WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lonely Planet Publications Pty Ltd v. Mike Tyler
Case No. D2004-0670
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 Mike (Michael) Tyler, Lonely Planet Exchange.com, Wolverhampton, England, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <lonelyplanetexchange.com> (“the domain name”) is registered with Network Solutions, LLC (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2004. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On August 27, 2004, the Registrar 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 contacts. 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 proceeding commenced on September 1, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2004. The Response was filed with the Center on September 21, 2004.
The Center appointed Warwick Smith as the sole panelist in this matter on September 30, 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 Complainant
The Complainant is an international publisher of travel-related publications. It had its origins in the early 1970s, when its founders completed an overland journey from London to Asia and Australia, and published a book describing their adventures. Further publications followed, and by August 2004 there were over 500 titles published under LONELY PLANET trademarks. The Complainant has offices in Australia, the United States of America, the United Kingdom, and France, and it employs 425 employees internationally. It also contracts freelance authors and photographers who carry out research and contribute to the Complainant’s publications.
The Complainant says that it distributes into 118 countries, including all major world markets. It says that it has sold over 54 million LONELY PLANET books, and that each year it sells over 5.5 million Lonely Planet books in English alone.
The Complainant’s publications include travel guides, city guides, “Best Of” guides, shoestring travel guides, and overland route guides. It also publishes maps and guides covering various activities, including cycling, watching wildlife, diving and snorkeling, and general reference books on such travel-related topics as travel with children, health travel, and phrase books in different languages.
The Complainant now provides a wider range of goods and services marketed under LONELY PLANET marks, including online travel information via the Complainant’s websites (including the website at “www.lonelyplanet.com”), and a travelers’ online bulletin board which has over 190,000 registered users. The Complainant also markets mobile phone guides, television documentaries and television series, and an online photographic stock image library service.
The Complainant’s Trademarks
(i) Australia
The Complainant owns 13 registered trademarks in Australia, which are comprised of or contain the words “Lonely Planet”. These registered marks cover goods and service in international classes 9, 16, 35, 36, 38, 39, 41 and 42. A number of these LONELY PLANET marks consist of the word mark LONELY PLANET, without any device. Australian registered marks 746522, 788272, 788273, 812167, 819709, 819710, and 948651 are all in that category. To take one example, the word mark LONELY PLANET (registration No. 7465222) was registered in international classes 9, 16, 39, and 42 to the Complainant, with effect from October 17, 1997. The class 39 registration was for “travel agency services in class 39; transport services; travel information provided on-line from databases or from the internet”.
A number of the Complainant’s other “Lonely Planet” marks registered in Australia, consist of the two words “Lonely Planet” superimposed over an incomplete circle. The words “Lonely Planet” are printed in a lower case stylized script.
One of these “incomplete circle” device marks has been registered in international class 9 for “audiotapes; compact discs; videos; television films; cinematic graphic films”, with effect from October 17, 1997.
Some of the Complainant’s marks registered in Australia consist of the words “Lonely Planet” followed by another word. For example, the mark LONELY PLANET CAFÉ was registered as a word mark with effect from January 31, 1996, for restaurant services, including the providing of food and drink, in international class 42. The Complainant has also registered LONELY PLANET IMAGES in classes 16 and 35, and LONELY PLANET TELEVISION in classes 9, 38, and 41.
(ii) The United Kingdom and the European Union
In the United Kingdom, the Complainant effect from January 14, 2000. The Complainant registered the word mark LONELY PLANET in international class 9, withalso has the LONELY PLANET incomplete circle device mark registered in the United Kingdom in class 16. That application was registered with effect from March 1990.
There are six European Community registered marks which consist of (or contain) the words “Lonely Planet”. Most of these European Community marks were registered with effect from dates prior to the date of registration of the domain name in this proceeding.
(iii) Other Countries
The Complainant has also produced evidence of registrations and/or applications to register “Lonely Planet” marks, in a number of other countries.
The Complainant’s Domain Names
The Complainant is the holder of numerous domain names containing the words “Lonely Planet”, in numerous countries. These domain names include <lonelyplanet.com>, <lonelyplanet.com.au>, and several registrations of longer expressions such as <lonelyplanetimages.com>, and <lonelyplanettelevision.com>.
The Complainant’s Internet Activities
The Complainant’s books and related merchandise can be purchased at <lonelyplanet.com> and various related websites. The books and related merchandise are also available through numerous other on-line retailers.
The Complainant launched a travel service web page in October 2002. The travel services page offers airline, railway, tour, and hotel bookings, the hosting of personal travel websites and diaries, health and travel information, and travel insurance and phone card information services.
Between January 2003 and June 2004, the Complainant says that there were over 2.3 million visits to its travel services web page, with the average number of visitors during that period over 140,000 per month. The Complainant’s main website at <lonelyplanet.com>, attracts an average of 2 million visitors per month.
The Respondent and the Domain Name
The domain name was registered on May 10, 2001. While the Complainant understood that the initial registration was for three years, a document produced by the Respondent shows that the renewal date was May 10, 2003, and that the Respondent renewed his registration at or about that time for a further period of two years.
In late 2001/early 2002, when the Complainant first became aware of the website at the domain name, the domain name resolved to a website (“the Respondent’s website”) which functioned as a platform for the exchange of used or second-hand traveler’s guides. The Complainant has produced print-outs from the Respondent’s website downloaded on January 24, 2002, April 18, 2002, and May 13, 2002.
The January 2002 download from the Respondent’s website prominently featured what appears to be an exact reproduction of the Complainant’s incomplete circle device mark. The page was headed “Buy and Sell your Lonely Planet Travel Guidebook – Information”. The word “exchange” was also prominently featured beside the reproduction of the Complainant’s device mark.
The January 2002 download from the Respondent’s website indicated that the website was established in August 2001, with the aim of offering an on-line platform for anyone who had new, used or unwanted traveler’s guides which they wished to exchange. When a browser found a book of interest, the browser could click on the word “Seller” for more details. No cash was to be exchanged over the Internet – pressing a “buy” button expressed interest to buy to the seller, and thereafter the Respondent appears to have left it to the parties to negotiate between themselves.
