The Complainants are Lonely Planet Global, Inc. of Wilson, Wyoming, United States of America ("United States" or "U.S.") and Lonely Planet Global Limited of Dublin, Ireland, represented by Cooley LLP, United States.
The Respondent is beibaole beibaole, bei bao le of Beijing, China.
The disputed domain name <lonelyplanet.cc> is registered with 1API GmbH (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 13, 2016. On May 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2016, 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.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 21, 2016.
The Center appointed Jonathan Agmon as the sole panelist in this matter on June 28, 2016. 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.
The Complainant is Lonely Planet Global, Inc., a U.S. based company, together with its affiliate, Lonely Planet Global Limited, a private company, organized under the laws of Ireland (collectively: the "Complainants").
The Lonely Planet brand was founded by Maureen and Anthony Wheeler upon completing an overland journey from London to Asia and Australia in 1972. By 2007, Lonely Planet had grown to be the world's largest travel guide publisher, with 500 titles a year. In November 2007, the Complainants' 90 millionth book was printed.
The Complainants are the owners of multiple trademark registrations for the mark LONELY PLANET. For example: U.S. trademark registration no. 2989878 – LONELY PLANET, with the registration date of August 30, 2005; U.S. trademark registration no. 1680312 – LONELY PLANET, with the registration date of March 24, 1992; and more.
The Complainant has established its presence on the Internet through a continuous use of the website at "www.lonelyplanet.com" since 1994.
The disputed domain name <lonelyplanet.cc> was registered on August 8, 2012. The disputed domain name resolved to a website displaying tourism information.
The Complainants argue that due to widespread and substantial international use, the LONELY PLANET marks have become famous.
The Complainants argue that the Respondent registered the disputed domain name on August 8, 2012, approximately 39 years after the Complainants adopted the LONELY PLANET marks and 18 years after the Complainants registered the domain name <lonelyplanet.com> and commenced use of it.
The Complainants argue that the disputed domain name and purported Chinese language magazine are not sponsored, approved or affiliated by or with the Complainants.
The Complainants further argue that the Respondent has copied the LONELY PLANET trademark and created counterfeit magazines that it is falsely presenting as an authorized Chinese-language offering from the Complainants. Moreover, the Respondent is using the disputed domain to confuse consumers as to the source of the magazine and website.
The Complainants further argue that the disputed domain name is confusingly similar to their LONELY PLANET mark because it appropriates their distinctive and famous LONELY PLANET mark in its entirety.
The Complainants further contend that they did not authorize or license the Respondent to use any of their trademarks in any way, and that the Respondent is not an authorized dealer, distributor or licensee of the Complainants.
The Complainants further contend that the Respondent tries to pass himself as the Complainant by prominently featuring the LONELY PLANET marks on the disputed domain name.
The Complainants further contend that the Respondent registered and is using the disputed domain name in bad faith.
The Complainants further argue that it is not possible to conceive of a plausible situation in which the Respondent was not aware of the Complainants' LONELY PLANET mark and brands at the time the disputed domain name was registered.
The Complainants further argue that the Respondent's use of the disputed domain name demonstrates the Respondent's intent to attract Internet users to the disputed domain name for commercial gain by creating a likelihood of confusion with Complainants' LONELY PLANET mark.
For all of the above reasons, the Complainants request the transfer of the disputed domain name.
The Respondent did not reply to the Complainants' contentions.
Paragraph 4(a)(i) of the Policy requires the complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainants are the owners of multiple trademark registrations for the mark LONELY PLANET. For example: United States trademark registration no. 2,989,878 – LONELY PLANET, with the registration date of August 30, 2005; United States trademark registration no. 1,680,312 – LONELY PLANET, with the registration date of March 24, 1992; and more.
Also, the Complainants' rights in the LONELY PLANET mark have been established in numerous previous UDRP decisions (see, e.g., Lonely Planet Publications Pty Ltd v. Vladimir Federov , WIPO Case No. D2003-0916 and Lonely Planet Publications Pty Ltd. v. Telecom Tech Corp., Administrator, WIPOCase No. D2008-1016 and more).
The disputed domain name integrates the Complainants' LONELY PLANET trademark in its entirety, as a dominant element.
Previous UDRP panels have decided that a country code Top-Level Domain ("ccTLD") suffix generally has no capacity to distinguish a domain name from a trademark (see, e.g., Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan, WIPO Case No. D2015-1733).
The addition of the ccTLD ".cc" to the disputed domain name does not avoid confusing similarity (see, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the ccTLD ".cc" is typically without legal significance since use of a ccTLD is technically required to operate a domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.
Consequently, the Panel finds that the Complainants have shown that the disputed domain name is confusingly similar to the trademarks in which the Complainants have rights.
Once the Complainants establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In the present case, the Complainants have demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainants have established a prima facie case in this regard, inter alia, due to the fact that the Complainants have not licensed or otherwise permitted the Respondent to use the Complainants' LONELY PLANET trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.
The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainants' prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainants have submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainants registered their trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainants have owned a registration for the LONELY PLANET trademark since at least the year 1992. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainants, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
The Complainants provided evidence to demonstrate their trademark's vast goodwill. "It is very unlikely that the Respondent would have registered the Domain Names unless he knew either the existence of the trademark SWAROVSKI or that the Domain Names at issue might be of some type of economic advantage" (see Swarovski Aktiengesellschaft v. James Johnson, WIPO Case No. D2012-0080). It is therefore unlikely that the Respondent had no knowledge of the Complainants upon registering the disputed domain name.
The Panel notes that the Complainants have established that their LONELY PLANET trademark has been recognized in prior UDRP cases as well known in connection with the Complainants' travel magazine and travel books publishing.
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or online location to which the disputed domain name resolves, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location to which the disputed domain name resolves.
The disputed domain name is confusingly similar to the Complainants' trademark, and the website operated under the disputed domain name is using the Complainants' trademark, and offers, inter alia, travel books for sale and more. Previous UDRP panels have found that "[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
The Panel finds that the disputed domain name was registered and is being used by the Respondent with knowledge of the Complainants and in bad faith with the intent to create an impression of an association with the Complainants and profit therefrom. The Respondent's actions therefore constitute bad faith (see Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that "the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith").
Based on the evidence that was presented to the Panel, including the use made in the disputed domain name of pretending to be associated with the Complainants, the late registration of the disputed domain name, the use of the Complainants' trademarks in the disputed domain name and the Respondent's failure to answer to the Complaint, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainants have met their burden under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <lonelyplanet.cc> be transferred to the Complainants.
Jonathan Agmon
Sole Panelist
Date: July 11, 2016