The Complainant is Comair Limited of Johannesburg, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Domain Admin, Privacy Protection Service INC d/b/a PrivacyP of Nobby Beach, Queensland, Australia / Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2017. On February 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 4, 2017, 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 February 7, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed two amended Complaints on February 9, 2017 and February 10, 2017 respectively.
The Center verified that the Complaint together with the amended Complaints 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 February 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on March 9, 2017.
The Center appointed Dennis A. Foster as the sole panelist in this matter on March 21, 2017. 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 that has been in existence since 1946 and began operating low-fare airline services under the KULULA trademark in 2001. Not only have those services spread to other neighboring countries and regions, the Complainant has also expanded to offer automobile and accommodation rental and financial services online through its domain name. The Complainant registered its KULULA mark in many countries, including South Africa (e.g., Registration No. 2001/10306; registered on June 27, 2005).
The Respondent is the present owner of the disputed domain name, . It was registered initially by the Complainant on May 18, 2001, but was acquired by the Respondent on or about December 28, 2016. The disputed domain name now hosts a website that offers services that compete directly with those offered by the Complainant. That website also contains an offer to sell the disputed domain name. 5. Parties’ Contentions A. Complainant
- The Complainant is a South African company that has been in existence since at least 1946. It began operating low-fare airline services in South Africa in 2001 under the KULULA trademark and expanded those services later into several sub-Saharan African countries and countries along the Indian Ocean. In addition, the Complainant is one of the biggest South African online retailers, offering car and accommodation rental and financial services through the Complainant’s domain name, , which was registered in 2001.
- The KULULA mark is registered by the Complainant in many countries, including South Africa, and the Complainant has spent considerable sums in advertising and promoting that mark so that it is well known internationally.
- The Complainant also registered the disputed domain name, , in 2001. This registration sought to prevent typo-squatting with respect to the Complainant’s mark, and the disputed domain name redirected Internet users to the Complainant’s domain name until December 27, 2016.
- The Respondent obtained the registration of the disputed domain name through an unkown and possibly unlawful process on December 28, 2016. Shortly afterwards, the Complainant transmitted, through several means, a letter requesting the return of the name, but could not obtain a satisfactory response.
- The disputed domain name is confusingly similar to the KULULA trademark, as the addition of an “h” to the lettering of the mark creates no meaningful distinction.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to use the KULULA mark, and has no relationship with the Respondent. The disputed domain name is now used to offer services that compete directly with those offered by the Complainant.
- The disputed domain name was registered and is being used in bad faith. The Respondent was undoubtedly aware of the Complainant and its trademark when the Respondent acquired the disputed domain name. The Respondent is using a privacy registration service to hide its true identity, demonstrating clear evidence of bad faith. Moreover, the Respondent is offering the disputed domain name for sale. Also, the Respondent is preventing the Complainant from using an identical domain name and is using the disputed domain name in bad faith to offer services that compete directly with those offered by the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with the requirements of paragraphs 4(a)(i) to (iii) of the Policy, the Panel may find for the Complainant and order a transfer of the disputed domain name, , provided that the Complainant can demonstrate that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established the requisite rights in its KULULA trademark to the Panel’s satisfaction through long use of that mark and submission to the Panel of uncontested evidence (Annexes 4.1 to 4.12 of the Complaint) of registration with the South African trademark authorities. See, Comair Limited v. John Bonk,WIPO Case No. D2009-0094 (“The Complainant [Comair Limited] has proved that it owns rights in its KULULA trademarks, at least in South Africa. The fact that those trademark rights do not cover the United States, country of the Respondent, is not dispositive since there is no such requirement in the Policy”); and Afrisport Intellectual Property (PTY) Ltd. v. D,WIPO Case No. D2007-1449 (“Complainant has provided evidence that it owns two trademarks registered in South Africa [...] For purposes of the Policy, ownership of a trademark anywhere is sufficient to satisfy that aspect of the first factor.”).
Due to the minor alteration caused by the inclusion of the letter, “h”, the disputed domain name, , cannot be found by the Panel to be identical to the KULULA mark. However, that minor difference does not preclude the Panel from finding that the name and mark are confusingly similar. The Panel notes in that vein that, as placed in the disputed domain name, the “h” would likely remain silent to an English-speaking person, rendering the name and mark identical phonetically. Thus, the Panel does find to be confusingly similar to the KULULA trademark. See, Learning Tree International, Inc. v. hghghjjk jghjjklk,WIPO Case No. D2015-1243 (finding to be confusingly similar to the LEARNING TREE mark); Lilly ICOS LLC v. Jason Kleiner,WIPO Case No. D2006-0563 (finding to be confusingly similar to the CIALIS mark); and Expedia, Inc. v. Alvaro Collazo,WIPO Case No. D2003-0716 (finding to be confusingly similar to the EXPEDIA mark).
