WIPO decision hits Lonely Planet's transfer plans

In Lonely Planet Publications Pty Ltd v Tyler, a World Intellectual Property Organization (WIPO) panellist has refused to order the transfer of the domain name 'LonelyPlanetExchange.com' to the complainant, despite finding that the domain name (i) is confusingly similar to its LONELY PLANET mark, and (ii) had been initially registered in bad faith.

Lonely Planet Publications Pty Ltd (LPP) is the owner of the well-known trademark LONELY PLANET in respect of a range of travel related publications and services. Its trademark registrations cover Australia, France, the United Kingdom and the United States, and date back to 1990. It also owns domain names comprising the words 'Lonely Planet' and those words plus a descriptive element such as 'LonelyPlanetImages' and 'LonelyPlanetTelevision'.

An individual named Mike Tyler registered 'LonelyPlanetExchange.com' in May 2001. In December of that year LPP wrote to Tyler alleging trademark infringement and demanding cancellation or transfer of the domain name. Tyler replied in late April 2002, alleging that he carried on a legitimate activity in the sale of secondhand books. He offered to publish a disclaimer and a link to the official LPP site. On May 13 2003 LPP accepted Tyler's proposal, but only on condition that:

• the disclaimer was placed on every page of the website;
  
  
• Tyler did not register any other domain names containing the words 'Lonely Planet'; and
  
  
• LPP reserved the right to take action to recover the domain name if the nature or operation of the website was materially changed or contained offensive or obscene matter.

LPP later discovered that Tyler had removed the disclaimer from his web pages and significantly expanded the website to include a variety of travel-related goods and services. Exchanges of correspondence occurred over the ensuing months in which various proposals were put forward by Tyler, including a suggestion that LPP might wish to buy the domain name. LPP filed a complaint under the Uniform Domain Name Dispute Resolution Policy with WIPO requesting the transfer of the domain name.

WIPO panellist Warwick Smith had no difficulty in finding that the domain name is confusingly similar to LPP's trademarks but decided that there was no evidence to suggest that, at the date of the complaint, Tyler had no rights or legitimate interests in the domain name. In his view, LPP had failed to establish that the licence to use the domain name it had granted to Tyler by letter on May 13 2003 had been revoked. He took the view that the matter involved complex issues that were unsuitable for resolution in an administrative proceeding and were best left to be resolved in the courts.

Having found that LPP had failed on the issue of legitimate right or interest, Smith found it unnecessary to consider the question of bad faith use and registration. However, there are strong indications in the decision that he would have found bad faith had it been necessary to do so:

"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 has helped to produce the very complications which have rendered the dispute unsuitable for resolution in an administrative proceeding such as this."

Desmond J Ryan, Davies Collison Cave Solicitors, Melbourne