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Lonely Planet Publications Pty Ltd v. cicvn.com; Hoang Anh Minh

WIPO Case No. D2003-0355

Outcome
Transfer
Domain names
lonelyplanetvietnam.com, vietnamlonelyplanet.com
Complainant
Lonely Planet Publications Pty Ltd (Australia)
Complainant's counsel
Davies Collison Cave of Australia
Respondent
cicvn.com; Hoang Anh Minh (Viet Nam)
Panelist
Anand
Registrar
eNom
Decided
25 Aug 2003
Response
The respondent did not reply
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2003/d2003-0355.html

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 Respondent’s 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 1970’s. 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,

People’s

Republic

of China,

Poland,

Republic

of South

Africa,

Russian

Federation,

Spain, Taiwan,

Province

of China,

Thailand,

United Kingdom

and United

States of

America.

5. Parties’

Contentions

A. Complainant

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

Complainant’s

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 Complainant’s

trademark.

The word

element

does not

detract

from the

dominant

impression

created

by the Complainant’s

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 Complainant’s

LONELY PLANET

trademark

as part

of the domain

names or

in any other

way. The

domain names

are not

the name

of the Respondents’

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 Complainant’s

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 Respondents’

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 Respondents’

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 Respondents’

website

at "www.lonelyplanetvietname.com"

has the

"look

and feel"

including

similar

font and

colour scheme

as the Complainant’s

website.

In addition

the website

also replicates

the Complainant’s

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.

B. Respondent

The Respondent

did not

reply to

the Complainant’s

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.

7. Decision

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.

Pravin

Anand

Sole Panelist

Date:

August

18, 2003

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