The page downloaded from the Respondent’s website in April 2002, did not contain any reproduction of the Complainant’s device mark. Indeed, the word “Lonely” had been removed from the name of the site and replaced with the letter “L”, in dark lettering on an angled white box. A list of book titles was included, and the list included numerous publications of other publishers’ travel guides. The list showed the seller’s name, and the price sought by the seller for the particular title.
The April 2002 download from the Respondent’s website also included a reference to “Bargain holidays”.
The pages from the Respondent’s website downloaded in May 2002, contained comments from individual travelers on various hostels and other forms of accommodation around the world, under the headings “Best” and “Worst”. The May 2002 home page again introduced the site as “L PLANET Exchange”, again with the letter “L” in dark lettering superimposed on an angled white box. The reference to “Bargain Holidays” also appeared on the May 2002 download from the Respondent’s website.
Communications between the Parties Prior to Commencement of this Proceeding
The Complainant contacted the Respondent by email in December 2001. The email alleged infringement of the Complainant’s trademarks, and also that the Respondent’s use of the expression “Lonely Planet” in the domain name would mislead web users. The Complainant asked the Respondent to stop using the domain name, and either de-register it or transfer it to the Complainant.
There was no reply, and reminders were sent to the Respondent in January and April 2002. A formal letter from the Complainant’s general counsel was emailed to the Respondent on April 22, 2002. This letter alleged bad faith on the part of the Respondent, asserting that, as at April 22, 2002, the Respondent’s website was still entitled “Lonely Planet Exchange” in the html source, and that the meta tags used by the Respondent referred to the words “Lonely Planet” a total of six times (compared with references to the competing publications “Fordors” (sic) and “Rough Guides”, once each).
The Complainant’s April 22 letter again asked the Respondent to de-register the domain name and to remove the words “Lonely Planet” from the title of the Respondent’s site in the html source. The letter asked the Respondent to contact each search engine provider with which the Respondent’s website was registered, and arrange to change the listings to a new title for the website. The Complainant offered to reimburse the Respondent’s costs on the original registration of the domain name.
The Respondent replied on April 22, 2002, expressing surprise and disappointment at the stance taken by the Complainant. The Respondent referred to his activities as “a legitimate activity, ie the sale of second-hand books” … which “should be seen as complementary to your activities and success as a publisher rather than a detraction”. The Respondent went on to offer the following, as a “show of goodwill and to offer consumers a clear indication of the site’s ownership”:
(i) A banner advertisement linking to the official Lonely Planet site.
(ii) A textual disclaimer to the effect – “this site is in no way affiliated, associated or connected in any way with the official Lonely Planet publishers by way of content or views reflected herein. If you wish to visit the official Lonely Planet site please click here”.
The Respondent described himself as an “individual operator and ex-traveler merely offering a service to others like myself”.
The Complainant’s general counsel responded by letter dated May 13, 2002, offering a deal. The Complainant was willing to allow the Respondent’s website to continue under the domain name, but only on a number of listed conditions. Those conditions included the following:
1. The Respondent was to place a disclaimer on every page of the site, in a prominent position on the first screen of each page, as follows: “This site is not in any way connected with, or endorsed by Lonely Planet Publications, the publishers of Lonely Planet guide books. Click here to visit the official Lonely Planet site.” The hyperlink was to be to the Complainant’s website at <lonelyplanet.com>.
2. The Respondent was not to register any other domain names containing a Lonely Planet trademark, and was not to use the Lonely Planet logo or other trademarks on any site.
3. The Complainant reserved the right to take action to recover the domain name if the nature or operation of the Respondent’s website changed materially, or if the site contained offensive or obscene content.
The Complainant received no reply to its letter of May 13, and it re-sent the letter on June 11, 2002, with a request for a response. The Respondent replied on June 12, 2002, advising that he was “planning some changes and probably moving away from the lonelyplanetexchange address altogether”. The Respondent said that he had been slightly busy in a new job, and hadn’t made changes to the site as yet, but would put a disclaimer on each page.
On July 20, 2002, the Respondent emailed the Complainant advising that he had put up disclaimers on the Respondent’s website.
A page from the Respondent’s website downloaded on August 14, 2002, contained the following prominent statement: “This site is not connected in any way with LONELY PLANET publications.” The web page went on to advise that LONELY PLANET publications has its own website, and provided a hyperlink to one of the Complainant’s websites. The “disclaimer” continued: “Alternatively, for a cheaper Lonely Planet or other guidebook, continue shopping here.” The Complainant says (and the Respondent does not dispute) that the disclaimer was not placed on every page of the Respondent’s website.
There followed a lengthy period when there was apparently no contact between the parties. However, the Complainant says that the Respondent subsequently removed the disclaimer from his website and significantly increased and expanded the activity on his website to include a variety of travel-related goods and services. Documents produced by the Respondent show he began providing information on the Respondent’s website relating to budget flights, from at least July or early August of 2003. The Complainant objected to these activities in an email dated September 18, 2003. This email noted that the Complainant had checked the Respondent’s website from time to time, noting that a disclaimer had been added to the book section but, “most recently”, the disclaimer had been removed from the Respondent’s website and the internet activities had been significantly ramped up (by adding travel-related goods and services). The email went on to note that the website used the words “Lonely Planet” in a prominent and potentially confusing manner, with the font used for the words “Lonely Planet Exchange” being confusingly similar to the font used in the Complainant’s LONELY PLANET incomplete circle device mark.
The Complainant’s September 2003 email alleged that internet users might be deceived into believing that the goods and services offered via the Respondent’s website were affiliated with or otherwise endorsed by the Complainant. The Complainant threatened to invoke the provisions of the Policy.
