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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lonely Planet Publications Pty Ltd v. Mike Tyler

Case No. D2006-0596

 

1. The Parties

The Complainant is Lonely Planet Publications Pty Ltd, Footscray, Victoria, Australia, represented by Griffith Hack Patent and Trademark Attorneys, Melbourne, Victoria, Australia.

The Respondent is Mike 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> is registered with Internetters Limited.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2006. On May 15, 2006, the Center transmitted by email to Internetters Limited a request for registrar verification in connection with the domain name at issue. On May 15, 2006, Internetters Limited 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, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2006.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 29, 2006. 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

This proceeding involves a refiling by Complainant against Respondent following on to rejection of its complaint in Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670. The decision in the earlier proceeding was rendered by sole panelist Warwick Smith on October 27, 2004.

The earlier proceeding between the same parties included facts through the date of the Response, September 21, 2004. Complainant does not here allege a change in the material facts as they then existed and were examined by panelist Smith in the earlier proceeding. This Panel accepts the findings and determinations of Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670 through the date of that earlier decision.¹

In that light, the facts herein may be summarized as follows:

Complainant is the owner of rights in the trademark LONELY PLANET in Australia and the United Kingdom. The disputed domain name <lonelyplanetexchange.com>, registered by Respondent, is confusingly similar to that trademark. (The facts underlying this determination remain true as of the date this refiled proceeding was commenced.)

Through September 2004, Complainant was unable to provide sufficient evidence that Respondent lacked rights or legitimate interests in the disputed domain name.

Specifically, Respondent had engaged in activities through May 13, 2002, which would have led panelist Smith to determine that Respondent lacked rights or legitimate interests up to that date. Among other grounds, Respondent had operated a commercial Internet website which “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” (Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670 ) Respondent’s website prior to May 13, 2002, included some information concerning “Bargain Holidays”, which panelist Smith determined “probably included ‘budget flights’” (id.). Respondent had not included on its website a disclaimer of affiliation with Complainant. Any use by Respondent of the disputed domain name prior to notice of the dispute was found not bona fide.

Complainant sent a letter dated May 13, 2002 to Respondent “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.” (Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670)

Panelist Smith determined that Respondent appeared to have accepted the offer and conditions in the letter of May 13, 2002, and 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.”

From at least August 1, 2003, changes were made to Respondent’s website which included elimination of disclaimers (which had been added following Respondent’s acceptance of Complainant’s conditional offer) and a change of focus primarily aimed at providing information on “budget flights for travelers, and advice relating to accommodation in various parts of the world” (Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670).

Complainant first objected to Respondent’s revised website on September 18, 2003. Respondent apologized to Complainant for the breakdown of the linkage, “‘appreciated’ that the Complainant ‘might wish to take the domain name from his ownership’”, claimed that their primary markets were significantly different, proposed that they strengthen their relationship, and also invited an offer for purchase of the disputed domain name. Complainant rejected that proposal 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.” At latest development, Respondent “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’”. (Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670)

Panelist Smith rejected Respondent’s contention that since his use of the disputed domain name was bona fide for some period of time, at least between May 13, 2002 and September 18, 2003, this established rights or legitimate interests in the disputed domain name. Panelist Smith opined that Respondent’s rights or legitimate interests must subsist at the time the Complainant filed its complaint in the proceeding, and that Respondent might have lost any rights or legitimate interests prior to Complainant’s filing of its complaint. The panelist referred to certain decisions under the Policy in which agents or distributors were found to have lost rights on termination of an authorization (e.g., Jerome Stevens Pharmaceuticals Inc. v. Watson Pharmaceuticals, WIPO Case No. D2003-1029). He said:

“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.” Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670

Panelist Smith found that Complainant had not insisted on strict performance of the conditions in its letter of May 13, 2002. It was not clear whether certain omissions of Respondent in respect to posting of a disclaimer would have entitled Complainant to cancel its authorization. “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 whether the Complainant has validly terminated the May 13, 2002, arrangement, is one best left for resolution by the appropriate Court.” (Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670.)

Complainant in the earlier proceeding also alleged that the change in focus of Respondent’s website was a “material change” in its “nature or operation” that formed a basis for terminating the agreement. Panelist Smith said “A number of factors lead the Panel to conclude that this is also a matter best left for determination by the Court. Has there been a material change in the nature of 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.” (Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670.)