As a result, the Panel finds that the Complainant has satisfied the requirements of Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Countless previous UDRP panels have held that, though a complainant bears the burden of proving that a respondent has no rights or legitimate interests in a disputed domain name, a complainant need present only a prima facie case supporting that proposition before shifting the burden of production to a respondent. See, Hermès International v. Registrant [3585485]: Boris Moser,WIPO Case No. D2011-0406 (“It is the consensus view of WIPO UDRP panelists that once a complainant has established a prima facie case, it is respondent’s responsibility to prove otherwise.”); and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
In this case, the Panel has found that the Complainant succeeded in establishing that the disputed domain name is confusingly similar to the Complainant’s mark. Moreover, the Complainant has contended reasonably that neither is it in anyway related to the Respondent nor has it granted the Respondent authorization to use the KULULA mark in a domain name or in any other manner. The Panel deems this showing and these contentions to be a sufficient prime facie case that the Respondent possesses no rights or legitimate interests in the disputed domain name, and thus the Respondent must come forward with a rebuttal.
The Respondent has filed no Response. The first consequence of this failure to file is that the Panel shall accept all reasonable contentions set forth in the Complaint. See, RX America, LLC. v. Matthew Smith,WIPO Case No. D2005-0540; and The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“[…] the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.”). The second consequence is that the Panel is left to examine on its own the other elements of the record in this case to determine whether any coherent rebuttal to the Complainant’s prima facie case exists.
The Panel shall examine said record against Policy, paragraph 4(c), which presents three common ways in which a respondent may establish that it has rights or legitimate interests in a disputed domain name. As to paragraph 4(c)(i), the Panel accepts the Complainant’s contention that the website connected to the disputed domain name presents offers to provide services that compete directly with those offered by the Complainant. The Panel concurs with a consensus of prior Policy panels that such usage fails to constitute “a bona fide offering of goods or services” sufficient to satisfy the requirements of paragraph 4(a)(i). See, Banana Republic (Apparel) LLC v. Ronda Rollins,WIPO Case No. D2013-0241, (“[...] Respondent is using the [disputed domain name] to capitalize on the fame of Complainant’s [trade]mark in order to sell goods that directly compete with Complainant’s goods. The Panel finds that this is not a bona fide offering of goods or services under Policy [paragraph] 4(c)(i) [...]”); and Matvil Corporation v. WhoisGuard/Administrative Contact / MTONE Holding Inc.,WIPO Case No. D2010-1923 (“There can indeed be no bona fide offering of goods or services when the complainant’s trademark is used by the respondent to offer or to direct customers to the products of the complainant’s competitors [...]”).
Regarding Policy, paragraph 4(c)(ii), the Panel finds no evidence in the record to suggest that the Respondent has been commonly known as the disputed domain name, . Therefore, that paragraph also fails to apply to this case. Finally, the same contention accepted by the Panel with respect to Policy, paragraph 4(a)(i) - that the disputed domain name is used to solicit offers to purchase competing services - renders Policy, paragraph 4(c)(iii) inapplicable to this case, as the Panel finds that such use is inconsistent with “a legitimate noncommercial or fair use” of the disputed domain name.
Discovering no evidence in the record to rebut the Complainant’s prima facie case, per Policy, paragraph 4(c) or otherwise, the Panel determines that the prima facie case stands as conclusive.
As a result, the Panel finds that the Complainant has satisfied the requirements of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Policy, paragraph 4(b) sets forth four circumstances that, if even one is found by the Panel to be true, would sustain a finding that the disputed domain name was registered and is being used in bad faith.
The Panel accepts the Complainant’s uncontested contention that the Respondent has recently put up the disputed domain name for sale. From its experience in other Policy cases, the Panel makes the reasonable assumption that the Respondent, in making such an offer, is seeking a price that exceeds its out-of-pocket expenses incurred in acquiring and maintaining the disputed domain name. The Panel therefore concludes that such action falls under the bad faith circumstance described in Policy, paragraph 4(b)(i). See, Petroleo Brasileiro S.A. - Petrobras v. Marcelo da Graça Veiga, TV BIGBRASIL,WIPO Case No. DTV2012-0006 (“The Panel finds that this is evidence of bad faith registration and use of the disputed domain name by Respondent, as it is clear that Respondent registered the disputed domain name for the purpose of selling the disputed domain name to Complainant, or a competitor of Complainant, most likely for an amount in excess of his out-of-pocket costs.”); and Allianz SE v. Vachagan Khachatryan,WIPO Case No. DAM2012-0001.
Moreover, the Panel also accepts the Complainant’s contention that the disputed domain name currently hosts the Respondent’s website, which offers services that compete directly with those offered by the Complainant. Consequently, the Panel concludes that, consistent with the circumstance cited in Policy, paragraph 4(b)(iv), the Respondent, in bad faith, intends to gain commercially from the likelihood of confusion between the name and the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the services offered on said website. See, Galderma S.A. v. WhoisGuard / Jerwin Ordona,WIPO Case No. D2013-0363 (“The Panels further notes that by providing links to competing products, the Respondent’s use of the disputed domain name is for a commercial purpose and in bad faith”); and West Virginia University Board of Governors for and on behalf of West Virginia University v. WV Sports Report,WIPO Case No. D2011-2154 (“[...] the Panel holds that the disputed domain name was registered and is being used primarily for the purpose of marketing products that compete directly with those of the Complainant [...] Such use is further evidence of bad faith registration and use pursuant to the Policy, paragraph 4(b)(iv).”).
Accordingly, the Panel determines that the Respondent has registered and is using the disputed domain name in bad faith under both Policy, paragraphs 4(b)(i) and (iv).
As a result, the Panel finds that the Complainant has satisfied the requirements of Policy, paragraph 4(a)(iii). 7. Decision
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, , be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Date: April 4, 2017
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