The Complainant is Comair Ltd. of Bonaero Park, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Shaun Mills of Johannesburg, South Africa. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Doman Name”) is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2011. On June 22, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Disputed Domain Name. On June 22 and June 24, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2011.
The Center appointed Isabelle Leroux as the sole panelist in this matter on July 28, 2011. 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 leading South African aviation company, incorporated in accordance with the laws of the Republic of South Africa. It has operated South Africa’s first low fare airline named “K” since 2001.
As such, it owns multiple trademark registrations for the name “Kulula” and incorporating the word “kulula” (such as KULULA CONNECT and KULULA JETSETTERS) in South Africa and in various other African countries.
The Complainant’s earliest trademark for KULULA was registered on June 14, 2001, in South Africa under No. 2001/10306.
In addition, the Complainant has registered the trademarks KULULA.COM, KULULA JETSETTERS and KULULA.COM/CARS.
The domain name was first registered by the Complainant in 2001. The Complainant also registered the domain name in 2009.
The Disputed Domain Name was registered on July 20, 2010.
In February 2011, the Complainant became aware that the Respondent had registered the Disputed Domain Name.
A letter of demand was sent to the Respondent on March 8, 2011, requesting the Respondent to delete or transfer the Disputed Domain Name to the Complainant. The Complainant received no response to this letter.
Before the Respondent was informed of the dispute through the above-mentioned letter of demand, the Disputed Domain Name was initially offered for sale by the Respondent. At the time the Complaint was filed, the Disputed Domain Name was used to redirect to another domain name , which points to a website that sells new and used office furniture under the name “Kulula”. 5. Parties’ Contentions A. Complainant
The Complainant claims that, as provided by the Policy, paragraph 4(a):
(i) The Disputed Domain Name is confusingly similar to the trademarks it owns in and to the names KULULA and KULULA.COM;
(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name;
(iii) The Disputed Domain Name was registered and is used in bad faith.
The Complainant claims that beyond its trademark registrations in the name KULULA, and in other signs integrating the name KULULA, it has common law rights in and to the trademark KULULA, which it has used for ten years in South Africa and in various other countries.
Furthermore, the Complainant argues that the trademark KULULA is well-known within the meaning of Article 6 bis of the Paris Convention.
The Complainant stresses that the Disputed Domain Name is virtually identical to the Complainant’s domain name and that possible customers may omit the “m” at the end of the domain name when searching for the Complainant’s website.
In addition, the Complainant submits that the Respondent’s actions fall within the ambit of the requirements of paragraph 4(a)(ii) of the Policy as:
The Respondent does not have, to the best of the Complainant’s knowledge, any statutory rights in or to the trademark KULULA, in South Africa or elsewhere;
The Disputed Domain Name is identical to the Complainant’s well-known trademark KULULA, and that use of the Disputed Domain Name will accordingly infringe the Complainant’s rights.
Finally, the Complainant contends that considering the fact that the Disputed Domain Name wholly incorporates the Complainant’s trademark KULULA, and was initially offered for sale by the Respondent, it is clear that the Respondent’s only intention in registering the Disputed Domain Name was to take unfair advantage of the substantial reputation and goodwill in the Complainant’s trademark.
The Complainant argues that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademark KULULA as to the source, sponsorship, affiliation or endorsement of his website.
For all of the above-mentioned reasons, the Complainant requests that the Disputed Domain Name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant is required to establish that each of the following three conditions is met to obtain the relief it has requested:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is virtually identical to the Complainant’s KULULA trademark in which the Complainant has had multiple trademark registrations in various jurisdictions including South Africa, since 2001.
Indeed, the word “kulula” is incorporated in its entirety in the Disputed Domain Name.
The mere addition of the “.co” country code top-level domain does not affect the overall impression on the average Internet user. On the contrary, the average Internet user is likely to be confused by the Disputed Domain Name when searching for the Complainant’s website “www.m”, as he may omit the “m” at the end of the address.