The Respondent replied by email dated September 24, 2003. In his reply, the Respondent acknowledged that his website had undergone a number of changes, commercial, technical, and structural. As he put it: “This combined with a shift in the main focus of the site in general has lead to the breakdown of the linkage as agreed with Mr. Sidhu [the Complainant’s general counsel]. For this I take responsibility and apologize.”
The Respondent went on to say that he accepted some of the points made within the Complainant’s correspondence, and appreciated that the Complainant might wish to take the domain name from his ownership. The Respondent noted that, “as a profit making site, Lonely Planet Exchange represents my main and only source of income.” Mr. Tyler went on to propose some greater level of “participation” with Lonely Planet, suggesting that the parties’ primary markets were significantly different, but that there could be benefit from “strengthened relationships”. He proposed that, on the basis of a mutually beneficial agreement, satisfactory to both parties, he would transfer the domain name to the Complainant.
The Complainant replied on October 6, 2003, rejecting the suggestion that the parties were targeting different primary markets. The Complainant’s position was that the traveling public was the target market for both parties. The Complainant repeated its concern that the ordinary internet user could easily assume that the goods and services offered by the Respondent’s website were somehow endorsed by or affiliated with the Complainant. The Complainant repeated the offer to arrange the transfer of the domain name to it, at no cost to the Respondent. The Complainant also offered to reimburse the Respondent for his costs of registering the domain name.
The Respondent replied on October 16, 2003. He asserted that his website is angled at the budget flight market, targeting individuals who would previously have taken package holidays but were looking to research and plan their own holidays independently. Mr. Tyler said that, “as a by-product of positive experience the site also promotes your brand.” The Respondent’s October 16 email concluded by saying that, if the Complainant felt that the domain name might be worth something to it, “as much or more than the wage it currently pays me, then I suggest you make an offer representing its current value.”
The Complainant wrote on November 21, 2003, rejecting the Respondent’s proposal. The Complainant repeated its concerns, including the concern that the Respondent’s website used a font which was deceptively similar to the Lonely Planet trademark, and that the average internet user would automatically assume that the Respondent’s website was a Lonely Planet website, or would make a connection to the well-known Lonely Planet name. The Complainant asked for details of the Respondent’s costs of registration, but advised that, apart from that, the Complainant was not prepared to make any additional payment to the Respondent. The Complainant asked the Respondent to advise if he believed there was an argument otherwise.
Apparently in the absence of any further communication from the Respondent, the Complainant’s trademark attorneys sent a formal letter of demand to the Respondent on April 6, 2004. The letter recited details of the Complainant’s trademarks and its extensive reputation, and warned the Respondent that if he renewed the domain name (due for renewal on May 10, 2004) the renewal might be used as evidence that he had registered and was using the domain name in bad faith in accordance with the Policy. The letter sought the Respondent’s undertaking not to renew the domain name, and to cease and desist from operating a website through the domain name. A more general undertaking was sought relating to the use of the Complainant’s LONELY PLANET trademarks.
The Respondent replied very briefly on April 7, 2004, simply referring the Complainant’s attorneys to the agreement made between the Respondent and the Complainant’s Mr. Sidhu. On April 8, 2004, the Complainant’s attorneys replied to the Respondent, asserting that the Respondent had failed to comply with those settlement terms. The letter referred to the Respondent’s failure to include a disclaimer on every page of his website, and noted that, as at the date of the letter, the website contained no disclaimers. The letter also recorded the Complainant’s view that the operation of the Respondent’s website had changed materially since May 2002 when the Respondent’s services related only to the exchange of travel books. The Complainant’s attorneys noted that the Respondent’s website now offered a wide variety of travel-related services, which conflicted directly with the Complainant’s own on-line activities.
The Respondent replied by email dated April 13, 2004, saying that he did not accept that a partial non-conformance of two conditions of the May 13, 2002, agreement constituted a breakdown of that agreement. The Respondent said that he would not immediately confer rights in the domain name on the Complainant, nor let those rights expire. The Respondent indicated that he was willing “to comply with the agreement or negotiate as per changes made.” On April 20, 2004, the Complainant’s attorneys replied briefly, asserting that the Respondent had not addressed the issues raised in their letters of April 6 and April 8, and repeating the contention that the Respondent had breached the conditions of the Complainant’s offer of May 13, 2002. The Attorneys indicated that the Complainant was not willing to enter into any further negotiations.
The Complainant has produced further extracts from the Respondent’s website, being pages downloaded on April 6, 2004, May 16, 2004, June 28, 2004, and July 7, 2004. The April 6, 2004, download includes a web page entitled “Lonely Planet Exchange”, and at the top left hand side of this page the words “Lonely” and “Planet” appear on either side of a dark letter “x” on a white circle background. Immediately below this, is the word “exchange”, in less prominent print. The words “Lonely” and “Planet” are printed in a font which appears to be identical to that adopted by the Complainant in its incomplete circle device mark. This device appears to have been used on each of the pages from the Respondent’s website which were downloaded on April 6, 2004, and none of these pages appears to contain any disclaimer of any affiliation with or endorsement by the Complainant.
The services offered through the Respondent’s website as at April 2004, included the original travel guide exchange service, and also listings of UK budget flight airlines and attractive deals offered by long-haul flight providers. The site also included an accommodation guide and booking service, boasting some 34,000 hostels, apartments and pensions in over 240 countries. The site included a number of links to other travel-related sites, including sites featuring backpacker resources, clothing and equipment, and flight information.
The pages downloaded from the Respondent’s website on May 16, 2004, feature details of budget air fares to various destinations, on various airlines. The words “lonelyplanetexchange.com” appear prominently at the top left hand side of what appears to be the home page, but this time in a font which does not appear to have been copied from the Complainant’s incomplete circle device mark. The word “exchange” appears far more prominently in this version. Also, in the smaller print shortly below that heading, appear the words: “lonelyplanetexchange.com operates separately from and has no commercial, or formal involvement with “LONELY PLANET” Publications.
Visit the LONELY PLANET website.”
