The Complainant is Comair Limited, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Privacy Protect, LLC, United States of America / Domain Privacy Guard Sociedad Anonima Ltd., Panama.
The disputed domain name <flykalula.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2019. On July 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 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 26, 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 30, 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 August 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2019.
The Center appointed Torsten Bettinger as the sole panelist in this matter on August 29, 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.
The Complainant is a South African company incorporated in accordance with the laws of South Africa. The Complainant has been in existence since 1946 and began operating low-fare airline services under the KULULA trademark in 2001 in South Africa as well as neighboring countries and regions. The Complainant is a South African company listed on the Johannesburg Stock Exchange since 1998.
The Complainant has expanded to offer automobile and accommodation rental and financial services online through its <kulula.com> domain name.
According to the extract of the WhoIs data base provided by the Registrar the disputed domain name was registered on September 28, 2004.
The disputed domain name resolves to a pay-per-click website which contains various sponsored links to third party websites offering the booking of flight tickets.
The Complainant sent a cease and desist letter to the Respondent by using the Privacy Protect, LLC online portal on June 11, 2019 demanding that the Respondent ceases to use the mark KULULA and transfers the disputed domain name to the Complainant. The Respondent did not respond to this letter. On June 26, 2019, the Complainant’s attorneys sent a further letter to the Respondent notifying the Respondent that they were instructed by the Complainant to institute formal proceedings against the Respondent, if the Respondent did not cease to use the disputed domain name and transfer it to the Complainant. The Respondent did also not respond to this letter either.
The Complainant contends that the disputed domain name is confusingly similar to its trademark KULULA, the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent registered and is using the disputed domain name in bad faith.
The Complainant provided evidence that it registered its KULULA mark in various countries, including South Africa (e.g., Kenyan Trademark Registration No. 1002602 2001/10306-8; registered on August 18, 2003.).
Complainant contends that as a result of considerable promotion and advertising of its services under the KULULA mark, the mark KULULA also acquired protection a common law trade mark under the law of South Africa.
With regard to the requirement of identity or confusing similarity between the trademark and the domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant submits that the disputed domain name is confusingly similar to a trademark in which it has rights as the distinctive part “kalula” only differs from the Complainant’s trademark by one letter and as the addition of the word “fly” merely contributes to members of the public being deceived and/or confused into believing that the disputed domain name <flykalula.com> is related to the Complainant’s primary services.
Furthermore, the Complainant argues that the dominant portion “kalula” of the disputed domain name has already been found to be confusingly similar to the Complainant’s well-known KULULA trade mark by the Companies Tribunal of South Africa under case number CT009JAN2019.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:
- it has never authorized the Respondent to use the disputed domain name or its trademark KULULA;
- the disputed domain name resolves to a website which features sponsored links to websites offering the booking of airline tickets and that there is no indication that the Respondent has the intention to make a legitimate noncommercial or fair use of the disputed domain name;
- the Complainant’s registered trademark rights and common law rights pre-existed the registration of the disputed domain name;
- there is no evidence that the Respondent has been or is commonly known by the name “kalula” in South Africa or elsewhere, or that the Respondent has acquired any trademark rights in this mark;
- the lack of evidence and the usage of a privacy protection service to protect its identity suggests that the Respondent purely registered the disputed domain name because the Complainant is and has been commonly known by the name KULULA and is often confused with the KALULA mark.
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that:
- the Respondent was undoubtedly aware of the Complainant’s rights in the mark KULULA when the disputed domain name was registered as the disputed domain name incorporates the KALULA mark which is confusingly similar to the Complainant’s registered mark; and
- the inclusion of the word “fly” , referring to the Complainant’s primary operations, reinforces that the Respondent was aware of the Complainant’s rights in the KULULA mark;
- the use of the disputed domain name leads people and/or businesses to believe that the disputed domain name is registered to, operated or authorized by, or otherwise connected to the Complainant and that therefore 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;
- through its extensive use, the mark KULULA has acquired a substantial reputation and qualifies as a well-known trade mark and that the Respondent registered the disputed domain name with the “intention of benefitting from the extensive reputation the Complainant has established in its well-known trade mark KULULA”.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has provided substantial evidence of its trademark rights in the mark KULULA.
