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 and again in November 2018 challenging its registration of the disputed domain name. No response was received to these letters. In October 2018, however, the Complainant’s representative telephoned the Respondent and offered to pay EUR 4,000 in return for a transfer of the disputed domain name. The Respondent replied, seeking EUR 400,000. In the November 2018 letter, the Complainant increased its offer to EUR 8,000.
It appears that, following notification of the Complaint by the Center, the Respondent added a disclaimer to the website stating “MeetTheWorld has not affiliated with Hostelworld, and has nothing to do with it”.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the trademark MEET THE WORLD through the International Registration in numerous countries including the Republic of Korea.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11.
The Complainant’s trademark is presented in a slightly stylised script, as if the letters have been made with brush strokes. Nonetheless, the Panel accepts the Complainant’s argument that the dominant features of the trademark are the words themselves. The design element does not overtake the textual elements Therefore, it is appropriate to treat the comparison as involving the words of the trademark alone. See WIPO Overview 3.0, section 1.10.
Disregarding the “.com” gTLD, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. Moreover, clause 5.1 of the services agreement between the Complainant and the Respondent in 2016 provided:
“The Service Provider acknowledges that all rights in the Hostelworld Materials shall at all times vest in and be the absolute property of Hostelworld. Hostelworld hereby grants the Service Provider a limited, non-exclusive, non-transferable, royalty free licence for the duration of the Term to use the Hostelworld Materials solely to the extent required to provide the Services.”
“Hostelworld Materials” are defined for this purpose to mean “any materials that [the Complainant] may provide to [the Respondent] in connection with the provision by [the Respondent] of the Services.”
The Complainant contends that these provisions are an acknowledgement by the Respondent that all rights in the trademark belong to the Complainant. It is clear for this Panel that the Services Agreement did not grant the Respondent any express right to register the disputed domain name. The Complainant further contends that the Respondent’s actions in registering the disputed domain name shortly after the Complainant provided the Respondent with the Complainant’s proprietary materials and for the limited purpose of proposing and executing an advertising campaign for the Complainant amounts to bad faith.
The Respondent does not address its prior relationship with the Complainant in the Response. The Panel, therefore, takes those matters to be undisputed. Instead, the Respondent says it registered and is using the disputed domain name in connection with a free online dating website. The Respondent says it has spent some 300 million won (in the order of EUR 200,000 or more) developing its website. And the Respondent says no-one would think of the Complainant’s Hostelworld business when they see the disputed domain name or its website.
The Panel does not consider the amount paid by the Respondent for the disputed domain name is relevant to the issue under consideration. A domain name may well command a high price because its resemblance to someone’s trademark makes it desirable; that does not confer on the acquirer ipso facto any right or legitimate interest in the use of the domain name in some way which infringes the trademark. In any event, the Panel is unable to credit the claimed expenditure in this case as the evidence advanced by the Respondent states on its face that the transaction was cancelled.
The Respondent has not submitted any direct evidence corroborating the claimed expenditure of 300 million won on the development of the website. There is, however, the website itself.
The website to which the disputed domain name resolves is not a mere landing page. On the contrary, there are numerous and comparatively detailed pages. These include the display of a rotating display of “random users”. The individual displayed change from view to view. They are stated to have joined the website on many different dates and appear to be located in many different parts of the world. There is no concrete material from which to conclude that they are fictitious. Their number is also sufficiently large — assuming they are real people — that one could not readily assume they have joined together in some conspiracy against the Complainant. The Panel has been unable to test whether or not there are members behind the login page with whom a browser can interact or search. If this functionality is available, it appears to be available after the browser has completed the registration process including the creation of a detailed user profile. The Complainant does not address the functionality of the website. In these circumstances, the Panel is unable to assume that the website is a façade or merely pretextual.
While it does not address the functionality of the website, the Complainant contends that the Respondent acknowledged through the Services Agreement that the trademark “Meet the World” was the absolute property of the Complainant and goes on to contend that:
“as the Respondent was clearly aware that the Complainant had already commenced an international marketing campaign using the ‘Meet the World’ trademark and was intending on launching a national marketing campaign in the Republic of Korea using the same ‘Meet the World’ trademark, any subsequent registration and use by the Respondent of the ‘meettheworld.com’ domain name was highly likely to cause actual confusion on the part of Internet users with the Complainant’s trademark.” (Emphasis supplied)
The Panel notes that, on the record in this proceeding, the marketing campaign was not one that had yet to launch and was therefore still confidential between the Complainant and the Respondent when the disputed domain name was registered. The marketing campaign was in operation.