Having found that Complainant had failed to carry its burden to establish that Respondent had no rights or legitimate interest in the disputed domain name under Paragraph 4(c) of the Policy, Panelist Smith went on to say:

“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.” (Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670).

Complainant initiated this proceeding by the filing of a Complaint with the Center on May 11, 2006. The “new facts” subsequent to the decision in Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670 (decided October 27, 2004) (see relevant dates of parties’ submissions above), are:

(1) A letter from Complainant’s counsel to Respondent dated April 6, 2005. This letter states:

“We refer to the Panelist’s decision of 27 October 2004 and refer to the Panelist’s view that, in his opinion, there was insufficient evidence to decide whether your original permission to use the domain name had been terminated. We note that our client’s email to you of September 18, 2002 was a clear and unequivocal revocation of any permission to use the domain name lonelyplanetexchange.com. That revocation was reiterated in our letter to you of April 6, 2004 and in the letter from Kilbum & Strode of August 25, 2004. Copies of these documents are attached. In the event you still have any permission or right to use the domain name (which is denied), this letter serves as an express revocation and termination by our client of any such permission or right. Our client also reserves its rights to take further action against you.”

Complaint, Annex 33. By letter of March 29, 2006, Complainant’s counsel sent a further letter requesting Respondent to allow registration of the disputed domain name to lapse (id.).

(2) Printouts of Respondent’s website identified by the disputed domain name of April 6, 2004 (id., Annex 34), May 16, 2004 (id., Annex 35) and March 9, 2006 (id. Annex 36). Complainant submits these printouts as evidence that Respondent continues to use the disputed domain name in a way which is intended to confuse Internet users as to the source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website. Complainant notes that Respondent includes a disclaimer of affiliation on these more recent versions of its website, but states that they may be easily overlooked due to their lack of prominence.

The Registration Agreement in effect between Respondent and Internetters Limited subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant has reiterated its pleading in Lonely Planet Publications Pty Ltd. v. Mike Tyler, WIPO Case No. D2004-0670.

Complainant argues that by its letter of April 6, 2005, (and follow-up of March 29, 2006), it has clearly and formally terminated any permission it may have given to Respondent to use the disputed domain name. Thus, to the extent it may have been unclear to the panelist in Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670 whether permission to use the disputed domain name had terminated prior to commencement of that proceeding, it is now clear that any such permission has been terminated.

Complainant refers to I & J Fishnar Inc. v. Almond Techniek (CPR Case No. 0113) which it says “concerned a similar scenario in which the Respondent was initially permitted to use the disputed domain name and the permission was later withdrawn.”

Complainant requests the Panel to find that the disputed domain name is identical or confusingly similar to a trademark in which it has rights, that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent registered and used the disputed domain name in bad faith.

Complainant requests the Panel to direct the registrar to transfer the disputed domain name to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

This proceeding involves a refiling by Complainant against Respondent with respect to the domain name disputed in Lonely Planet Publications Pty Ltd. v. Mike Tyler, WIPO Case No. D2004-0670.

A number of panel decisions under the Policy have considered the circumstances in which complaints might be refiled, see, e.g., Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703; Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490; Maruti Udyog Ltd .v. maruti.com; WIPO Case No. D2003-0073, and; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527.

The panel in Creo Products Inc. usefully suggested distinguishing between refilings which, on the one hand, seek to re-examine acts which formed the basis of the original complaint, and refilings which, on the other hand, concern acts occurring subsequent to the initial decision. With respect to the former, the panel proposed following Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, and to permit refiling only in exceptional cases, such as might involve corruption of the panel. As to the latter, the panel in Creo Products Inc. said:

“In relation to the second type of Refiled Complaint, namely those that concern acts which have occurred subsequent to the decision on the original complaint, it seems to this Administrative Panel that a different approach is warranted. With a Refiled Complaint of this type, the concept of res judicata does not arise. Because the subsequent complaint concerns acts which occurred after the original decision, it is not an action upon which an adjudication has already taken place; the subsequent complaint is truly a new action under the Uniform Policy. It follows that, subject to one exception, the merits of a Refiled Complaint of this type should be determined in the same manner as any new complaint under the Uniform Policy. The exception is that the acts on which the Refiled Complaint is based should not be, in substance, the same as the acts on which the previous complaint was based (even if those previous acts would likely be included as part of the facts and arguments asserted in the new complaint). That is to say, the acts on which the Refiled Complaint is based need to be such as to mean that the Refiled Complaint is truly a new action under the Uniform Policy, not just an application for readjudication of the previous complaint. (When properly applied, this exception would preclude an unsuccessful complainant from lodging, in the hope that the subsequent panel will come to a different conclusion on the facts, a Refiled Complaint based on subsequent acts that are either a repetition of or substantially the same as the acts on which the previous complaint was based.)”

