WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lonely Planet Publications Pty Ltd v. Hoang Anh Minh and cicvn.com
Case No. D2003-0355
1. The Parties
The Complainant is Lonely Planet Publications Pty Ltd, Victoria, Australia, represented by Davies Collison Cave of Australia.
The Respondents are Hoang Anh Minh and cicvn.com, Hanoi, Viet Nam.
2. The Domain Names and Registrar
The disputed domain names <lonelyplanetvietnam.com> and <vietnamlonelyplanet.com> are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 8, 2003. On May 8, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On May 15, 2003, eNom 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 administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 May 19, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on June 11, 2003.
The Center appointed Pravin Anand as the sole panelist in this matter on June 24, 2003. 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.
On June 29, 2003, the Respondent requested for suspension of the proceedings due to settlement discussions and, with the approval of Complainant, the proceedings were suspended for 7 days, i.e. until July 15, 2003.
On July 14, 2003, the Complainant requested for a further suspension of the proceedings and a suspension was granted until July 22, 2003.
On July 21, 2003, the Respondents informed the Center and the Complainant that the Respondents were willing to transfer the domain names.
4. Factual Background
The Complainant began its operations in the early 1970ís. The founders of the Complainant derived the name from the song "Lovely Planet" that was adopted as "Lonely Planet" for travel publications.
The Lonely Planet name and logo were first used in 1973 in connection with its first travel related publication entitled "Across Asia on the Cheap". Since the publication of its first books Lonely Planet has vastly expanded its list of publications and today over 650 titles are published under the Lonely Planet name and trademark including destination, guidebooks, destination maps, activity guidebooks, general reference books, travel literature and travel pictorials.
Lonely Planet is the only English language travel publisher to produce French language titles in France. They also publish co-branded travel guides with alliance partners in Italian and Spanish. Further they publish eight phrase books in Dutch.
The award winning "www.lonelyplanet.com" website averages hits of 1.5 million a month. They also have dedicated foreign language websites in French "www.lonelyplanet.fr" and Spanish "www.lonelyplanet.es" and Italian "www.edt.it/lonelyplanet" (which is operated in partnership with EDT S.r.L)
Lonely Planet has registered, or has filed applications pending for 12 trademarks comprising or containing the word " Lonely Planet" in Australia. The trademarks cover predominantly goods and services in classes 9, 16, 35, 41 and 42. They also have a registration for the trademark "Lonely Planet" in Viet Nam in relation to class 16 goods.
Further they either have registrations or pending applications in a large number of other countries for the mark "Lonely Planet" including Argentina, Brazil, Canada, European Union, Czech Republic, India, Israel, Japan, Mexico, New Zealand, Peopleís Republic of China, Poland, Republic of South Africa, Russian Federation, Spain, Taiwan, Province of China, Thailand, United Kingdom and United States of America.
5. Partiesí Contentions
Identical or Confusingly Similar
The term "Lonely Planet" is an invented or coined phrase and the domain names <lonelyplanetvietnam.com> and <vietnamlonelyplanet.com> are only a minor variation of the well-known LONELY PLANET trademark. The disputed domain names have no sensible meaning but for their association with Lonely Planet. The addition of the word element "Vietnam" and the suffix "com" does not add to the distinctive term Lonely Planet.
The disputed domain names are not the ones that traders would legitimately choose unless they were trying to create a false association with Lonely Planet. The combination of the word element "Vietnam" with the Complainantís LONELY PLANET trademark inevitable results in some association or connection between the Respondents and the Complainant. The word element "Vietnam" is not prima facie non-distinctive and does not differentiate the domain names from the Complainantís trademark. The word element does not detract from the dominant impression created by the Complainantís LONELY PLANET trademark.
No rights or legitimate interests
The Respondents do not have any connection with the Complainant and neither has been licensed nor authorized by the Complainant to use a domain name confusingly similar to the Complainantís LONELY PLANET trademark as part of the domain names or in any other way. The domain names are not the name of the Respondentsí nor are they similar to or in any way connected with the name under which the Respondents hold the domain name registration.
The Respondents are not making a legitimate non-commercial or fair use of the domain names without intent for commercial gain or misleadingly divert customers or to tarnish the Complainantís trademark. The use that has been made of the disputed domain names by the Respondents cannot be characterized as use in connection with the bonafide offering of goods or services.
Registered and used in bad faith
The Respondentsí absence of any authorization by or connection with Lonely Planet and the subsequent use of the disputed domain names leads to the inevitable conclusion that the Respondents registered the domain names with the intent that they would be used to attract, for commercial gain, Internet users to the Respondentsí website for commercial gain.
Furthermore, the Complainant contends that the circumstances surrounding the current matter indicate that the Respondents have registered the domain names for the purpose of selling, or otherwise transferring the domain names to the Complainant, who is the owner of the trademark, for valuable consideration in excess of its documented out-of-pocket expenses.
Further the Respondentsí website at "www.lonelyplanetvietname.com" has the "look and feel" including similar font and colour scheme as the Complainantís website. In addition the website also replicates the Complainantís Thorn Tree trademark. Further the domain name <vietnamelonelyplanet.com> has been held passively and such mere holding also amounts to use and registration in bad faith.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
The Respondents have consented to the transfer of the disputed domain name in the settlement agreement, dated July 22, 2003.
Considering this consent to a transfer of the domain names and other facts of the case, this Administrative Panel concludes that the three requirements of Paragraph 4(a) of the Policy are fulfilled as held in Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398.
Having regard to Paragraph 4(a) of the Policy, the Panel hereby requires that the registrar eNom transfer the domain names <lonelyplanetvietnam.com> and <vietnamlonelyplanet.com> to the Complainant.
Date: August 18, 2003