The Panel accepts nonetheless that the Respondent’s prior relationship with the Complainant and its failure to address it are both very troubling circumstances.
Assuming in the Complainant’s favour that the trademark forms part of “Hostelworld Materials”, however, the Panel has considerable difficulty accepting the proposition that acknowledgement of the Complainant’s ownership is an acknowledgement that the Complainant owns all rights in the expression for all purposes.
Clearly, the Respondent would not have been acting in good faith if it had adopted the Complainant’s trademark and compete head-on with the Complainant’s services. The Respondent, however, appears to use the disputed domain name in an unrelated field.
Moreover, the expression “Meet the World” would not be an inapt descriptor for the types of services the Respondent claims to be providing. They appear to be rather different to the Complainant’s services. The services covered by the Complainant’s registered trademark (in the European Union and through the International Registration including also specifically in the Republic of Korea) are:
“35 Business management and business administration; advertising services; advertising agency services; advertising services via the internet; advertising and publicity services; dissemination of advertising materials; advertising, promotional and marketing services; dissemination of advertising for others via an on-line communications network on the internet; dissemination of advertising for others via the internet; distribution of advertising materials; on-line advertising on a computer network; on-line advertising on computer communication networks; promotion, advertising and marketing of on-line websites; provision of space on web sites for advertising goods and services; compilation of directories for publication on the internet; publication of advertising materials; consultancy, information and advisory services for all of the aforesaid services.
“39 Providing information, advisory and consultancy services in the field of travel booking services for all forms of travel and transportation, particularly via bus, rail and plane; providing information, advisory and consultancy services for holidays, tours, cruises, tourist services, sightseeing tours; package holidays, storage services and vehicle rental.
“41 Entertainment, sporting and cultural activities; providing online information in the field of entertainment, theatre, concerts, events and presentations from a computer database, a global computer network or the Internet; provision of information in the field of travel, email letters, providing online electronic publications; providing online travel guides for several destinations in the world via the Internet.
“43 Providing reservation and booking services for travellers’ accommodation, namely, hostels, hotels and resorts.”
They may be seen to fall into broad categories related to:
(a) provision of advertising and advertising services;
(b) provision of information and consultancy services related to travel booking, holidays, storage and vehicle rental;
(c) provision of entertainment, sporting and cultural services;
(d) provision of electronic publications
(e) provision of reservation and booking services for accommodation;
(f) general business administration and management services; and
(g) compilation of directories on the Internet.
In the Complaint, the Complainant characterizes its services in somewhat more limited terms:
“The services in connection with which the trademark is used by the Complainant are online services, including travel agent services, hostel and accommodation booking services, online marketing and advertising of hostel and accommodation services, hostel and accommodation administrative services provided online and the provision of hostel accommodation information services.”
The provision of an online dating service of the kind the Respondent claims to be providing could be characterised in some respects as an advertising service or, arguably, as a form of directory. However, strictly construing things in a trademark sense, social media activities such as the Respondent claims to be providing more typically fall within class 45. As a general proposition, therefore, the Respondent’s claimed online dating service appears to be of a different character to the rights comprised in the Complainant’s trademark. It may be speculated that the Respondent plans to generate revenues from its service by providing advertising services in the manner of some prominent social media companies. But the record in this proceeding does not include any evidence of that as yet.
In these circumstances, based on the limited evidence in the present evidence record, it does not appear that the Respondent’s activities would clearly infringe the Complainant’s trademark. Overall, the website’s appearance does not appear to lead to a likelihood of confusion. The nature of the service appears to be different to the accommodation and related services offered by the Complainant. Further, even before the Respondent added the disclaimer of any association to its website, the way the expression “Meet the World” was presented was different to the way the Complainant has registered and uses its trademark. While there was a relationship between the Complainant and the Respondent involving the disclosure of the Complainant’s trademark to the Respondent before the disputed domain name was registered, this case does not appear to be like situations where an ex-employee has decamped with some confidential information of the former employer or a distributor has misappropriated its manufacturer’s trademark. These considerations indicate this case involves complex trademark issues rather than the straightforward situations falling within the “cybersquatting” scope of the UDRP and so would be more appropriately addressed by a Court of competent jurisdiction.
Therefore, the Panel is unable to find that the Complainant has established the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds the Complainant has not established the second requirement under the Policy.
C. Registered and Used in Bad Faith
As the Complainant has not established the second requirement under the Policy on the evidence in this proceeding, the Complaint must fail and no good purpose would be served by considering the third requirement under the Policy.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Date: July 12, 2019
1 As nothing turns on the precise identity of the entity in the corporate group or predecessor in question, the Panel will just refer to the Complainant for ease of reference.