WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lonely Planet Publications Pty Ltd v. Vladimir Federov

Case No. D2003-0916

 

1. The Parties

The Complainant is Lonely Planet Publications Pty Ltd, Victoria, Australia, represented by Griffith Hack Patent and Trademark Attorneys, Australia.

The Respondent is Vladimir Federov, of Russian Federation.

 

2. The Domain Names and Registrar

The disputed domain names are: <lonleyplanet.com>, <loneleyplanet.com>, and <lonelypalnet.com>

The Registrar with which each of the disputed domain names is registered is Tucows, Inc, ("Tucows") Toronto, Ontario, Canada.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 18, 2003. On November 18, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue.

On November 18, 2003, Tucows 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 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 November 20, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 12, 2003. As of the date of this decision, no Response has been filed by the Respondent.

The Center appointed David A R Williams QC as the sole panelist in this matter on January 9, 2004. 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 Complaint asserted, and provided evidence in support of the following facts. The Panel finds these facts established.

Complainantís Trademarks

The Complainant owns 12 registered trademarks and one pending trademark comprising or containing the words "Lonely Planet" in Australia. These are the trademarks currently at issue. The trademarks cover goods and services in classes 9, 16, 35, 36, 38, 39, 41 and 42. This includes travel agency services in class 39 transport services and travel information provided on-line from databases or from the Internet. Attached as Annexure F to the Complaint are details from the database of the Australian Trademarks Office listing the details of the Complainantís trademarks in Australia. The earliest lodgment date the Panel noted was for Trademark 530321, being March 7, 1990. The most recent lodgment was in July 2003.

The Complainant has also registered or has filed applications for a number of Lonely Planet trademarks in a significant number of overseas countries, including Argentina, Brazil, Canada, European Union, Czech Republic, France, India, Israel, Japan, Mexico, New Zealand, Peoples Republic of China, Poland, Republic of South Africa, Republic of South Korea, Russian Federation, Spain, Taiwan, Thailand, UK, USA and Vietnam. Attached as Annexure G to the Complaint is a schedule of all trademarks owned by the Complainant internationally.

Complainantís Activities

The Complainant stated it is an internationally successful independent travel information company with offices in Australia, USA, UK and France. The Complainant provided ample evidence in support of this assertion in the form of articles from well-known publications, along with advertising and promotional material in the same. A typical example is from The Bulletin, January 25, 2000, at 51, " Ö the Melbourne based Lonely Planet is one of the worldís leading travel information providers, with annual revenues of more than $45 million Ö".

Lonely Planet began its operations in the early 1970s after the founders, Maureen and Anthony Wheeler, completed an overland journey from London to Asia and Australia. Following these travels, the founders published their first budget travel guide in 1973, "Across Asia on the Cheap". The Lonely Planet name and logo was first used in connection with this publication. The Complainant now has over 600 titles in 154 languages published under the LONELY PLANET trademark. The Complainant publishes and sells titles covering travel in approximately 118 countries. Publications include destination guide books, destination maps, activity guide books, general reference books, travel literature and travel editorials. In addition, the Complainantís business activities have expanded since the 1990s to include co-branded travel guides with alliance partners in foreign languages, television documentaries, television series, palm pilot and mobile phone guides, as well as on-line travel information. The Complainant regularly promotes its products and services worldwide. It avers its advertising expenditure has been in excess of US $1 million per annum over the last four years. The Panel agrees the LONELY PLANET trademarks have an extensive international reputation.

The Complainant has an active presence on the Internet. The "www.lonelyplanet.com" website was launched in 1994. Lonely Planet holds up to, but not limited to, 60 domain names containing the words "Lonely Planet". These domain names are listed at para [29] of the Complaint. Lonely Planet books and related merchandise can be purchased via the Lonely Planet websites. The "www.lonelyplanet.com" website features a "world guide" which provides summary information on travel in many countries.

