WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lonely Planet Publications Pty Ltd v. David Pumpa
Case No. D2008-0956
1. The Parties
The Complainant is Lonely Planet Publications Pty Ltd, Victoria, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is David Pumpa, Australia.
2. The Domain Name and Registrar
The disputed domain name <lonelyplanethostel.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2008. On June 24, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 24, 2008, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2008. The Respondent sent two informal communications to the Center on July 3 and July 15, 2008. The Complainant submitted an unsolicited Supplemental Filing on July 10, 2008.
The Center appointed William P. Knight as the sole panelist in this matter on July 30, 2008. 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 well known publisher of travel books and provides travel information and other services from its websites (including “www.lonelyplanet.com”), a travelers' online bulletin board service (the “Thorn Tree”) downloadable guides and mobile phone guides, television documentaries and television series (“www.lonelyplanet.tv”), and an online photographic stock image library service (“www.lonelyplanetimages.com”). Begun in Australia in 1973 by its founders, Maureen and Anthony Wheeler, the business has grown into an international business with offices in Australia, the United States of America, and the United Kingdom of Great Britain and Northern Ireland, and hundreds of publications in many languages resulting in sales of millions of books a year. The Complainant owns a number of registrations of the LONELY PLANET trademark in Australia, Europe, Asia, the United States of America, and elsewhere, the first of which dates back to 1990.
The disputed domain name was registered in the name of the Respondent on May 4, 2006. It is presently used as a site providing links to many other websites regarding interior design and other matters, including information concerning the Complainant.
5. Parties' Contentions
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant asserts trademark rights in its own name not only by virtue of its registered trademarks and its considerable, international trading reputation in its own name already referred to but also by virtue of the very large number of domain names which it maintains for its international operations which include the word “lonelyplanet,” including:
<lonelyplanet.at>; <lonelyplanet.au.com>; <lonelyplanet.biz>; <lonelyplanetbroadband.com>; <lonelyplanet.ch>; <lonelyplanet.co.cr>; <lonelyplanet.co.il>; <lonelyplanet.co.kr>; <lonely-planet.com>; <lonelyplanet.com>; <lonelyplanet.com.au>; <lonelyplanet.com.mx>; <lonelyplanet.com.np>; <lonelyplanet.com.ve>; <lonelyplanet.co.nz>; <lonely-planet.co.uk>; <lonelyplanet.co.uk>; <lonely-planet.co.za>; <lonelyplanet.co.za>; <lonelyplanet.de>; <lonelyplanet.es>; <lonelyplanet.eu.com>; <lonelyplanet.fr>; <lonelyplanetimages.at>; <lonelyplanetimages.au.com>; <lonelyplanetimages.biz>; <lonelyplanetimages.ch>; <lonelyplanetimages.co.il>; <lonelyplanetimages.com>; <lonelyplanetimages.com.ar>; <lonelyplanetimages.com.au>; <lonelyplanetimages.com.mx>; <lonelyplanetimages.com.ru>; <lonelyplanetimages.co.nz>; <lonelyplanetimages.co.uk>; <lonelyplanetimages.eo.za>; <lonelyplanetimages.de>; <lonelyplanetimages.info>; <lonelyplanetimages.net>; <lonelyplanetimages.us>; <lonelyplanetvietnam.com>; <lonely-planet.info>; <lonelyplanet.info>; <lonelyplanet.jp>; <lonely-planet.net>; <lonelyplanet.nl>; <lonelyplanet.no>; <lonelyplanetonline.com>; <lonely-planet.org>; <lonelyplanet.ph>; <lonelyplanet.ru>; <lonelyplanettelevision.biz>; <lonelyplanettelevision.com>; <lonelyplanettelevision.info>; <lonelyplanettelevision.us>; <lonelyplanet.tv>; <lonelyplanettv.com>; <lonelyplanet.us>; <vietnamlonelyplanet.com>; <wwwlonelyplanet.com>
The principal website among these is “www.lonelyplanet.com” which not only offers the Complainant's travel books and travel information but also, since October 2002, various travel services such as travel bookings, tour, hotel and hostel bookings, car hire, hosting personal travel websites and diaries, health and travel information, as well as travel insurance, outdoor gear, and phone card information and services.
In the circumstances, the Complainant asserts that the disputed domain name is confusingly similar to the Complainant's trademarks in that the addition of the non-distinctive word “hostel” to such a prominent and famous mark as LONELY PLANET does not sufficiently distance the disputed domain name from the Complainant's trademark in order to avoid confusion. It is submitted that the addition of the word “hostel” to Lonely Planet's highly distinctive mark is not capable in any way of signifying to consumers that the Respondent is not associated with Lonely Planet.
The Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant states that it is clear that the Respondent's name is different from the disputed domain name and states that there is no evidence of any trading connection between the Respondent and the disputed domain name. The Complainant further argues from the nature of Respondent's current use of the website at the disputed domain name that it is a standard linking page containing sponsored links, from which it is supposed that the Respondent is deriving commercial benefit and, accordingly, the website cannot be said to be legitimate by virtue of some “noncommercial” use.
The domain name was registered and is being used in bad faith.
The Complainant states that the use being made of the disputed domain name by the Respondent amounts to an intentional attempt to attract, for commercial gain, Internet users to the Respondent's website at the disputed domain name by creating a likelihood of confusion with the Complainant's name, falsely suggesting some connection with the Complainant. The Complainant further notes that the disputed domain name is listed for sale with Sedo.
The Respondent's emails, whilst not directly admitting any of the matters asserted by the Complainant in its Complaint, state that the disputed domain name was registered along with a number of others obtained from a list of names containing the word “hostel” from a list of dropped domain names. The Respondent stated that he had offered to transfer the disputed domain name to the Complainant some time ago and had no objection to the transfer of the domain name to the Complainant.
6. Procedural Issues
There are two procedural matters which should be disposed of as a preliminary matter. The first is the form of the Respondent's replies to the Complaint, once he was advised of it and the second concerns the unsolicited Supplemental Filing of the Complainant.
The Respondent, within the period of time permitted for a Response under the Rules, sent two emails to the Center, copied to the Registrar and the Complainant's attorneys. Whilst these did not strictly comply with the form and content requirements of the Rules, paragraph 5(b), they contained nothing of substance other than the matters referred to above. In the circumstances, having regard to the discretion of the Panel under the Rules, paragraphs 10(a) and 10(b), to conduct the proceeding in such manner as it sees fit, subject to the requirements that the parties are treated with equality and that each party is given a fair opportunity to present its case, the Panel is prepared to accept the Respondent's emails as his Response.
The Complainant filed an unsolicited Supplemental Filing. There is no provision in the Policy, the Rules or the Supplemental Rules which requires or authorizes such a Supplemental Filing. Of course, in exceptional circumstances, such Supplemental Filings have been considered when called for to give fairness to the parties. In this case, there is clearly no need to consider the Complainant's Supplemental Filing.
7. Discussion and Findings
Since the Respondent has stated that he has no objection to the transfer of the disputed domain name and, indeed, that he only acquired the domain name because of its inclusion in a list of names including the word “hostel” that had become available, the proper course for this Panel is not to consider further the assertions of the Complainant in the Complaint but to order the transfer of the disputed domain name, on the basis that this is the most expeditious course, in compliance with Rule 10(c) of the Rules; see The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132.
For the foregoing reason, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <lonelyplanethostel.com>, be transferred to the Complainant.
William P. Knight
Dated: August 4, 2008