The Complainant is Comair Limited, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Privacy Protection, Russian Federation / Anton Kormishenkov, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2019. On June 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2019, 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 July 4, 2019 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 9, 2019. On the same date, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On July 9, 2019, the Complainant confirmed its request that English be the language of the proceedings.
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, in both English and Russian and the proceedings commenced on July 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2019. No formal Response was filed with the Center. Several brief emails from the Respondent were received during the proceedings. On August 8, 2019, the Center informed the Parties of the Commencement of Panel Appointment.
The Center appointed Taras Kyslyy as the sole panelist in this matter on August 21, 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 is a company of South Africa and has been operating an airline services business for about 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 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 Complaint owns a number of trademark registrations for KULULA in various counties, including in South Africa filed on June 14, 2001 and granted on June 27, 2005 (Registration No. 2001/10306). In addition to the registered trademarks, it claims common law rights in and to the trademark KULULA since 2001.
The disputed domain name was registered on March 25, 2019 and currently resolves into inactive web page.
The Complainant addressed the Respondent with a cease and desist letter, however no response followed. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name wholly incorporates the Complainant’s KULULA name and trademark, which is sufficient to establish that the disputed domain name is identical to or, at the very least, confusingly similar to, the Complainant’s registered trademark. The disputed domain name generic Top-Level Domain extension “.site” does not serve adequately to distinguish the disputed domain name from the Complainant’s well-known trademark.
The Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name does not currently resolve to an active web site, therefore the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Complainant has not authorised the Respondent to register or use any domain name incorporating its trademark or a similar trademark. There is no relationship or association between the Complainant and the Respondent, whether by licence or otherwise. The Respondent, accordingly, has no right to use the Complainant’s KULULA trademark as part of its domain name.
The disputed domain name was registered and is being used in bad faith. The Respondent was aware of the Complainant’s rights in the mark KULULA when the disputed domain name was registered. This is evident from the fact that the disputed domain name wholly incorporates the Complainant’s KULULA trademark. The Respondent has no connection with the Complainant’s well-known mark, therefore it acted in bad faith when registering the domain name. The registration of the disputed domain name has the effect that the Complainant is barred from registering or using the identical domain name. The disputed domain name creates the impression that the Respondent and the Complainant are somehow associated or connected due to the similarity between the disputed domain name, and the Complainant’s KULULA trademark. the Respondent registered the disputed domain name with the intention of benefitting from the extensive reputation the Complainant has established in its well-known trademark KULULA. Use of the disputed domain name by the Respondent is likely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the Complainant’s well-known KULULA trademark.
B.Respondent
In its email to the Center the Respondent confirmed no interest in the disputed domain name and suggested it is taken away. 6. Discussion and Findings A. Language of Proceedings
The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334).
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.
The Complainant has submitted a request that the language of the proceedings be English, since (i) the Registration Agreement for the disputed domain name and other related legal documents at the Registrar’s web site are available in English, (ii) previous correspondence between the Complainant and the Respondent was in English, (iii) the Complainant uses English in its business as one of official languages of its country of residence and dominant language of business and international communications.
The Panel further notes that upon receipt of the Complaint the Respondent confirmed no interest in the disputed domain name and suggested it is taken away.
The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.
Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. B. Identical or Confusingly Similar
The Panel has established that the Complainant has rights in KULULA trademark.
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain name incorporates the Complainant’s trademark in its entirety.
The addition of the gTLD “.site” does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark. (See WIPO Overview 3.0, section 1.11).
Considering the above the Panel finds the disputed domain name is identical to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.
The Respondent is not commonly known by the disputed domain name, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875).
The Respondent has no rights or legitimate interests in the disputed domain name resolving to an inactive web site (i.e., there is no use of the disputed domain name in any dictionary term sense; see, e.g., Philip Morris USA Inc. v. Daniele Tornatore,WIPO Case No. D2016-1302).
Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
At the time of the registration of the disputed domain name (some 20 years after the Complainant’s trademark rights arose) the Respondent knew, or at least should have known about the existence of the Complainant’s registered and known trademark, which this Panel finds confirms bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
According to section 3.3 of the WIPO Overview 3.0 from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. In this regard the Panel takes into account (i) the high degree of distinctiveness and reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the failure of the Respondent to address the Complainant’s cease and desist letter, (iv) the Respondent’s concealing its identity while registering the disputed domain name, and (v) the implausibility of any good faith use to which the disputed domain name may be put.
Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy. 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.
Taras Kyslyy
Sole Panelist
Date: August 31, 2019
Full & Egal Universal Law Academy