Airports Company South Africa SOC Limited v Clarence Steyn, South African
WIPO Case No. D2022-3143
•05-12-2022
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Airports Company South Africa SOC Limited v. Clarence Steyn, South African
Skylink Airways
Case No. D2022-3143
1. The Parties
The Complainant is Airports Company South Africa SOC Limited, South Africa, represented by Dentons
South Africa, South Africa.
The Respondent is Clarence Steyn, South African Skylink Airways, South Africa.
2. The Domain Name and Registrar
The disputed domain name <africaskyairportscompanysouthafrica.com> is registered with GoDaddy.com,
LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2022.
On August 25, 2022, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On August 26, 2022, 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 (Registration Private, Domains By Proxy, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on August 30,
2022, 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 2, 2022.
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 6, 2022. In accordance with the Rules,
paragraph 5, the due date for Response was September 26, 2022. The Respondent did not file a formal
Response, but sent several emails to the Center on October 3, 2022. The Center notified the Respondent
page 2
on October 3, 2022, that it had received the Response but as the specified date had expired the Response
would be brought to the Panel’s attention.
On October 11, 2022, the Complainant sent an email to the Center regarding the Respondent’s emails. The
Complainant drew the Center’s attention to the fact that:
(a) the Response was due on September 26, 2022;
(b) Rules, 5(f) reads that failure by a respondent to submit a response, in the absence of exceptional
circumstances the Panel shall decide the matter on the Complaint;
(c) Rules, 14(a) and (b) as to non-compliance with the Rules and time periods;
(d) accordingly, the Response must be disregarded.
The Center appointed Archibald Findlay S.C. as the sole panelist in this matter on November 21, 2022. 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 following facts and circumstances are found in the Complaint and its Annexures and, in the absence of challenge, may be accepted as background facts.
The Complainant was formed in 1993 as a public company under the Airports Act, 44 of 1993, and its majority shareholder is the South African Government (74.6 per cent).
The Complainant has, over the years, transformed a fragmented, infrastructural parastatal in a focused, customer driven, efficient and commercially successful business, whose airports have become a critical success factor to brand South Africa, including the three main international gateways of O.R. Tambo
International, Cape Town International, and King Shaka International Airports. In 2020, the nine airports which it operates facilitated nearly 21 million passengers.
Also significant is the fact that the Complainant has received several awards, both regional and international, for the manner in which it has conducted its business operations. It has also played a significant role in respect of economic empowerment and skills development, mainly focused on communities in and around the nine airports operated by it.
The Complainant has spent considerable time, money and effort on advertising and promoting its to the Complainant’s 2021 consolidated annual financial statement, a substantial amount is spent to maintain its good will.
The Complainant is also the registered owner of 14 trademarks in South Africa of the wordmark for advertised since 1993 and registered during the year 2012.
The Complainant is also the registered owner of the domain name <airports.co.za> since July 16, 1996.
The Complainant owns and operates a network of nine airports in South Africa which include the three main
international airports, namely: O.R. Tambo International; Cape Town International; and King Shaka
International.
page 3
In light of the foregoing, the Complainant’s trademark is undisputedly well-known, at least in South Africa.
The disputed domain name was registered on February 22, 2022, and resolves to a website reproducing the
Complainant’s trademarks and the contents and feel of the Complainant’s website.
5. Parties’ Contentions
A. Complainant
As a state-owned company, the Complainant has a greater mandate than simply delivering profitability for its shareholders and is mandated to advance South Africa’s national agenda of economic growth and development while delivering a sustainably profitable business.
The Complainant has a three-pillar strategy, namely, to run airports, develop airports, and grow its footprint as supported by its sustainability framework. In 2017, the Complainant commissioned a social, economic, and environmental impact report for the year 2017 which reflected that the Complainant: had generated
ZAR 9.5 billion for South Africa’s economy; supported 14,950 direct and indirect jobs; and generated ZAR
2.8 billion in income for its employees and local suppliers.