It appears that the words “visit the LONELY PLANET website” provide a hyperlink to one of the Complainant’s websites.
The pages from the Respondent’s website downloaded on June 28, 2004, and July 7, 2004, appear to have similar content, focusing primarily on budget flights to various destinations. Some changes have been made to the heading at the top left hand corner of the home page, with a globe device introduced beside the words “lonelyplanetexchange.com”. The disclaimer is still there shortly below that heading, in the same terms as appeared on the web pages downloaded on May 16, 2004.
5. Parties’ Contentions
A. Complainant
1. The domain name is confusingly similar to the Complainant’s extensive portfolio of LONELY PLANET trademarks. The addition of the non-distinctive word “exchange” to this highly distinctive mark does not sufficiently distance the domain name from the Complainant’s trademarks in order to avoid confusion.
2. The word “exchange” is descriptive of the service initially and still offered by the Respondent, and is not capable of signifying to consumers that the Respondent is not associated with the Complainant. (Citing WIPO Case No. D2002-0103; Dr Ing. h.c.F Porsche AG v “Porsche AG” and WIPO Case No. D2001-0031; GA Modefine S.A. v Namezero.Com.)
3. The addition of the gTLD“.com”, does not affect the assessment that the Respondent’s domain name is confusingly similar.
4. The Respondent has no rights or legitimate interests in respect of the domain name, for the following reasons:
(i) The Respondent has no connection with the Complainant. He has not been licensed or authorized by the Complainant to use the domain name.
(ii) The domain name is not similar or in any way connected with the name under which the Respondent holds the domain name registration.
(iii) The Respondent has never been commonly known by the domain name, and the Complainant is not aware of any trademarks in which the Respondent may have rights that are identical or similar to the domain name.
(iv) The Respondent is not making a legitimate non-commercial or fair use of the domain name. The print-outs from the Respondent’s website indicate that he is conducting a business related to the offering of various travel-related services through the website at the domain name.
(v) The Respondent is intentionally engaging in conduct which is misleading to consumers, by diverting internet traffic away from the Complainant’s travel services web page which is accessible through the website at <lonelyplanet.com>. The Respondent is attempting to generate business by luring the Complainant’s customers to the Respondent’s website by exploiting confusion amongst consumers as to the association or affiliation of the Respondent’s services with those of the Complainant.
(vi) The email correspondence with the Respondent evidences the Respondent’s willingness to abandon or release the domain name to the Complainant for an amount in excess of the Respondent’s out-of-pocket expenses in registering the domain name.
5. The domain name was registered, and is being used, by the Respondent, in bad faith, for the following reasons:
(i) The date for determining registration in bad faith, is either the date of initial registration or the date of renewal, the latter being effectively a re-registration of a domain name. Any other interpretation of the Policy would enable registrants with bad faith intentions to circumvent the effects of the Policy by registering a domain name in apparently good faith circumstances, only to later revert to a bad faith usage of the domain name. Such circumvention of the Policy should not be allowed.
(ii) The only difference between registering and renewing a .com domain name, is the absence of the requirement to enter the Registrant details and contact information on renewal. The fee for registering a domain name and the fee for its renewal are identical. The only difference lies with the ease with which subsequent registrations (renewals) are obtained. In this case, the relevant date for determining bad faith registration is the date of the renewal of the domain name on May 10, 2004. The correspondence demonstrates that the Respondent was well aware of the Complainant’s concerns before that time. By the time the Respondent renewed the domain name, he was already using the domain name in bad faith. It follows that the renewal of the domain name cannot have been made in good faith.
(iii) On a number of occasions prior to his renewal of the domain name, the Respondent had expressed his willingness to release the domain name to the Complainant for a price in excess of his out-of-pocket expenses in registering the domain name. That indicates that the Respondent had no legitimate rights in relation to the domain name, and it may also be considered in determining that the domain name was renewed in bad faith contrary to paragraph 4(b)(i) of the Policy.
(iv) The Respondent renewed the domain name primarily for the purpose of disrupting the business of the Complainant. The domain name resolves to an active website offering travel-related services which are identical to or overlap with the Complainant’s travel-related services. The Respondent renewed the domain name with the aim of diverting Internet traffic intended for the Complainant, to the Respondent’s travel services website. The Complainant refers to WIPO Case No. D2000-0137 Expedia, Inc. v European Travel Network, in which it was held that registration of a domain name with the purpose of diverting potential customers of the Complainant to a respondent’s website, leads to the disruption of the business of the competitor.
(v) If the Panel is not satisfied that the relevant date for determining bad faith registration is the date of renewal, the initial registration of the domain name by the Respondent was effected in bad faith. The initial websites of the Respondent show that the intention was for consumers to be able to exchange any travel guides, and at no point in time was the platform limited to Lonely Planet guide books only. The placing of online advertisements on the Respondent’s websites also suggests that the Respondent was deriving an income from his website. Further, the Respondent’s decision to include the Complainant’s well-known trademark in his domain name, in spite of offering a general platform for the exchange of any travel guides, demonstrates that this choice was not made in good faith. At the date of initial registration of the domain name, the Respondent intended to use the Complainant’s reputable trademark to attract customers to his website, for commercial gain. The Respondent therefore registered the domain name in bad faith.
(vi) Bad faith registration may be inferred from the registration of a well-known mark (citing WIPO Case No. D2000-0037 Zwack Unicum Rt. v Erica J. Duna.) Similarly here, the Respondent’s registration of a domain name containing the Complainant’s well-known trademark as its only distinctive feature, indicates bad faith registration.
(vii) The Respondent reproduced the Complainant’s well-known logo mark, without authorization. The Respondent acknowledged that trademark at the bottom of the initial versions of his website. Those facts indicate that the Respondent intended to attract consumers to his website by creating confusion about the source, sponsorship, or approval or endorsement of the Respondent’s website.