In October 2002, the Complainant launched a travel services page at "www.lonelyplanet.com/travel_services/", offering travel services such as airfare and hostel bookings, travel insurance and phone card information and services. The Complainant avers these services "were provided following repeated requests from the public over many years to provide recommendations and assistance with travel related services. In 2001 the Complainant conducted a survey via its "www.lonelyplanet.com" website to measure the strength of public interest. The results of that survey were conclusive, namely that travelers want Lonely Planetís assistance in making decisions on everything from travel insurance to booking tickets." The Complainant has asserted that the travel services webpage has an estimated average of 220,000 visitors per month. The estimate of revenue generated is AUD 77,021.00. Further evidence was not provided in support of exact profits. However the Panel is satisfied that this is generally a significant revenue generating website, directly as a result of the goodwill generated by the Complainantís trademarks.

Respondentís Activities

The domain names <lonleyplanet.com> (1) and <loneleyplanet.com> (2) were registered by the Respondent on August 5, 1997. The domain name <lonelypalnet.com> (3) was registered on November 30, 1999.

The Complainant asserts that domain names (1) and (2) revert to the website "www.superinternetdeals.com/farebeater.html". This website promotes travel services, cheap airfares, car hire and travel services. Domain name (3) was not active at the time of filing the Complaint.

However the URL resolved to "www.superinternetdeals.com/farebeater.html%20".

The Complainant contacted the Respondent by email in relation to domain names (1) and (2) on July 11, 2003, and July 21, 2003. It alleged the Respondentís use of the domain names could be an offence under the agreement entered into between the Respondent and Tucows. The Complainant sought amicable resolution to this dispute through the transfer of the domain names to Lonely Planet at no cost to the Respondent. The Respondent has not replied to this correspondence. The Complainant became aware of domain name (3) following the above correspondence. It has not contacted the Respondent directly regarding this domain name.

 

5. Partiesí Contentions

A. Complainant

The Complainant submits that each of the three elements specified in paragraph 4(a) of the Policy are applicable to each of the disputed domain names.

In relation to element (i) of paragraph 4(a), the Complainant submits that each of the domain names is confusingly similar to its registered Lonely Planet trademarks. The Complainant contends that each of the domain names represents a mere minor misspelling of "Lonely Planet", and that the domain names are aurally and visually similar to the LONELY PLANET trademark.

In relation to element (ii) of paragraph 4(a), the Complainant submits that the Respondent does not have any right or legitimate interest in the disputed domain names. The Complainant contends the Respondent has no license or authority from the Complainant to use the disputed domain names. It submits the domain names are not the name of the Respondent, nor are they similar or in any way connected with the name under which the Respondent holds the domain name registrations, being Vladimir Federov. In addition, the Complainant submits the Respondent has not at any time been known by the disputed domain names, nor was the Complainant aware of any trademarks in which the Respondent may have rights, that are identical or similar or the disputed domain names.

The Complainant submits that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain names. The Complainant refers to the "superinternetdeals.com/farebeater" website to which domain names (1) and (2) revert and from this surmises that the Respondent is conducting a business related to the offering of various travel related services. Thus, the Complainant contends that the Respondent is intentionally engaging in conduct which is misleading to consumers by diverting Internet traffic away from the Complainantís travel services, and that the Respondent is attempting to generate business by luring customers to its own (competing) website by exploiting common misspellings of the Complainantís well known domain name.

In relation to domain name (3), which is inactive, the Complainant submits that non-use of a domain name is strong and persuasive evidence of lack of rights or legitimate interest in a domain name.

In relation to element (iii) of paragraph 4(a), the Complainant submits that the Respondent registered and uses each of the domain names in bad faith. The Complainant contends that pursuant to paragraph 4(b)(iii) of the Policy, the Respondent has registered the domain names primarily for the purposes of disrupting the business of the Complainant. The Complainant submits the registration of the domain names was undertaken with the primary aim of diverting Internet traffic intended for the Complainant to the Respondentís travel services website by use of common misspellings of the Complainantís trademarks.

The Complainant submits that pursuant to paragraph 4(b)(iv) of the Policy, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondentís website, by creating a likelihood of confusion with the Complainantís trademarks as to the source, sponsorship, affiliation or endorsement of the Respondentís website. This is on the basis that the Respondent offers travel services which are identical to those offered by the Complainant on its "lonelyplant.com/travel_services" website.

