WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comair Limited v. Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante
Case No. D2021-1824
1. The Parties
The Complainant is Comair Limited, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Whois protection, this company does not own this domain name s.r.o., Czech Republic/ Hulmiho Ukolen, Poste restante, Finland.
2. The Domain Name and Registrar
The disputed domain name <kulul.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2021. On June 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 2021, 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 14, 2021, 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 June 16, 2021.
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 June 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2021.
The Center appointed Mihaela Maravela as the sole panelist in this matter on July 30, 2021. 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 is a South African company offering scheduled and non-scheduled airline services within South Africa, sub-Saharan Africa and the Indian Ocean Islands. It was listed with the Johannesburg Stock Exchange since 1998 to 2020. The Complainant launched South Africa’s first low-fare air carrier in 2001 called Kulula. The Complainant further introduced “www.kulula.com/cars”, a low-cost car rental service which offers travellers the option to rent a car. The Complainant operates one of the biggest online retailers in South Africa from its website “www.kulula.com”.
The Complainant is the exclusive owner of a number of registered trademarks consisting of “KULULA”, including the Botswana trademark registration No. 2001000235, registered on November 16, 2004 and the Zimbabwe trademark registration No. 2003000033, registered on January 24, 2003.
The Complainant is the owner of various domain names consisting of “kulula”, for instance, <kulula.com>, registered since May 7, 2001.
The disputed domain name was created on June 19, 2007, and as per the Complainant, it learned of it during October 2019. The disputed domain name has been linked to a page containing pay-per-click links. The Respondent has not answered the cease-and-desist letter from the Complainant.
The Panel notes that the same Respondent was involved in a number of WIPO UDRP Proceedings where the panels found against it, including these:
- Government Employees Insurance Company (“GEICO”) v. DOMAIN ADMIN Whois protection / “Hulmiho Ukolen, Poste restante”, WIPO Case No. D2021-0476;
- Ammunition Operations LLC v. Domain Admin, Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante, WIPO Case No. D2021-0147;
- Pagseguro Internet S.A. v. Domain Admin, Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante, WIPO Case No. D2020-3478;
- Canva Pty Ltd v. Domain Admin / John Obeye; Hulmiho Ukolen, Poste restante; Pavol Icik, Main Post Office 1, WIPO Case No. D2020-1207.
5. Parties’ Contentions
The Complainant argues that it is the proprietor of the well-known trademark KULULA which it has registered in various classes of goods and services and claims to have also acquired common law rights following long use of the KULULA trademark in South Africa and in other countries around the world. The Complainant also argues that the disputed domain name is confusingly similar to its trademark KULULA. The omission of the letter “a” is a clear case of typosquatting that does not serve to adequately distinguish the disputed domain name from the Complainant’s trademark.
As regards the second element, the Complainant argues that it has not authorised the Respondent to use the KULULA trademark and there is no relationship and association between the Complainant and the Respondent. As per the Complainant, there is no evidence that the Respondent has been or is commonly known by the name KULULA or that it has acquired any trademark rights. The Respondent is not making a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the disputed domain name. Rather, the disputed domain name resolves to a website that contains numerous sponsored listings and advertisements to direct competitors of the Complainant.
With respect to the third element, the Complainant argues that the Respondent was aware of the Complainant rights as the disputed domain name is confusingly similar to the Complainant’s trademark and competing services are promoted at the website to which the disputed domain name resolves. The Respondent is currently listing the disputed domain name for sale for an amount of USD 7,750 that is clearly in excess of the out-of-pocket costs relating to the disputed domain name. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source of the Respondent’s website using pay-per-clicks cash-generating system that falls under the provisions of paragraph 4(b)(iv) of the Policy. The Respondent has also engaged in a pattern of cybersquatting as it has been involved in almost 50 matters brought before the Center.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
No communication has been received from the Respondent in this case. However, given that the Complaint was sent to the relevant address disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it can proceed to determine the Complaint based on the statements and documents submitted by the Complainant as per paragraph 15(a) of the Rules and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., ALSTOM v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Danica Kobpoew, ruletwoww, WIPO Case No. D2021-1465).
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has proved its rights over the KULULA trademark.
The disputed domain name consists of the obvious misspelling of the KULULA trademark of the Complainant, with the removal of the letter “a” in the disputed domain name. This misspelling in the disputed domain name, also referred as typosquatting, is insufficient to avoid a finding of confusing similarity, as the trademark is recognizable in the disputed domain name. Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.
This Panel concludes that the disputed domain name is identical to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial 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.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In the present case the Complainant has established a prima facie case that it holds rights over the trademark KULULA and claims that it has not granted the Respondent any authorisation to use the disputed domain name.
There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name. Rather, according to the unrebutted evidence put forward by the Complainant, at the date of the Complaint the Respondent was using the disputed domain name to host a parked page comprising PPC links to competing services. According to section 2.9 of the WIPO Overview 3.0. “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.” In this case, the PPC links are related to the Complainant’s trademark KULULA and generate search results with competing services to those offered by the Complainant. In this Panel’s view, such use does not confer rights or legitimate interests to the Respondent.
Also, there is no evidence that the Respondent is commonly known by the disputed domain name.
By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. Accordingly, the Panel gives prevalence to the Complainant’s affirmation that it has not granted the Respondent any license to use the disputed domain name.
Furthermore, the nature of the disputed domain name carries a risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
The disputed domain name was registered many years after the Complainant has obtained registration of its KULULA trademark. The website associated with the disputed domain name contained links related to the services offered by the Complainant. Under these circumstances, the Panel considers that the Respondent has registered the disputed domain name with knowledge of the Complainant’s trademark.
As regards the use of the disputed domain name, from the evidence put forward by the Complainant and not rebutted by the Respondent, it results that the disputed domain name redirects Internet traffic to a website displaying pay-per-click advertisements for Complainant related services. Given the confusing similarity between the KULULA trademark and the disputed domain name, Internet users would likely be confused into believing that the Complainant is affiliated with the website to which the disputed domain name resolves. Presumably, the Respondent intends to benefit from the confusion created: it is likely that the Respondent earns income when Internet users click on the links in search of Kulula services.
Also, according to evidence by the Complainant not refuted by the Respondent the disputed domain name is listed for sale on the Afternic website for USD 7,750. It can be inferred that the Respondent registered the disputed domain name primarily for the purpose of selling it for valuable consideration in excess of his documented out-of-pocket costs directly related to the disputed domain name.
Moreover, the fact that the Respondent has provided false or incomplete contact information, corroborated with the fact that the Respondent has been a respondent to a number of the UDRP disputes, where it was largely decided that the Respondent had registered and used the relevant domain names in bad faith, is evidence that the Respondent has engaged in a pattern of abusive registrations.
In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary and to present a case of good faith, hence the Panel infers that none exist. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.
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, <kulul.com> be transferred to the Complainant.
Date: August 13, 2021