(viii) The Respondent has been using the domain name in bad faith. Pursuant to paragraph 4(b)(iv) of the Policy, the Respondent has intentionally attempted to attract, for commercial gain, internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of his website. The Respondent’s intention to divert Internet traffic in bad faith is evident from the date of registration of the domain name through to the filing of the Complaint. The Respondent used the Complainant’s trademark on his initial website, without authority. Later, the Respondent used a font for the words “Lonely Planet” on his website that was substantially identical to that of the Complainant’s well-known logo mark. The words “Lonely Planet” were more prominent when compared with the word “exchange”. In the May and July 2004 print-outs from the Respondent’s website, the words “exchange” and “lonelyplanet” are separately highlighted.
(ix) These more recent versions of the Respondent’s website contain a disclaimer that may be easily overlooked due to its lack of prominence, and the disclaimers are not capable of avoiding a likelihood of confusion among consumers as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
(x) It is not necessary for the Respondent to use the words “Lonely Planet” in relation to his website or in the domain name, in order for him to operate his website. The Respondent’s use of the LONELY PLANET mark in the domain name and on the Respondent’s website, is intended to “ride off” the Complainant’s reputation, in order to solicit custom to the travel-related services offered through the website, which are in direct competition to the Complainant’s services.
(xi) By using the highly distinctive LONELY PLANET trademark in his domain name and website, the Respondent is intentionally attracting for commercial gain internet users to his website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
B. Respondent
1. The domain name was registered in May 2001, after the Respondent had spent a period of months traveling and had collected a number of guide books which he wanted to sell. The “Lonely Planet Exchange” was set up to sell his guide books and help other travelers get money for their guide books when they had finished with them and were short of cash.
2. The Respondent’s website uses no spuriously excessive words, tags or titles containing the Complainant’s trademark.
3. In this case, there was an agreement between the Complainant and Respondent, under which the Respondent is entitled to operate the Respondent’s website at the domain name. Following the agreement (set out in the letter of May 13, 2002), the domain name was used to offer bona fide goods and services by way of budget flights, before notice of any dispute, (no dispute was notified until the Complainant sent its letter of September 18, 2003).
4. The Respondent has acted in good faith. The parties’ behavior indicates that both recognized that the Respondent had registered the domain name initially in good faith and that he recognized the Complainant’s rights and concerns. Apart from the disclaimer statements, all other mentions of the Complainant on the Respondent’s website are designed to facilitate traffic towards the Complainant’s website.
5. The Respondent is conducting legitimate activities at the Respondent’s website, and the Complainant has said that it has no objection to legitimate activity being conducted at the site.
6. It does not matter that the Respondent does not have any relevant registered trademark or trade name.
7. The Respondent’s website is operated as a business interest – it is not a “not for profit” operation.
8. Internet traffic is being won by the Respondent because of the merits of his service for budget flights. He has not been riding off the reputation of the Complainant, and internet traffic is not being sought to be diverted away from the Complainant.
9. The domain name has never been offered for sale by the Respondent, nor have any sums ever been mentioned. Sale has only been mentioned in the context of the parties’ attempts to resolve the dispute.
10. The domain name was renewed before any expression of dissatisfaction with the agreement had been received. The domain name was not renewed in bad faith.
11. If the Complainant had wanted additional consideration, any additional terms should have been specified and included in the May 2002 contract.
12. The Respondent notified the completion of the posting of disclaimers on the Respondent’s website, on July 22, 2002. The Complainant’s failure to respond to that notification, and the normal conduct of business thereafter, amounted to affirmation by the Complainant of satisfactory completion by the Respondent of his part of the bargain.
13. The use of the word “identical” by the Complainant in paragraph 58 of the Complaint, is deliberately misleading. The services offered by the parties are not identical, and the Respondent’s operations conducted through the Respondent’s website are not in direct competition with the Complainant’s product of “travel services”. The Complainant does not offer budget flights as part of its travel services, through any part of its main business activities, additional services or affiliate relationships. On the other hand, budget flights represent the main source of traffic for the Respondent.
14. The intention of the Respondent with his website design is not such as to confuse or derive traffic from the Complainant’s brand. Against the possibility that that may nevertheless have occurred, disclaimers are positioned across the Respondent’s website.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.
Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The Complainant has proved that it is the registered proprietor of the word mark LONELY PLANET in both Australia and the United Kingdom. The only differences between the Complainant’s registered word mark and the domain name, are the additions of the word “exchange” and the generic “.com” suffix.
In the Panel’s view, the addition of the word “exchange” does nothing to remove the likelihood of confusion which was inevitable when the Respondent included the Complainant’s trademark as part of the domain name. The word “exchange” is generic, or descriptive, and the distinctive part of the domain name is the “lonelyplanet” part. The Panel notes that the Complainant and its services and goods are extremely well-known in the world of travel, particularly in countries such as the United Kingdom and Australia. Particularly in those circumstances, the Panel agrees with the learned Panelist in the Porsche AG case (WIPO Case No. D2002-0103) that the addition of the word “exchange” is not capable of signifying to consumers that the domain name is not associated with the Complainant.
The “.com” suffix is generic, and does not affect the question of confusing similarity.
For the foregoing reasons, the Panel has no difficulty in concluding that the domain name is confusingly similar to the Complainant’s LONELY PLANET trademarks and service marks.
The Position Before May 13, 2002
The domain name was registered on May 10, 2001.
The Panel has little difficulty concluding that the Respondent did not act bona fide in registering the domain name, and indeed did so in bad faith. The Panel’s reasons for that view are as follows:
1. The Respondent was well aware of the Complainant and its very well-known marks, at the time he registered the domain name (indeed, one of the reasons he established his website at the domain name was to dispose of some of the Complainant’s travel guides which he had acquired).
2. The Respondent must have been well aware that the domain name would attract internet browsers looking for websites associated with the Complainant. The word “exchange” did nothing to dispel that impression.
3. A page from the Respondent’s website, downloaded on January 24, 2002, prominently reproduces the Complainant’s incomplete circle device mark, in two places. The Complainant had not at that time authorized the Respondent to use its trademarks.