The Complainant has two distinct revenue streams which have generated similar income from the past few years. One source is defined as aeronautical income and is derived from regulated charges or tariffs. These consist of aircraft landing and parking charges, and passenger service charges. The non-aeronautical revenue is generated from commercial undertakings and flows from retail operations, car parking, car rental concessions, advertising, property leases, and hotel operations.
Another component of non-aeronautical revenue is generated by international operations. The Complainant has formed part of a number of consortiums, one being the takeover for the expansion and management of Chhatrapati Shivaji Maharaj International Airport in Mumbai, India. The success of the venture in India
encouraged the Complainant’s commercial services division to seek similar opportunities elsewhere.
The Complainant is also mandated to undertake the acquisition, establish, development, provision, maintenance, management, operation, and control of any airport, any part of any airport or any facility or service at any airport normally related to an airport function. This mandate is in line with the Airports Company Act No. 44 of 1993, as amended. The Complainant is a Schedule 2 public entity in terms of the Public Finance Management Act No. 1 of 1999, as amended, and operates as a legally and financially autonomous company with the legal framework outlined in the Companies Act No. 71 of 2008.
The Complainant contends that when it became aware of the disputed domain name on or about April 9, 2022, it caused a cease and desist letter to be sent on or about April 26, 2022, requesting for transfer of the disputed domain name and destruction of all materials bearing its AIRPORTS COMPANY SOUTH AFRICA trademark.
The Complainant sets out, in detail, contentions supported by previous UDRP decisions which support its contentions as to why:
(a) the disputed domain name is identical or confusingly similar to the trademarks owned by the
Complainant;
(b) the Respondent was not given any permission to register the trademark and has no rights or legitimate
interests in respect of the disputed domain name; and
(c) the disputed domain name was registered and is being used in bad faith.
page 4
B. Respondent
The Respondent has not proffered any explanation for its non-timeous filing of the Response nor sought any extension of the time limit in respect thereof.
As the Respondent did not reply either timeously or formally to the Complainant’s contentions, as prescribed in the Policy and advised in the Center’s correspondence to him on September 6, 2022, it is in default in terms of paragraph 14 of the Rules and paragraph 7(c) of the Supplemental Rules, with the result that the Panel has a discretion whether or not to consider the contents of the email submitted by the Respondent after the due date for Response.
That discretion is exercisable having regard to various factors. A useful illustration is to be found in AIB-
Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No.
D2005-0485:
“- the response was filed before commencement of the decision-making process by the panel (see
J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource
Marketing, WIPO Case No. D2000-0035);
- the lateness did not delay the decision (See Young Genius Software AB v. MWD, James Vargas,
WIPO Case No. D2000-0591);
- response was late only by one day (See Kate Spade, LLC v. Darmstadter Designs, WIPO Case No.
D2001-1384 and Arthur Guinness Son & Co. (Dublin) Limited v. Feeney O’Donnell and John
O’Donnell, WIPO Case No. D2000-1710).
Although there were no apparent exceptional circumstances, a late response was taken into account on the basis of the panel’s “general powers” pursuant to paragraph 10(b) of the Rules (“equality and that each party is given a fair opportunity”) on the grounds that failure to take the response into
account “would be a rather drastic step and should be undertaken with great care”. (AT&T Corp. v.
Randy Thompson, WIPO Case No. D2001-0830).
In contrast, responses submitted after the expiry of the deadline were dismissed by the panel where
the period set was exceeded by two weeks, since the respondent could have applied for an extension
and was represented by counsel (Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).”
(See also Vincle Internacional de Tecnologia y Sistemas, S.A. v. Warren Weitzman, Caramba LLC,
WIPO Case No. D2018-1182).
In his email, the Respondent raised the following:
(a) he is aware that the Complainant is partly owned by the South African Government;
(b) he proposes to operate a holding company at three international South African airports located in operated by the Complainant);
(c) he asserts that the disputed domain name reflects the company name which is registered with the
Registrar of Companies in South Africa;
(d) he submits that the Registrar of Companies would have had to carry out due diligence with regard to
trademarks associated with the registration of the company name and took no issue with the name selected;
(e) he feels that the name he chose is sufficiently different to that of the Complainant by the addition of the
words “africa” and “sky”;
page 5
(f) he intends registering domain names in 12 African countries and points out that their laws differ.
