WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Comair Limited v. Nkosana Sifumba

Case No. D2019-3036

1. The Parties

The Complainant is Comair Limited, South Africa, represented by Adams & Adams Attorneys, South Africa.

The Respondent is Nkosana Sifumba, South Africa.

2. The Domain Name and Registrar

The disputed domain name <kululapay.com> is registered with Uniregistrar Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2019. On December 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 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 December 11, 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 December 13, 2019.

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 December 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2020.

The Center appointed Archibald Findlay SC as the sole panelist in this matter on January 15, 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 is a South African company listed on the Johannesburg Stock Exchange since 1998, offering schedule and non-schedule airline services within South Africa, sub-Saharan Africa and the Indian Ocean Islands as its core business. The Complainant has successfully operated since 1946 and is the only known airline in South Africa to have achieved operating profits for 72 consecutive years, with a safety record which is internationally recognized.

The Complainant is the proprietor of the well-known KULULA trademark and other marks incorporating KULULA which it has registered in various classes covering a wide range of goods and services in various jurisdictions. The Complainant’s earliest trademark registrations date back to 2001. In particular, the Complainant is the proprietor of trademark registrations for KULULA in, inter alia: Botswana; Kenya; Malawi; Namibia; Nigeria; Uganda; Zambia; and Zimbabwe.

In South Africa, the Complainant is the proprietor of the following trademarks:

(i) no. 2001/10306-8 KULULA in classes 37, 39 and 42; and

(ii) no. 2002/18878-86 KULULA in classes 12, 16, 25, 35, 36, 38, 41, 43 and 45.

It is also the proprietor of 26 trademark registrations for the mark KULULA and marks incorporating the word KULULA (e.g. KULULA.COM/CARS, KULULA MOOLA, KULULA MOOLAH, KULULA CONNECT, etc.) in South Africa.

The abovementioned marks are all valid and in force.

The Complainant also claims common laws rights in and to the trademark KULULA which it has used in for 18 years in South Africa and internationally.

In 2001, the Complainant launched South Africa’s first low-fare air carrier, called KULULA. The following year, the Complainant upgraded its fleet of Boeing 727’s to 737-400’s and, in December 2003, replaced its entire fleet with the more cost-efficient MD-82’s. The Complainant currently operates a fleet of 737-800 aircraft.

KULULA grew by more than 10 per cent in the domestic travel market in its first two years of operation and now offers more than 600 flights a month. It also introduced a low-cost car rental service for travelers, KULULA.COM/CARS.

The domain name <kulula.com> was first registered by the Complainant in 2001 and it is the Registrant of multiple other “.co.za” and “.com” domain names incorporating the mark KULULA, including, inter alia, <kulula.co.za>; <kulula.online>; <kalula.co.za>; <kulula-airlines.co.za>; <flykulula.co.za>; <kulula-air.co.za>; <kululaairlines.com>; and <kulula-card.com>.

The Complainant’s turnover and marketing expenditure in the year 2001 were R1 160 000 000.00 and R55 293 798.00, respectively. By the year 2018, its turnover and marketing expenditure had grown to R6 536 540 000.00 and R141 924 153.16, respectively.

The Complainant became aware of the disputed domain name in October 2019, pursuant to a Google search conducted using the search phrase “kulula pay”. The results of that search led to the disputed domain name <kululapay.com> which further contained references to the Complainant’s primary <kulula.com> domain name.

The disputed domain name was first registered on October 15, 2019.

5. Parties’ Contentions

A. Complainant

The Complainant contends that by incorporating the KULULA mark the disputed domain name is confusingly similar to the Complainant’s trademarks and domain names, particularly, <kulula.com>.

It avers that a Google search conducted by it in respect of its trademark KULULA resolved to the Respondent’s site <kululapay.com> where there is reference to various services which the reader can only understand to be referring to the Complainant.

The Complainant further confirms that the Respondent has no relationship with it or any authorization to use the disputed domain name and, accordingly, contends that the Respondent has no legitimate rights or interest in the disputed domain name.

The Complainant further contends that the registration and use of its trademark is clearly in bad faith in the light of the above and that it would mislead people into believing that they would be dealing, directly or indirectly, with the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Substantive Elements of the Policy

Paragraph 15(a) of the Rules requires that:

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration and use of a domain name in bad faith. These are non-exclusive.

Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the Respondent’s rights or legitimate interests in a domain name for the purpose of paragraph 4(a)(ii) of the Policy.

B. Effect of Default

Notwithstanding the fact that the Respondent is in default, the Complainant bears the burden of proof in respect of each of the three elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the Complainant to a finding in its favor by reason thereof, as failure by the Complainant to discharge the burden of proof will still result in the Complaint being denied (M. Corentin Benoit Thiercelin v. CyberDeal Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, a.k.a. Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).