The Complainant asserts it is unlikely that the Respondent was unaware of itís trademarks in light of the Complainantís worldwide reputation. The Complainant submits that the Respondentís choice of domain names, being obvious misspellings of the Complainantís trademarks, combined with the Respondentís website offering travel services, is in fact evidence that the Respondent does have knowledge of the Complainantís trademarks and business. The Complainant submits that the Respondentís knowledge of the Complainantís trademarks, coupled with the Respondentís commercial non-legitimate use of the domain names in dispute to exploit consumerís misspellings of the Complainants URL amounts to bad faith registration and use.

In reference to domain name (3), which is currently inactive, the Complainant submits that the URL is mistakenly inactive and that the Respondent intended Internet traffic to be diverted to itís website. Thus this domain name has been registered and is used in bad faith for the same considerations as noted above. In the alternative, it is submitted that the passive holding of a domain name can constitute bad faith, in particular where the domain name is a mere misspelling of an internationally famous trademark.

In addition, the Complainant contends that the failure of the Respondent to respond to the Complainantís correspondence is further evidence of bad faith, as the Respondent would be expected to deny any allegations if the registration and use was in fact in good faith.

B. Respondent

The Respondent did not reply to the Complainantís contentions. The Respondent has not replied to any correspondence from the Center. The Panel notes Rule 5(e), which states, "If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint."

 

6. Discussion and Findings

To succeed in its request for the transfer of the disputed domain names, the Complainant must establish, that with respect to each domain name in question, that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

These matters are dealt with consecutively.

A. Identical or Confusingly Similar

The Complainant has alleged the disputed domain names are confusingly similar to itís LONELY PLANET trademarks. The relevant parts of the disputed domain names are "lonleyplanet", "loneleyplanet" and "lonleypalnet". The difference between the domain names and the Complainantís trademarks is merely the misplacement of one letter and compounding of the words. It is not possible to have a "space" in a URL, thus the compounding is of no consequence. These are simply obvious misspellings of the Complainantís LONELY PLANET trademarks. The question is whether this alteration amounts to a confusing similarity between the two. The learned panel in Reuters Limited v. Global Net 2000, Inc., WIPO Case No, D2000-0441 stated that in seeking the answer it is helpful to consider the context in which the domain names are being used, as well as the aural and visual similarity between the domain names and the Complainantís trademark.

The context of use in relation to domain names (1) and (2) is to redirect Internet traffic to the Respondentís website offering travel services and the like. The Panel finds these services to be very similar to those services offered by the Complainant on its travel services website, accessible through "www.lonelyplanet.com". The Panel finds such a similarity to be confusing. In the case of domain name (3), the website is inactive. Thus the context of use is not determinative in assessing whether the name is confusingly similar.

An aural comparison is helpful. The likely pronunciation of "lonleyplanet" is similar, although not identical, to that of "lonely planet". The likely pronunciation of "loneleyplanet" is in fact identical to that of "lonely planet", and thus plainly confusing. The likely pronunciation of "lonelypalnet" is similar to the Complainantís trademark, although not identical.

A visual comparison of the words is determinative. The LONELY PLANET trademarks are derived from the song "Space Captain" written by Joe Cocker and Leon Russell. The actual words used in the song are "lovely planet", however one of the founders of the Complainant misconceived the words as "Lonely Planet" and used them in connection with the Lonely Planet travel publications. Thus the trademark is not descriptive of the Complainantís business. It is instead a distinctive trademark. A domain name which differs by one letter from a trademark has a greater tendency to be confusingly similar where that trademark is highly distinctive. (See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441).

All the disputed domain names are visually extremely similar to the Complainantís trademarks. As noted above they are mere misspellings. On this basis alone the domain names are confusingly similar to the Complainantís trademark.

Further, the Panel does not doubt the Respondent is engaging in "typosquatting", an undertaking that attempts to benefit from the typographical errors of the Complainants consumers by registering domain names extremely similar to the Complainantís trademark. This practice has been considered and unequivocally condemned in a number of cases. (See: Playboy Enterprises International Inc v. SAND WebNames Ė For Sale, WIPO Case No. D2001-0094; Eddie Bauer Inc v. John Zuccarini aka Cupcake Party, WIPO Case No. D2001-0224). The failure of the Respondent to refute the allegation can only lead to the conclusion that the Respondent intended to register the domain names for the very reason that the are confusingly similar to the Respondentís trademarks.

For all the foregoing reasons the Panel finds that all the domain names are confusingly similar.