The Panel also notes that the late filing applicable was some seven days late.
The Complainant objected by email on October 11, 2022, particularly on the ground that the Respondent did
not comply with the time limits prescribed by the Rules and made no submissions as to why he was late.
Despite this objection, the Respondent still did not furnish any explanation.
Having regard to the above considerations, particularly:
(a) the fact that the Response was filed before this decision-making process;
(b) the delay was one of seven days which did not delay the decision-making process;
the Panel has decided to exercise its discretion and admit the Response and take it into account in making
its decision.
6. Discussions 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 in accordance
with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the Complainant 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.
(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 the disputed 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 the disputed domain name for the purpose of paragraph 4(a)(ii).
B. Effect of late filing of a Response and non-compliance with the Rules
| default of timeous delivery of a response; however, a complainant bears the burden of proof in respect of | A Panel has a discretion whether or not to accept a response delivered out of time. A respondent may be in response 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) which is not addressed, explained, or challenged by a respondent and not dealt with. |
page 6
Accordingly, the Panel is not bound to accept all that has been put up by the Complainant but must evaluate
it as it stands (Cf. 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 a requirement of the Rules (Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No.
D2009-0942).
In the present instance, the Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response timeously and in the proper form, particularly in the light of the fact that the Complainant wrote on occasions to the Respondent, as did the Center when dealing with procedural matters and advising the Respondent of time limits, as against the Respondent’s failure to respond to any further correspondence after its initial response to the Complainant’s cease and desist letter.
From this, the Panel considers and has decided that it may accept that, save for any disputes raised in its email of October 3, 2022, 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 Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049; VKR Holding A/s v Above.com Domain Privacy/Host Master, Transure Enterprise Ltd., WIPO Case No. D2012-0040; Knorr-Bremse AG. v. WhoisGuard
Protected, WhoisGuard, Inc. / Mosco Binzu, WIPO Case No. D2019-0616).
C. Domain Name is Identical or Confusingly Similar
The Complainant put up a list of some 14 South African registered trademarks.
The fact that the word mark AIRPORTS COMPANY SOUTH AFRICA has been incorporated entirely into the
disputed domain name is sufficient to establish that it is identical or confusingly similar to the Complainant’s
registered mark (Quixtar Investments, Inc. v. Dennis Hoffman, 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; LEGO Juris A/S v. Registration Private, Domains
By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-4146).
The fact that the words “africa” and “sky” have been added before the Complainant’s trademark does not detract from the disputed domain name being confusingly similar (Puma SE v. Client Care, Web Commerce Communications Limited, WIPO Case No. D2022-0015; The Oxford Asset Management Company Limited v. Domains by Proxy LLC / Randall Gomez, ITS International, WIPO Case No. D2022-0859).
The gTLD “.com” is not an element that generally would be taken into consideration when evaluating the identity and similarity of the Complainant’s trademark and the domain name (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374;
Qantas Airways Limited v. Minh Huynh, WIPO Case No. D2008-1382; L’Oréal, Lancôme Parfums Et Beauté
& Cie v. Jack Yang, WIPO Case No. D2011-1627; Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO
Case No. D2006-1435; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Marko Tusla d/b/a/ Toshiba-
Club.com, WIPO Case No. D2004-1066).
The generic Top-Level Domain (“gTLD”) “.com” is considered to be a standard element and to be
disregarded in the enquiry into the existence of this element. (The Oxford Asset Management Company
Limited v. Domains by Proxy LLC / Randall Gomez, ITS International, supra).
page 7
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 the 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) requires the Complainant to prove that the Respondent has no rights to 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 on this factor shifts to the Respondent to rebut the showing, despite the overall burden of proof
remaining upon the Complainant to prove 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).