It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the trademark is used or other marketing and use factors usually considered in trademark infringement cases. (See section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Here the disputed domain name <flykalula.com> differs from Complainant’s highly distinctive mark KULULA by one letter (“a” instead of “u”) and the addition of the descriptive terms “fly”.
There is consensus among the UDRP panels that the addition of merely descriptive wording to a trademark in a domain name does not prevent a finding of confusing similarity between a domain name and a complainant’s trademark under the first element of the UDRP. (See, for instance, Facebook, Inc. v. Sleek Names, SL Names, VSAUDHA, WIPO Case No. D2015-0547 (“The disputed domain names contain as a first and/or dominant element the Complainant’s famous trademark FACEBOOK, combined with a variety of descriptive terms, for example, ‘account’, ‘password’, ‘hacker’, ‘analytics’, ‘survey’ et cetera. The addition of these terms do not serve to distinguish the disputed domain names in any material way.”); see also, for instance, Dropbox, Inc. v. Mohd Shariq, Techinspire, WIPO Case No. D2016-1194 (“The domain name <dropbox-support-number.com> consists of the Complainant’s registered mark DROPBOX plus the generic words ‘support’ and ‘number’ separated by hyphens. The addition of these generic words and hyphens do not serve to distinguish the domain names from the Complainant’s DROPBOX marks and the Panel finds that the domain names are confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.”); see also section 1.8 of WIPO Overview 3.0).
Also the replacement of the vocal “u” by the vocal “a“ in the distinctive part of the disputed domain name does not serve to avoid a finding of confusing similarity between distinguish the disputed domain name and the Complainant’s mark. This is particularly the case where Complainant’s mark is highly distinctive and the added descriptive term refers to Complainant’s business (see Reuters Limited v Global Net 2000, Inc., WIPO Case No. D2000-0441).
Finally, it has been long established under the UDRP that the specific generic Top-Level Domain (“gTLD”) designation such as “.com”, “.net” and “.org” is typically not to be taken into account when assessing the issue of identity or confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see section 1.11 of WIPO Overview 3.0).
For the foregoing reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark KULULA in which the Complainant has rights.
A respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Complainant has asserted the disputed domain name resolves to a pay-per-click website which contains sponsored links to third parties offering the booking of flight tickets and that the Complainant has not authorized the Respondent to use its trademark KULULA or the disputed domain name.
These assertions are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
The Respondent chose not to contest the Complainant’s allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests. The Panel therefore accepts these allegations as undisputed facts.
In light of the nature of the DDN and the fact that the Respondent uses the disputed domain name for a pay-per-click site with links to websites of third parties offering flight tickets the Panel concludes that the Respondent registered the disputed domain name to seek an impression of an association with the Complainant and finds that the Respondent has no rights or legitimate interests the disputed domain name subject of the Complaint.
The Panel therefore concludes that the Complainant has satisfied the second element of the Policy set forth by paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Complainant holds trademark registrations for KULULA in South Africa and neighboring countries since at least 2001. Further the Complainant’s trademark KULULA is distinctive and solely connected with Complainant’s airline services
This and the fact that the disputed domain name refers to the Complainant’s airline business by the addition of the descriptive term “fly” makes it inconceivable that that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its trademark KULULA.
The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith.
The Complainant provided evidence that the Respondent used the disputed domain name to resolve to an active pay-per-click website featuring sponsored advertisement links to websites offering airline tickets. The Respondent did not refute these allegations and did not reply to the Complainant’s correspondence prior to the filing of the Complaint. The Respondent also failed to provide any evidence of actual or contemplated good-faith use.
The Panel therefore concludes that the Respondent, is using without permission the Complainant’s trademark as part of the disputed domain name in order to redirect Internet users looking for the Complainant’s services to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The fact that there is evidence of advertising at this website is indicative of the Respondent’s use of the disputed domain name for commercial purposes in terms of paragraph 4(b)(iv) of the Policy.
For the above, the Panel finds that Respondent’s registration and use is a clear-cut case of cybersquatting and that therefore the Complainant has also satisfied its burden under paragraph 4(a)(iii) of the Policy.
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 <flykalula.com> be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Date: September 12, 2019