a global airline, including in South Africa, and was constructing an airpark north of Johannesburg;
(b) the company in South Africa was a subsidiary of a larger, multinational corporation based in the United Kingdom;
(c) the details of the Respondent’s company as they appear on CIPC’s records had changed (but he did not disclose the new details);
(d) he was not authorized to respond to the demands of the Complainant or negotiate any settlement and would need to consult with other stakeholders of the global airline, which would be difficult; and
(e) he required time, specifically until the end of February 2019, to raise the Complainant’s concerns with the other stakeholders and formulate a substantive response to the Complainant’s demands.
In the circumstances, the Complainant instructed its attorneys to reject the Respondent’s request for indulgence until February 2019 and to respond insisting on a response by October 15, 2018, failing which formal proceedings would be instituted against the Respondent.
No response was received from the Respondent or anyone else on behalf of the company and formal proceedings were instituted against him, in his personal capacity, and against his company, in the High Court of South Africa, in February 2019.
The Respondent telephoned the Complainants attorneys and made various allegations claiming, inter alia, that no steps taken by the Complainant would ever prevent him from trading under the name or claimed mark “RESORTS AIRLINK”. He further alleged that steps taken by the Complainant and its attorneys were irregular and anti-competitive, and that the Complainant was clearly aware of the “inroads” made by the Respondent into the airline market in South Africa and elsewhere. The Complainant's attorneys denied these allegations.
The reactions of the Respondent on both occasions fortifies the view of the Panel that he was clearly acting in bad faith.
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of 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 <resortsairlink.com> be transferred to the Complainant.
Date: January 15, 2020