Decisión del Panel Administrativo nº D2019-0943 of Tribunal Arbitral de la OMPI, July 12, 2019 (case Hostelworld.com Limited v. Ice Cube Company Co. Ltd)

Defense:Ice Cube Company Co. Ltd
Resolution Date:July 12, 2019
Issuing Organization:Tribunal Arbitral de la OMPI
Decision:Complaint denied
Dominio:Generic Domains
SUMMARY

[meettheworld.com]

 
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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hostelworld.com Limited v. Ice Cube Company Co. Ltd

Case No. D2019-0943

1. The Parties

The Complainant is Hostelworld.com Limited, Ireland, represented by Tomkins & Co., Ireland.

The Respondent is Ice Cube Company Co. Ltd, Republic of Korea, represented by Taeyul Lawfirm, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name [meettheworld.com] is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on April 25, 2019. On April 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 2019, 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 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2019. The Center received an informal email communication from the Respondent on May 10, 2019. The Response was filed with the Center on May 23, 2019.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 11, 2019. 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 is the owner by assignment of a number of registered trademarks in various countries for MEET THE WORLD in respect of a range of services in International Classes 35, 39, 41, and 43. These include International Registration No. 1263034, which was registered on May 20, 2015, claiming priority from an European Union Trade Mark, No. 014096663, which was filed on May 19, 2015, and registered on March 30, 2016.

The Deed assigning the Trade Mark to the Complainant is stated to be supplemental to a purchase of assets agreement between the Complainant and the vendor, WRI Nominees Designated Activity Company.

One of the countries designated in the International Registration is the Republic of Korea. On December 22, 2016, the Korean Intellectual Property Office (KIPO) issued a Statement of Grant of Protection following Provisional Refusal in respect of the trademark.

It appears that the Complainant, or the corporate group of which it is part, operates a chain of hostels around the world under the name “Hostelworld.com”. The trademark, MEET THE WORLD, appears to be used as a strapline to the main brand.

It also appears that, amongst other things, the Respondent carries on a business of providing advertising or marketing and promotional services in the Republic of Korea.

In March 2016, the Complainant (or a member of the corporate group of which it is part)[1] negotiated with the Respondent for the Respondent to prepare an advertising program promoting the Complainant’s services on advertising hoardings at Korean subway stations and other outdoor locations. To assist the Respondent in providing a quotation and performing its services, the Complainant provided to the Respondent at this time a bundle of materials which featured its trademarks including the trademark MEET THE WORLD. The proposal submitted by the Respondent on March 9, 2016 included use of the Complainant’s trademark as the strapline.

On March 24, 2016, the Complainant and the Respondent entered into a services agreement for the execution of the campaign.

On or about June 2, 2016, the Respondent submitted a report to the Complainant showing the advertising hoardings in operation.

According to the Registrar, the disputed domain name was registered on June 13, 2016. The Respondent has provided a receipt as evidence of its “purchase” of the disputed domain name for USD 826. The receipt appears to be dated January 28, 2017. The receipt, however, bears the notation that the transaction was cancelled.

By the time the Complaint was filed the disputed domain name resolved (and continues to resolve) to a website “MeetTheWorld: Free Online Dating & New Friends from 193 Countries”.

The Complainant wrote to the Respondent in September...

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