Having not dealt with all relevant facts and considerations in the Complaint, the Respondent has placed itself in a position that it has not produced sufficient evidence to rebut such prima facie case as may have been established by the Complainant.
The Complainant contends that it is the sole proprietor of the trademark AIRPORTS COMPANY SOUTH
AFRICA and the Respondent has not been given any permission to register or use any domain name
incorporating the trademark of the Complainant. It follows, therefore, that the Respondent has no rights to
the use of that mark as part of the disputed domain name and that any unauthorized use for commercial
purposes would violate the wide-reaching trademark rights enjoyed by the Complainant. (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).
Further to there being no authorization on the part of the Complainant, there is no evidence of a relationship
or association between the Complainant and the Respondent, whether by license or otherwise, which also
militates against the Respondent having rights or legitimate interests in the disputed domain name or other
entitlement which might fall within that purview. (Sybase, Inc. v. Analytical Systems, WIPO Case No.
D2004-0360; Philip Morris Products S.A. v. dsfdsfdf dsfadsfdsf, dfsdsfd, WIPO Case No. D2022-0014;
Salomon S.A.S. v. Web Commerce Communications Limited, Client Care and Whoisprotection.cc, Domain
Admin, WIPO Case No. D2022-0807; Agropur Cooperative v. Ken Ema, agropurcooperative.com, WIPO
Case No. D2022-0871)
From the Respondent’s email it is apparent to the Panel that he has embarked upon a campaign to promote the disputed domain name widely in South Africa as he is of the view that the disputed domain name, which reflects the Respondent’s company name registered in South Africa, is sufficiently different to that of the
page 8
Complainant to entitle him to do so. Although the Complainant’s trademark AIRPORTS COMPANY SOUTH
AFRICA is a combination of dictionary words, the use of the exact combination of all four words in the
identical order with the trademark in the disputed domain name does not suggest rights or legitimate
interests on the part of the Respondent by the mere addition of the words “africa” and “sky” before it. Rather,
it suggest knowledge of the Complainant and the Panel feels that the composition of the disputed domain
name carries a risk of confusing users. Moreover, the Respondent seeks to offer the same services as the
Complainant in the same industry, which only increases such the risk of confusion.
In view of the facts and circumstances put up on this ground and even accepting the late Response, 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. Registration & Use 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 again, 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 implication arising from the disputed domain name, in the mind of a would-be customer, is therefore clearly that it is either of or in some way associated with the Complainant. In turn, in the view of the Panel, this leads to the inescapable conclusion that such potential customer is falsely invited to do business with either the Complainant itself or someone authorized on its behalf. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith registration and use. (Media24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, supra).
| confusingly similar to the Complainant’s trademark and the Complainant’s domain name, particularly in the | The selection of a disputed domain name which incorporates the Complainant’s trademark, thus is particularly where it is so widely known. Moreover, such conduct by the Respondent implies that it intended to suggest to would-be customers that it was in some way linked to or associated with the Complainant and thereby solicit business by creating that belief in the mind of potential consumers. |
page 9
In particular, the apparent knowledge of the Respondent in respect of the airline industry would suggest that he intended to convey a link or arrangement between the Respondent and the Complainant, that they were linked in some way or constitute an endorsement by the Complainant. (Kelley Blue Book Company, Inc. v. Nikolay Golovin aka Buy-movie.net, WIPO Case No. D2005-0837.)
Moreover, the Respondent wishes to operate from the same regions of the three international airports mentioned above which are owned by the Complainant and from which it operates.
It is also significant, in the view of the Panel, that the Respondent claims that his registration of the company name entitles him to use it commercially. In this regard, it is significant that he does not provide further detail or evidence as to what was contained in his application for registration of the company or why he claims that there had been a due diligence enquiry by the Registrar of Companies with regard to trademark conflicts.
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <africaskyairportscompanysouthafrica.com> be transferred to the Complainant.
/Archibald Findlay/
Archibald Findlay
Sole Panelist
Date: December 5, 2022
0
0
0