4. The web pages from the Respondent’s website downloaded in January 2002, April 2002, and May 2002, did not contain any disclaimers distinguishing the Respondent’s website from websites associated with the Complainant. Any “fair use” right which the Respondent might have claimed as a provider of a forum for the sale and purchase of genuine Lonely Planet products, is defeated by the Respondent’s use of the domain name in conjunction with the Complainant’s incomplete circle device mark, and this failure to include any disclaimer (see for example, WIPO Case No. D2001-0410, General Electric Co. v Japan Inc. The normal limitations on the “fair use” defence are discussed at page 4 of that decision).
5. The Respondent’s website provided a forum for the trading of the travel guides and related publications of all publishers in that field. The Respondent has not explained why the trademark of one particular publisher (the Complainant) was chosen as the distinctive part of the domain name. In WIPO Case No. D2001-0903 Oki Data Americas Inc. v ASD Inc., the learned panelist listed a number of requirements for an offering of goods or services by a re-seller to be ”bona fide” within the meaning of Paragraph 4(c)(i) of the Policy. One was that the respondent must use the site only to sell [the complainant’s] trademarked goods, otherwise it could be using the trademark to bait Internet users and then switch them to other goods (citing WIPO Case No. D2000-1774; Nikon, Inc. v Technilab).
6. The Respondent elected to ignore the first “cease and desist” communication from the Complainant in December 2001. The Respondent also ignored a follow-up communication from the Complainant dated January 24, 2002.
7. Presumably in response to the Complainant’s challenge to the Respondent, the Respondent altered the Respondent’s website for some period (which included at least parts of April and May of 2002), to refer to the Respondent’s business as “L. Planet Exchange”.
8. In its letter dated April 22, 2002, the Complainant asserted that the Respondent was then using six “Lonely Planet” metatags, compared with only one each for Fodors and Rough Guides. The Respondent has not denied that assertion.
For those reasons, the Panel has no doubt that the Respondent registered the domain name for the purpose of attracting to the Respondent’s website internet browsers looking for sites associated with the Complainant. An internet visitor arriving at the Respondent’s website would have been further confused by the prominent use of the Complainant’s incomplete circle device marks. The notation at the foot of the home page “all trademarks acknowledged” would have had little or no effect on that overall impression.
Up until May 13, 2002, when the Complainant proposed terms for ongoing use of the domain name by the Respondent, the following conclusions can be drawn:
1. The Complainant had not authorized the use of its marks.
2. The Complainant gave the Respondent notice of a dispute, on December 7, 2001. (The Complainant’s letter of that date clearly asserted its trademark rights, and required the Respondent to de-register the domain name or transfer it to the Complainant.) While it appears that the Respondent may have been using the domain name in connection with the offering of services (the on-line travel guides exchange platform) before that date, the Panel’s view is that that offering of services was not bona fide (for the reasons numbered 1 to 8 above). The use of the domain name itself must be bona fide – it is not just the (connected) offering of goods or services which has to be bona fide under paragraph 4(c)(i) of the Policy. See for example WIPO Cases D2001-1373: Cattlecare Limited v Wairua Holdings Pty Limited, applied in WIPO Case No. D2003-1023: Harvey World Travel Limited v GamCo. Therefore, the Respondent had not acquired any right or legitimate interest in the domain name under paragraph 4(c)(i) of the Policy, by May 13, 2002.
3. Nor could the Respondent bring himself within paragraph 4(c)(ii) of the Policy as at May 13, 2002. When the Respondent registered the domain name, there is no evidence that either he or any business operated by him was commonly known by the domain name. If the Respondent’s use of the domain name in the period between May 10, 2001, and May 13, 2002, was not bona fide, it could not have been the intention of the Policy that his bad faith use could be used to found a “commonly known by the domain name” defence.
4. The Respondent’s use of the domain name up until May 13, 2002, cannot, for the reasons outlined above, be regarded as legitimate or fair. The Panel has formed the view that the Respondent expressly intended to misleadingly divert consumers to the Respondent’s website for commercial gain. The Respondent could not, therefore, bring himself within paragraph 4(c)(iii) of the Policy as at May 13, 2002.
5. There is no evidence of any other basis on which the Respondent could have claimed some right or legitimate interest in the domain name up until May 13, 2002.
The Complainant’s letter of May 13, 2002
This is the letter which offered to allow the Respondent to continue using the domain name, as a pointer to the Respondent’s website, on certain conditions. The main conditions were that the Respondent was to include a prescribed form of disclaimer on each page of the Respondent’s website, the Respondent was to include a hyperlink to one of the Complainant’s websites, the Respondent was not to register any other domain names containing a Lonely Planet trademark, and the Respondent was not to use the Lonely Planet logo or other trademarks on any site. A further condition was that the Complainant reserved the right to take action to recover the domain name if the nature or operation of the Respondent’s website changed materially.
It appears that those terms were accepted by the Respondent. His letters of June 12, 2002, and July 20, 2002, indicated that he was proceeding to put the disclaimers on the Respondent’s website. A disclaimer was included on a page from the Respondent’s website downloaded by the Complainant on August 14, 2002. Although the disclaimer was not in the words required by the Complainant, and it was apparently not posted on every page of the Respondent’s website, the Complainant appears to have accepted it as sufficient compliance with the terms it stipulated on May 13, 2002. In any event, the Complainant took no issue with the terms of the Respondent’s disclaimer, or the number of times it appeared on the Respondent’s website.
It is apparent, then, that from a period commencing no later than August 14, 2002, the Respondent was permitted by the Complainant to use the domain name, and the Respondent therefore did from that point enjoy a right or legitimate interest in the domain name. That right or legitimate interest was conditional –if the nature or operation of the Respondent’s website changed materially, the Complainant was entitled to take action to recover the domain name. If other conditions (including in particular the requirement relating to disclaimers) were breached, the right or legitimate interest might also have been lost.
What happened after August 2002?
