The Complainant is Comair Limited, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2020. On January 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 29, 2020, 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 February 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2020. The Center appointed Lynda M. Braun as the sole panelist in this matter on March 4, 2020. 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, a publicly traded South African aviation company, owns the South African low-cost airline, Kulula. The airline currently operates more than 600 flights a month, including local flights between Johannesburg and Cape Town, Durban, East London, George and Port Elizabeth, and a coastal route from Cape Town to Durban, all in South Africa. In addition, it operates flights out of South Africa to neighboring African countries. The Complainant is the owner of 26 registered trademarks for the trademark KULULA and other marks incorporating the term “Kulula” in South Africa and has made extensive use of its KULULA trademarks for about 19 years. The Complainant also owns registered trademarks for KULULA in other African countries in various International classes, including in Botswana, Kenya, Malawi, Uganda, and Zimbabwe (hereinafter collectively referred to as the “KULULA Mark”). Amongst them, Botswana Trademark No. 2001000235, registered on November 16, 2004. In addition to the registered trademarks, the Complainant also owns common law rights in the KULULA Mark, which were used prior to the registration of the above trademarks. See Comair Limited v Kagiso Interactive RSA, Domain Management,WIPO Case No. D2018-1396 (finding that complainant holds common law rights in the KULULA mark). The Complainant owns the domain names The Disputed Domain Name was registered on November 27, 2005. The Complainant, however, did not discover the registration of the Disputed Domain Name until October 10, 2019, at which time the Disputed Domain Name resolved to a parking page with pay-per-click sponsored links. The Complainant provided screenshots of the After becoming aware of the registration and use of the Disputed Domain Name, the Complainant instructed its attorneys to write to the Respondent to demand a transfer of the Disputed Domain Name to the Complainant. On October 18, 2019, and again on November 4, 2019, the Complainant’s attorneys sent a cease and desist letter to the Respondent via email but received no response. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark. - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. - the Disputed Domain Name was registered and is being used in bad faith. - the Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)): (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 Panel concludes that the Disputed Domain Name is confusingly similar to the KULULA Mark as set forth below. This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. It is uncontroverted that the Complainant has established rights in the KULULA Mark based on longstanding use as well as its registered KULULA Mark in South Africa and other jurisdictions in Africa. Additionally, the general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the KULULA Mark. The Disputed Domain Name incorporates the Complainant’s KULULA Mark in its entirety, with the addition of the letter “h”, followed by the generic Top-Level Domain (“gTLD”) “.com”. This misspelling is an example of typosquatting, a situation in which a domain name includes a misspelled registered trademark. Here, the addition of “h” does not operate to prevent a finding of confusing similarity between the KULULA Mark and the Disputed Domain Name. See, e.g., ALH Group Pty Ltd v. Naveen Mathur,WIPO Case No. D2015-2004 (finding the disputed domain name confusingly similar to the trademark despite the addition of the letter “s”); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 1.9, which states that “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element […]”. Furthermore, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. The Respondent does not operate any business under the name “Kulula” or “Kuhlula”. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its KULULA Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Respondent used the Disputed Domain Name to display pay-per-click hyperlinks, whereby the Respondent ostensibly received click-through referral fees. The use of a confusingly similar, or misspelled, domain name to display hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Finally, where a respondent has registered and is using a domain name in bad faith (see the discussion below), that respondent cannot be reasonably found to have made a bona fide offering of goods or services. Therefore, the Panel finds that the Respondent has failed to use the Disputed Domain Name in connection with any bona fide offering of goods or services or any legitimate noncommercial or fair use, and thus the Respondent has no rights or legitimate interests in the Disputed Domain Name. Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith This Panel finds that, based on the record, the Complainant has demonstrated the existence of numerous examples of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy as set forth below. First, the registration of a domain name that is identical or confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith registration. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Moreover, the use of a domain name to attract Internet users to a respondent’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website for commercial gain demonstrates registration and use in bad faith. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant’s KULULA Mark and to drive Internet traffic seeking the Complainant’s airline services to the Respondent’s website for commercial gain. When pay-per-click pages are based on the trademark value of a domain name, the trend in UDRP decisions is to recognize that such practices constitute bad faith. See Champagne Lanson v. Development Services/MailPlanet.com, Inc.,WIPO Case No. D2006-0006 (pay-per-click landing page not legitimate where ads are keyed to the trademark value of the domain name). Second, the Respondent is engaged in the practice of typosquatting, which at first directed Internet users who misspelled the KULULA Mark to the Respondent’s parking page containing pay-per-click sponsored links. UDRP panels have consistently held that typosquatting constitutes bad faith use of a domain name pursuant to the Policy, paragraph 4(b)(iv). The Respondent’s action of registering the Disputed Domain Name and using it to direct Internet traffic to its website evidences an intent to disrupt the Complainant’s business, deceive customers and trade off the Complainant’s goodwill by creating an unauthorized association between the Disputed Domain Name and the Complainant’s KULULA Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552. Third, the Complaint includes instances in which the Respondent has engaged in a pattern of behavior consisting of registering domain names containing well-known trademarks and using them to prevent the trademark owner from reflecting the trademark in a corresponding domain name. Such conduct is also evidence of the Respondent’s bad faith. Siemens Aktiengesellschaft v. Telmex Management Services, Inc.,WIPO Case No. D2003-0995; Policy, paragraph 4(b)(ii). Further, the Panel finds that the Respondent’s bad faith can also be inferred from its lack of reply to the cease and desist letters sent by the Complainant’s counsel prior to commencing this proceeding. Past UDRP panels have held that failure to respond to a cease and desist letter may be considered a factor in finding bad faith registration and use of a domain name. See Remy Cointreau Luxembourg S.A. v. Deividas Samulionis, UAB “Sentosa”,WIPO Case No. D2016-2232; Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330. Finally, the Disputed Domain Name initially resolved to a page stating that the Disputed Domain Name was for sale. The purchase price of USD 5,000 for the Disputed Domain Name was far in excess of the out-of-pocket expenses related to registration of the Disputed Domain Name, another indication of bad faith under paragraph 4(b) of the Policy. Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun 1 As of the writing of this decision, however, the Disputed Domain Name no longer resolves to the parked page, but instead redirects to the Complainant’s “www.kulula.com” official website.
Sole Panelist
Date: March 18, 2020
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