However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the requirement of the Rules (Allianz, Compañia de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942).

From this the Panel considers that it may be accepted that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Limited v. Global Net 2000 Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994; Standard Innovative Corporation v. Shopintimates USA, supra; VKR Holdings A/s v. Above.com Domain Privacy/Host Master, Transure Enterprises Ltd., WIPO Case No. D2012-0040).

Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters Limited v. Global Net 2000 Inc., WIPO Case No. D2000-0441; RX America LLC. v. Matthew Smith, WIPO Case No. D2005-0540; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holdings A/S v. Above.com Domain Privacy/Host Master, Transure Enterprises Ltd., supra; Group Auchan v. Anirban Mitra, WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc., WIPO Case No. D2012-1213).

C. Identical or Confusingly Similar

The fact that the word mark KULULA has been incorporated entirely into the disputed domain name is sufficient in this case to establish that it is confusingly similar to the Complainant’s registered marks (Quixtar Investments, Inc. v. Dennis Hoffmann, WIPO Case No. D2000-0253; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin / Moniker Privacy Services, WIPO Case No. D2008-0016).

The Panel also holds the view that the addition of the word “pay” after the trademark KULULA is merely a description and does not prevent a finding of confusing similarity (Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans, WIPO Case No. 2002-0367; Fry’s Electronics, Inc. v. WhoIs ID Theft Protection, WIPO Case No. D2006-1435; VRL International Ltd. v. Domaincar, WIPO Case No. D2006-0240; and Compagnie Gervais Danone v. Jose Gregorio Hernandez Quintero, WIPO Case No. D2009-1050; Statoil ASA (“Statoil”) v. Anoop Chetty, Telas, WIPO Case No. D2017-1884; Bristows LLP v. Protection of Private Person / Marilyn Steele, WIPO Case No. D2018-0685).

In these circumstances, the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy.

D. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:

(i) before any notice to the Respondent of the dispute, the use by the Respondent 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 (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to target the trademark or service mark at issue.

Although paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production of evidence shifts to the Respondent to rebut or displace the Complainant’s evidence in this regard, despite the overall burden of proof remaining upon the Complainant to disprove each of the three elements of paragraph 4(a) of the Policy. (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, supra; Statoil ASA (“Statoil”) v. Anoop Chetty, Telas, supra).

Having defaulted, the Respondent has placed himself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established. The mere bald statement in the correspondence without more or supporting evidence, does not take the Respondent’s position further.

The Complainant contends that it is the owner of the trademark KULULA, and that the Respondent has not been given any permission to register or use any domain name adopting or similar to the trademark or domain name of the Complainant. It follows, therefore, that the Respondent has no rights to the use of that mark as part of a domain name for purposes of the Policy. (Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055; Caesars World, Inc. and Park Place Entertainment Corporation v. Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp. v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase, Inc. v. Analytical Systems, WIPO Case No. D2004-0360; San Lameer (Pty) Ltd. and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd., supra).

Likewise, there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by license, express, implied or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase, Inc. v. Analytical Systems, supra; Oki Data Americas, Inc. v. ASD Inc., WIPO Case No. D2001-0903; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, supra).

In view of the unchallenged facts and circumstances put up on this ground by the Complainant, the Panel is of the view that the Complainant should therefore succeed on this ground as well.

The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy.

E. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented-out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location.”

The registration of the disputed domain name, which is confusingly similar to the Complainant’s trademark and domain name, with the addition of the word “resorts” is indicative of the Respondent’s intent to trade on the value established by the Complainant in its mark, to attract users and thereby deriving economic benefit from either those users attracted to the Respondent’s website as and when it may become operative and by receiving compensation from others if these would-be customers are routed away from the Complainant and to the Respondent. Such a practice also would constitute bad faith (Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search Inc., WIPO Case No. D2000-0587).

The selection of a domain name that is identical or confusingly similar to the Complainant’s trademark and domain name, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainants and intended to benefit therefrom. (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Encyclopaedia Britannica, Inc. v. LaPorte Holdings, WIPO Case No. D2005-0866; Barclays Bank PLC v. Miami Investment Brokers Inc., WIPO Case No. D2012-1213).

The selection of a name which is confusingly similar to that of the Complainant without the Respondent having any association or connection with the Complainant is not legitimate and, in these circumstances, evidence of bad faith. (Encyclopaedia Britannica, Inc. v. LaPorte Holdings, supra).

The Panel is therefore satisfied that the Complainant has established the third element 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 <kululapay.com> be transferred to the Complainant.

Archibald Findlay
Sole Panelist
Date: January 20, 2020