It appears that the Respondent continued to use the Respondent’s website for a period of over a year without complaint from the Complainant. It was not until September 18, 2003, that the Complainant wrote objecting to the Respondent’s use of the domain name. By that time, it appears that the Respondent had removed the disclaimers from the Respondent’s website altogether. By September 2003, the business conducted through the Respondent’s website appeared to be primarily focused on providing information on budget flights for travelers, and advice relating to accommodation in various parts of the world. The travel guide exchange platform was still there.
Exactly when those changes occurred is not clear, but it seems that it was probably not before July 2003, when the Respondent approached various “budget” airlines seeking details of their service, with a view to providing that information to visitors to the Respondent’s website. Budget flight advertisements appear to have been run on the Respondent’s website from at least as early as August 1, 2003, (see Annexure 4 to the Response).
On September 24, 2003, the Respondent, in replying to the Complainant, referred to the changes to the Respondent’s website, and continued:
“This combined with a shift in the main focus of the site in general has lead (sic) to the breakdown of the linkage as agreed with Mr. Sidhu. For this I take responsibility and apologize”.
The Respondent went on to note that he “appreciated” that the Complainant “might wish to take the domain name from his ownership.” The Respondent claimed that the parties’ primary markets were significantly different, and proposed a “strengthened relationship” with the Complainant, including a “mutually beneficial agreement” under which he would transfer the domain name to the Complainant. The Respondent invited an offer for the purchase of the domain name, in his email of October 16, 2003. That proposal was rejected by the Complainant on November 21, 2003, and the Complainant has since resisted any suggestion that it pay the Respondent anything more than the Respondent’s costs of registration and any cost associated with a transfer of the domain name.
In its November 21, 2003, letter, the Complainant asked the Respondent if there was any argument that the Complainant should take any other stance. The Respondent did not reply.
From April 2004 the matter appears to have been in the hands of the Complainant’s attorneys. They sought certain undertakings from the Respondent in their April 6, 2004, letter. The Respondent simply referred to the agreement set out in the letter of May 13, 2002, and later, on April 13, 2004, denied that a “partial non-conformance of two conditions of the May 13, 2002, agreement constituted a breakdown of that agreement”. The Respondent indicated that he was willing “to comply with the agreement or negotiate as per changes made”.
Respondent’s Submission
Against that background, the Respondent submits that, when the Complaint was filed in this proceeding, he had acquired a right or legitimate interest in the domain name. He submits that the right or legitimate interest was obtained under paragraph 4(c)(i) of the Policy – the domain name was used to offer bona fide goods and services (budget flights) before notice of any dispute. The Respondent says in effect that, following the agreement recorded in the Complainant’s letter of May 13, 2002, the earlier correspondence from the Complainant does not qualify as a “notice to you of the dispute” for the purposes of paragraph 4(c)(i) of the Policy. In the Respondent’s submission, the first notice to him of “the dispute” was the Complainant’s letter dated September 18, 2003. By that time, the Respondent was running a substantial business through the Respondent’s website, by providing advertising space for budget airlines. The Respondent produced an August 2003 trading statement, showing significant budget flight advertising revenue in that month. In the Respondent’s submission, that trading statement evidences a bona fide offering of services in connection with the domain name, before the Respondent had received any notice of the present dispute. It was a bona fide offering of services because the Complainant had expressly consented to the Respondent using the domain name, in the letter of May 13, 2002.
That may be so, but it is not sufficient on its own to establish a right or legitimate interest in the domain name. In the Panel’s view, the critical question to be decided under paragraph 4(a)(ii) of the Policy, is whether the Respondent’s right or legitimate interest in the domain name continued, and subsisted at the time the Complainant lodged its Complaint. The use of the (present tense) words “has” and “have” in Paragraphs 4(a)(i) and (ii), and “is being used” in Paragraph 4(a)(iii), suggest that proof of the relevant matters listed in those subparagraphs is to be provided as at the time a complainant files its complaint.
Paragraph 4(c)(i) of the Policy does not address the point in time at which a complainant must prove that a respondent has no right or legitimate interest – it merely defines certain circumstances which, if proved, and while those circumstances continue to exist, will be regarded as sufficient to constitute a right or legitimate interest. If the right or legitimate interest has been lost by the time the Complaint is filed, the Complainant will have satisfied the requirements of Paragraph 4(a)(ii) of the Policy.
That view is consistent with a number of previous WIPO panel decisions, where panelists have found that the termination of an agency or distributorship agreement (pursuant to which the respondent agents or distributors had registered the at-issue domain names), left the agents/distributors without any “rights or legitimate interests” within the meaning of Paragraph 4(a)(ii) of the Policy. See for example WIPO Case No. D2003-1029: Jerome Stevens Pharmaceuticals Inc v Watson Pharmaceuticals, where the learned Panelist said: “… Thus, if one had a legitimate use at one point, yet no longer is legitimately using the domain name, the Policy doesn’t prohibit a finding of no legitimate use pursuant to paragraph 4(a)(ii).” This Panelist respectfully agrees with that view. See also WIPO cases D2004-0471 Omnigraphics Capital (Pty) Ltd v Fleximount, Guy Langevin, and D2001-0373, UVA Solar Gmbtl & Co K.G. v Mads Kragh, which are to similar effect.
The critical point, then, is whether or not the Respondent’s May 2002 license to use the domain name as a pointer to the Respondent’s website, had been revoked by the time the Complainant commenced this proceeding. The issue is difficult, and in the end, the Panel has come to the view that it is not an issue which is suitable for determination in a “fast-track” administrative proceeding such as this. The Panel’s reasons for coming to that view are as follows:
1. There are two bases on which the Complainant contends that the arrangement set out in the letter dated May 13, 2002, has come to an end. First, the Complainant submits that the Respondent failed to comply with the obligation to include a disclaimer in the agreed terms, on each page of the Respondent’s website. Certainly it is the case that, by the time the Complainant raised the issue in September 2003, there was no disclaimer appearing on the Respondent’s website. However, it is apparent from the material produced by the Complainant that it did not insist on strict performance of the terms set out in the May 13, 2002 letter. The download from the Respondent’s website dated August 14, 2002, which the Complainant produced, makes it clear that the Respondent had not posted a disclaimer in the terms set out in the Complainant’s May 13, 2002 letter. Further, it appears from the Complainant’s letter dated September 18, 2003, that at some point in the course of the preceding year the Complainant had become aware that the Respondent had not included the disclaimer on each page.