Therefore the Panel finds that the Complainant has carried out its burden of proof under Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
The Disputed Domain Name was registered on July 20, 2010, long after the Complainant registered the domain names and , respectively in 2001 and 2009.
More particularly, the registration of the Disputed Domain Name occurred after the filing and registration by the Complainant of multiple trademarks comprising the name “Kulula” alone or integrating the name ”Kulula”, the earliest of which dates back to 2001, and was still in force at the time the Complaint was filed.
The Respondent has not provided any response, showing that he had rights or legitimate interests in the Disputed Domain Name.
The Panel finds that there is no element that indicates that the Respondent, or any entity or organization of which he would be a member, has been commonly known by the Disputed Domain Name.
Furthermore, it has been shown from the evidence available to the Panel that the Disputed Domain Name was initially offered for sale by the Respondent. This is evidenced by the print-out submitted by the Complainant of the webpage to which the Disputed Domain Name used to redirect, dated February 14, 2011, and indicating in capital letters: “This site is for sale”.
Therefore there is no evidence – quite to the contrary – to suggest that the Respondent had used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, before notice of the dispute was made to him on March 8, 2011.
In this regard, the fact that, after such notice of the dispute was made to the Respondent, the Disputed Domain Name has been used to redirect to another domain name , which points to a website that sells new and used office furniture under the name “Kulula”, does not affect the Panel’s view.
Quite to the contrary, this can be regarded as a late attempt by the Respondent, a few months after notice of the dispute was made to him, to avoid the transfer of the Disputed Domain Name by falsely suggesting that the Disputed Domain Name would be used legitimately. In fact, the Panel shall not be misled by such late attempt and finds that the Respondent has not provided evidence of a genuine legitimate interest in the Disputed Domain Name.
Finally, such current use of the Disputed Domain Name cannot be regarded by the Panel, in light of all the circumstances of the case, as a legitimate noncommercial or fair use of the Disputed Domain Name, without intent to misleadingly divert consumers for commercial gain.
In conclusion, the Panel finds that the Complainant has carried its burden of proof under Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
In order to determine whether the Disputed Domain Name has been registered and used in bad faith by the Respondent, the Panel must examine all the circumstances of the case.
The Complainant has provided sufficient evidence for the Panel to consider that the trademark KULULA may be regarded as well-known in South Africa, as a result of the extensive use of the trademark by the Complainant for more than ten years, and given the fact that KULULA.COM is South Africa’s leading low fare air carrier.
Therefore it is apparent from the record that the Respondent, as a South African resident, should in all probability have been aware of the Complainant’s well-known trademark KULULA prior to his registration of the Disputed Domain Name.
On top of this, the Complainant has provided evidence that the Disputed Domain Name was offered for sale. This may be regarded by the Panel as an additional circumstance showing bad faith of the Respondent. In this regard, the fact that the Respondent did not seek to actively contact the Complainant for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant, for valuable consideration, does not affect the Panel’s view. Indeed it has been established by previous UDRP panels that the apparent lack of “active use” of the domain name without any active attempt to sell or contact the trademark holder (i.e. “passive holding”) does not as such prevent a finding of bad faith.
The absence of response to the initial letter of demand by the Complainant of March 8, 2010, and the absence of response to the Complaint, are additional circumstances indicative of bad faith of the Respondent.
In conclusion, there are cumulative circumstances which the Panel finds to be indicative of bad faith.
In this regard, the fact that the Disputed Domain Name has been used, after the Respondent had knowledge of the dispute, to redirect to another domain name , which points to a website that sells new and used office furniture under the name “Kulula”, does not affect the Panel’s finding.
Indeed, as claimed by the Complainant, such late use of the Disputed Domain Name by the Respondent could be regarded as an intentional attempt to benefit from the reputation of the Complainant’s well-known trademark KULULA in order to attract, for commercial gain, Internet users to his website. It is obvious from the record that there is no intention on the part of the Respondent to make a genuine use of the Disputed Domain Name.
For all the above-mentioned reasons, the Panel finds that the Complainant has carried its burden of proof under 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.
Isabelle Leroux
Sole Panelist
Dated: August 11, 2011
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