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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