B. Rights or Legitimate Interests

The Respondent has filed no response to the Complaint, and thus has made no assertion of interest in any of the domain names as provided for in paragraph 4(c) of the Policy. The failure to file a Response or to otherwise assert any such right or interest leads to a presumption the Respondent is unable to establish any such right or interest. (See: Cornell Trading Inc v. Web-Interactive.com Inc., WIPO Case No. D2000-0887; Mondich and American Wine Biscuits v. Brown, WIPO Case No. D2000-0004). As stated by the Panel in Cornell Trading, the burden of proof shifts where the Complainant presents a prima facie showing, as has occurred in the instant case.

In any event, no evidence that is before the Panel suggests that the Respondent has any rights or legitimate interest in any of the domain names. The Respondent is not known by any of the disputed domain names. There is no reference to any of the disputed domain names on the Respondentís website. The Complainant has not granted any license or authority to use the Complainantís trademark.

The Panel finds that in relation to domain names (1) and (2) the Respondentís conduct in using common misspellings of the Complainantís trademark to redirect Internet traffic to his own website, offering competing travel services, is done with the intention of misleading consumers for the purpose of commercial gain. There is no other inference that can be drawn from the use of the disputed domain names, given the lack of any connection between the Respondent and the disputed domain names. This is not a legitimate non-commercial or fair use of those domain names pursuant to paragraph 4(c)(iii) of the Policy.

The Panel finds in relation to domain name (3) that the inactive status of the domain name is of no consequence. It is possible, although not unassailable, to conclude that the failure of the domain name to redirect Internet traffic to the Respondentís website is a mere failure on the Respondentís behalf to arrange such a redirection. The evidence that the URL of domain name (3) resolves to "www.superinternetdeals.com/farebeater.html%20" supports this conclusion. Thus the Respondent would be intending to mislead consumers for the purpose of commercial gain. However it is not necessary for the Panel to make such a finding. The Respondentís failure to assert any legitimate right or interest in that trademark in the face of the Complainantís evidence leads the Panel to find that the Respondent has no such right or interest.

Thus, the Panel finds that the Respondent has no rights or legitimate interests in any of the disputed domain names.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, if found by the Panel to be present, the following activities undertaken by the Respondent shall be evidence of the registration and use of a domain name in bad faith:

(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 websites or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your websites or location or of a product or service on your websites or location."

Given the scope of the Complainantís international reputation the Respondent will have been aware of the Complainantís trademarks. The lack of any legitimate rights and interests in the domain names leads the Panel to conclude that the registration must have been made for the purpose of diverting Internet traffic from the Complainantís website to that of the Respondent, thus disrupting the business of the Complainant and capitalizing on the goodwill of the Complainantís trademarks. The Respondent has not asserted any good faith reason for the registration of the domain names.

The use of domain names (1) and (2) is clearly the intentional use of a domain name creating a confusion with the Complainantís mark in the mind of the consumer. The redirection of Internet traffic to the Respondentís travel business website based on the misspelling of the Complainantís trademark is for the Respondentís commercial gain. This is a bad faith use of the domain names. The Respondent has provided no evidence to the contrary.

The use of domain name (3) is somewhat problematic, given that the website itself is inactive. As noted above, it is probable, but not decisive, that the inactive nature of the website was a failure on the Respondentís part to set it up correctly. However it is clear that whether or not a domain name is active has no bearing on the question whether it is being used in bad faith pursuant to paragraph 4(b) of the Policy (See: Recordati SPA v. Domain Name Clearing Company, (WIPO Case No. D2000-0194). The relevant issue is not whether the Respondent is undertaking a positive action or use of the domain name in bad faith, but whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith, viz. inaction is within the concept of acting in bad faith (See: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

In light of the following factors, including; the Complainantís strong international reputation, the failure of the Respondent to provide any evidence of actual or contemplated good faith use of the domain name, the likelihood of intended bad faith use as evidenced by domain name (3) defaulting to the Respondentís URL, the Panel finds that domain name (3) has also been registered and used in bad faith.

In sum, the Panel finds that all the domain names have been registered and used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <lonleyplanet.com>, <loneleyplanet.com> and <lonelypalnet.com> be transferred to the Complainant.

 


 

David Williams QC
Sole Panelist

Date: January 23, 2004