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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Comair Limited v. Privacy Protect LLC / Shengamo Malenga, Shengamo Media Limited

Case No. D2019-2213

1. The Parties

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

The Respondent is Privacy Protect LLC, United States of America / Shengamo Malenga, Shengamo Media Limited, Zambia.

2. The Domain Name and Registrar

The disputed domain name <kululaexpress.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2019. On September 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 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 September 13, 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 September 16, 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 September 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2019. The Respondent sent an informal email to the Center on September 25, 2019, stating that the Respondent had not received a copy of the Complaint. The Center confirmed that it notified the Complaint to the Respondent on September 20, 2019, in accordance with paragraphs 2 and 4 of the Rules. However, out of an abundance of caution, the Center re-sent the Notification of Complaint and Commencement of Administrative Proceeding document, the Complaint and the amended Complaint including all annexes to the Respondent by way of reply to that email on September 25, 2019. The Respondent did not submit a response and accordingly, the Center informed the Parties that it would proceed with panel appointment on October 11, 2019.

The Center appointed Steven A. Maier as the sole panelist in this matter on October 15, 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 public limited company incorporated in South Africa. It operates a low-cost airline under the name and mark KULULA.

The Complainant is the owner of trademark registrations for the mark KULULA in various African territories. Those registrations include, for example:

- Zimbabwe trademarks numbered 2003000033 to 2003000039 inclusive for the word mark KULULA, registered on January 24, 2003 in Classes 12, 16, 25, 35, 36, 38 and 41
- Malawi trademarks numbered 2003000050 to 2003000053 inclusive for the word mark KULULA, registered on October 24, 2003 in Classes 9, 12, 16 and 25
- Kenya trademarks numbered 1003067 to 1003070 inclusive for the word mark KULULA, registered on April 6, 2004 in Classes 35, 36, 38 and 41.

While the Complainant refers to additional trademark registrations for KULULA in both South Africa and Zambia (where the parties are respectively domiciled), it has not provided evidence of those trademarks and the Panel has been unable independently to identify them.

The disputed domain name was first registered on March 13, 2014.

There is no evidence before the Panel that the disputed domain name has ever resolved to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it has operated a low-cost airline under the name and mark KULULA since 2001. It states that it operates more than 600 flights per month, both within South Africa and also to other African destinations including Livingstone, Zambia. It states that it also offers car rental, financial services and accommodation under the KULULA mark. The Complainant states that it operates a website at “www.kulula.com” through which the majority of its business is transacted. It also provides evidence of its presence on social media and of its recognition in travel media articles. The Complainant provides records of its annual marketing spend including approximately ZAR 142 million (approximately USD 9.7 million) in 2018. The Complainant submits that, as a result of these matters, it has obtained significant common law rights in the name and mark KULULA in addition to its trademark registrations and that the mark has become well known in connection with airline services.

The Complainant submits that the disputed domain name <kululaexpress.com> is identical or confusingly similar to its trademark KULULA. It states that the disputed domain name incorporates its mark KULULA and that the additional element “express” does not distinguish the disputed domain name from its trademark, serving on the contrary to imply a connection with the airline industry.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. It states that it has no relationship with the Respondent and has never authorized the Respondent to use its KULULA mark. The Complainant denies that the Respondent has any independent rights in the name and mark KULULA or that it has ever been commonly known by that name. The Complainant further submits that, by making no active use of the disputed domain name, the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant relies on the fact that the disputed domain name comprises the Complainant’s mark KULULA together with the term “express”, which the Complainant asserts would be understood as referring to flight operations. The Complainant contends that the disputed domain name will inevitably lead Internet users to believe that it is registered to, operated by or otherwise connected with the Complainant and is bound therefore to take unfair advantage of the Complainant’s goodwill in the KULULA trademark.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

Except for its email of September 20, 2019, referred to above, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or 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.

Even in a case where no formal Response has been filed, the Complainant must still establish that each of the three above elements is present.

A. Identical or Confusingly Similar

The Complainant has established that it has registered trademark rights in various territories in the name and mark KULULA. The disputed domain name wholly incorporates the Complainant’s trademark KULULA together with the additional term “express”. In the view of the Panel, that dictionary term is not effective to distinguish the disputed domain name from the Complainant’s trademark and the Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions referred to above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not participated in this administrative proceeding and has not provided any explanation for the registration of the disputed domain name, whether in accordance with any of the criteria set out in paragraph 4(c) of the Policy or otherwise. Having no other evidence of any rights or legitimate interests on the Respondent’s part, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant’s evidence that the Complainant’s trademark KULULA is distinctive in nature and has become widely known, particularly in Africa, as referring to the Complainant and its low-cost airline services. Having conducted a Google search against the term “kulula”, the Panel is not of the view that the term has any meaning in commerce (or otherwise) other than to refer to the Complainant and its services. The Panel also accepts the Complainant’s submission that the inclusion of the term “express” in the disputed domain name may be suggestive of travel services. In the circumstances, including the failure of the Respondent to provide any explanation for its choice of the disputed domain name, the Panel can only infer that the Respondent registered the disputed domain name with the Complainant’s trademark in mind and with the intention of obtaining a commercial advantage by virtue of the reputation of that trademark.

While there is no evidence that the Respondent has made active use of the disputed domain name, that factor is not a bar to a finding of use in bad faith if that is the conclusion which results from all the circumstances of the case (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In this case, the Panel finds that the disputed domain name constitutes an impersonation of the Complainant that will inevitably lead a significant number of Internet users mistakenly to believe that the disputed domain name is registered or authorized by the Complainant. Noting once again the absence of any explanation on the part of the Respondent, the Panel is unable to conceive of any legitimate use that the Respondent could make of the disputed domain name and finds therefore that the Respondent is using the disputed domain name in bad faith.

The Panel therefore concludes that the disputed domain name has been registered and is being used in bad faith.

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 <kululaexpress.com> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: October 24, 2019

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