In light of the extensive consideration given by earlier panels to the circumstances in which it may (or may not) be appropriate to accept refiled complaints under the Policy, this Panel does not consider it necessary to revisit the legal backdrop against which the question here is to be considered. Suffice it for present purposes to say that in this case involving (1) the same complainant and (2) the same respondent (3) with respect to the identical domain name as to which a previous panel decision under the Policy has been rendered, in order for the cause of action to be considered, Complainant must be presenting facts (1) that raise the possibility of a serious defect with respect to the prior proceeding or (2) present some materially changed facts occurring subsequent to that proceeding which reasonably might alter the analysis of the Panel and thereby alter the outcome of the proceeding.

Complainant does not herein allege a serious defect in the manner in which the decision in Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670, was reached. Complainant believes that the prior decision was incorrect because it believes it had terminated any authorization it may have given to Respondent to use the disputed domain name before it initiated its complaint (in that earlier proceeding). But, Complainant is not literally appealing that decision. Instead, Complainant has taken steps to address the factual circumstance which it asserts the panel relied on in that earlier proceeding in rejecting its complaint.

Complainant dispatched a subsequent letter (and follow up) to Respondent stating in plain terms that, whatever may or may not have transpired prior to filing the earlier complaint, it was unequivocally terminating any authorization to use the disputed domain name that it may have previously given.

Complainant’s course of action and asserted grounds for refiling are predicated on an incomplete reading of the decision in Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670. The panel in the earlier proceeding did not reject the complaint because Complainant failed to send a clear communication to Respondent. The panel rejected the complaint because it was unclear whether Complainant had the right under the terms of the authorization it had given to terminate it. Complainant had not insisted on strict compliance with respect to a disclaimer, and the panel was in any case uncertain whether noncompliance with this condition would constitute a sufficient breach to justify termination. More important (because the issue of sufficiency of the breach would not arise), the panel could not determine whether the changes Respondent had made to its website constituted a material change in the nature of its website such as would justify termination as a matter of law.

Complainant has not alleged new facts that might alter the uncertain situation which led the panelist in Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670 to decide that Complainant failed to demonstrate Respondent’s lack of rights or legitimate interests in the disputed domain name. There is a disclaimer on Respondent’s website. There has not been a material change in the nature of Respondent’s website subsequent to the earlier decision. The uncertain situation is not resolved by a subsequent letter from Complainant saying that it formally and unequivocally terminates any rights Respondent may have had. The question was not (and is not) whether Complainant wanted to terminate Respondent’s rights or legitimate interests (such as they might have been), but whether it was justified to do so. The panel in Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670 said this was a matter better determined by an appropriate court.

This is the type of refiling which the panelist in Creo Products Inc. referred to as a “Complaint based on subsequent acts that are either a repetition of or substantially the same as the acts on which the previous complaint was based.” While in the circumstances of this case it is appropriate for the refiling issue to have been referred to a panel, this type of refiling does not merit adjudication as a new case.

This Panel denies Complainant’s request for a finding that Respondent has engaged in abusive domain name registration and use on grounds that this matter has previously been adjudicated between the same parties under the Policy.

This Panel, just as panelist Smith in Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670, is sympathetic to the fact that Complainant’s problems with Respondent arise almost wholly from Complainant’s initial willingness to reach an amicable result with Respondent. While this case may provide an object lesson for trademark holders facing similar circumstances in the future, the lesson does not serve to redress Complainant’s problem here. As earlier decided by panelist Smith, the issues are more appropriately addressed by the courts.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Frederick M. Abbott
Sole Panelist

Dated: July 12, 2006

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¹ This effectively constitutes the “law of the case”. In so far as it is necessary to consider the matter, the Panel will reference the continued validity of those determinations through the date of the commencement of this proceeding.