The Respondent does acknowledge fault in the performance of his obligations in regard to the posting of a disclaimer – there is no doubt that there was a breach of that particular condition in the May 13, 2002, letter. What is not clear is when that breach first occurred, and when the Complainant first became aware of it. Nor is it obvious to the Panel that the omission of the disclaimer, possibly for only a relatively short period of time, would have been sufficient to entitle the Complainant to cancel the agreement recorded in the May 13, 2002, letter and revoke the Respondent’s license to use the domain name. Particularly in circumstances where the Respondent submits that there has been “affirmation” by conduct on the part of the Complainant, the Panel has come to the view that the issue of whether the Complainant has validly terminated the May 13, 2002, arrangement, is one best left for resolution by the appropriate Court.
2. The other basis relied upon by the Complainant as a basis for terminating the agreement set out in the May 2002 letter, is an alleged “material change” in the “nature or operation” of the Respondent’s website (condition 5 of the May 2002 letter). Again, it may be that there was a material change in the nature of the website, by the time the Complainant wrote the September 18, 2003, letter. The Respondent himself acknowledged a change in the “main focus” of the Respondent’s website, and a “breakdown of the linkage” agreed with the Complainant’s Mr. Sidhu (Respondent’s letter dated September 24, 2003). Later, however, the Respondent was only prepared to acknowledge a “partial non-conformance” with conditions 1 and 5 of the May 13, 2002, letter (Respondent’s email dated April 13, 2004).
A number of factors lead the Panel to conclude that this also is a matter best left for determination by the Court. Has there been a material change in the nature of the Respondent’s website? (There would not appear to have been any change in the “operation” of the Respondent’s website). Notwithstanding the Respondent’s acknowledgement of a change in the “main focus” of the Respondent’s website, there are several matters which leave the Panel with the view that it does not have enough evidence to answer the question affirmatively. First, pages from the Respondent’s web page dated in April and May of 2002, contain material which appears to go further than the mere provision of an online platform for the sale and purchase of secondhand travel guides. The reference to “Bargain Holidays” appears on both the April 2002 and May 2002 web pages. Beside it, there is a small picture of an aeroplane, indicating that “Bargain Holidays” probably included “budget flights”. Of course the “budget flights” focus of the Respondent’s website is precisely what the Complainant now challenges as constituting a “material change” in the nature of the Respondent’s website. It appears that it was already there, at least to some extent, before the Complainant entered into the arrangement set out in the May 13, 2002 letter.
It may be that the “Bargain Holidays” component of the Respondent’s website was simply not of any concern to the Complainant back in April and May of 2002. The Panel notes from the Complaint that it was only in October of that year that the Complainant launched a “travel services” page at one of its own websites; until then, it appears that the parties would not have been competing with each other in the provision of online travel services. While that may not be directly relevant to the question of whether there has been a “material change” in the “nature” of the Respondent’s website, it underlines the importance of determining just what the parties meant when they referred to the “nature” of the Respondent’s website, and what changes might or might not have been regarded by the parties as “material” back in May of 2002.
There is also the matter of the travelers’ comments posted on the Respondent’s website in April and May of 2002, under the “Best” and “Worst” headings. All that the Panel can say on the information presently available to it, is that the inclusion of those comments appears to go beyond the mere provision of a service for the sale and purchase of used travel guides.
In those circumstances there is just not enough evidence for the Panel to safely conclude that the Respondent’s rights in respect of the domain name have been terminated.
For the foregoing reasons, the Panel concludes that the Complainant has not proved its claim under Paragraph 4(a)(ii) of the Policy that the Respondent has no right or legitimate interest in respect of the domain name. The Panel wishes to make it clear in reaching that conclusion, that it is not to be taken as endorsing the Respondent’s actions in any way. The Panel has no doubt that the Respondent registered the domain name in bad faith, and it is perhaps unfortunate for the Complainant that its efforts to resolve the matter amicably with the Respondent have helped to produce the very complications which have rendered the dispute unsuitable for resolution in an administrative proceeding such as this. However the Respondent has at least acknowledged in this proceeding that he was bound by the terms set out in the May 13, 2002, letter. That letter conferred on the Complainant a clear right to take action to recover the domain name if there was any material change in the nature of the Respondent’s website, and it remains open to the Complainant to seek to enforce that right in an appropriate Court if it wishes to do so.
For the sake of completeness, the Panel notes that the Complainant’s case cannot be assisted by the argument that a renewal of the domain name in May 2004, effectively constituted a new registration of the domain name at that time. First, it appears from the Respondent’s Annexure 11 that the domain name was renewed a year earlier, in May 2003. The Panel has no evidence to suggest that at that time the Respondent was not operating legitimately under the terms of the May 13, 2002, letter. Secondly, a number of WIPO Panel decisions have held that the renewal of a domain name is not equivalent to a new registration: see for example WIPO Cases Nos D2000-1528; Weatherall Green & Smith v Evermedia.com, D2001-0748; Spirit Airlines, Inc. v Spirit Airlines Pty Limited, D2002-0896; Verint Systems Inc. v CRYSTALSTEVENS, and D2004-0338; PAA Laboratories GmbH v Printing Arts America.
The Panel’s finding that the Complainant has not proved the matters required to be established under Paragraph 4(a)(ii) of the Policy, means that the Complaint has to be dismissed. It is therefore unnecessary to consider Paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Warwick Smith
Sole Panelist
Date: October 27, 2004