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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

M. Corentin Benoit Thiercelin v. CyberDeal, Inc.

Case No. D2010-0941

1. The Parties

The Complainant is M. Corentin Benoit Thiercelin of Marseille, France, represented by Chain Association d’Avocats, France.

The Respondent is CyberDeal, Inc. of New York, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <virtualexpo.com>, (the “Domain Name”), is registered with Network Solutions, LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2010. On June 9, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 9, 2010, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2010.

The Center appointed Tony Willoughby as the sole panelist in this matter on July 27, 2010. 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 Domain Name was registered on May 2, 1996.

The Complainant claims to run a company, named VIRTUALEXPO, which was registered in Marseille on August 2, 2000. While there is no evidence before the Panel to support that claim, the Panel is prepared to accept it as fact for the purposes of this decision.

The Complainant claims to be the registered proprietor of the domain names <virtual-expo.net> and <virtual-expo.com> both of which were registered on December 17, 2003. While this was not supported by any evidence, the Panel checked the ownership of these domain names by way of a publicly available WhoIs service. In fact they appear to be held in the name of a company, but the contact details identify the Complainant as a contact.

The Complainant is the registered proprietor of three trade mark registrations covering the mark VIRTUALEXPO in one shape or form. The earliest of the three, a word mark, is Community Trade Mark No. 4783981 dated December 14, 2005 for a variety of services in classes 35, 38 and 421

On January 12, 2009 the Complainant’s representative wrote to the Respondent drawing the Respondent’s attention to the Complainant’s above mentioned trade mark and accusing the Respondent of “counterfeiting” [sic]. The letter demanded transfer of the Domain Name and compensation for damage caused to the Complainant.

No reply was received to that letter. Nor was any (or any satisfactory) reply received from any of the addressees of the subsequent communications sent out on behalf of the Complainant to the Respondent, the Registrar and ICANN over the ensuing 12 months. The letters to the Registrar and ICANN complained at the inaccuracy of the contact details on the Registrar’s WhoIs database and the consequential inability of the Complainant to make contact with the Respondent.

Notwithstanding that some of the letters from the Complainant’s representative state that “the operating of the site is also causing commercial as well as image damages for which my client will seek damages”, the Complainant acknowledges in the Complaint that there is no website connected to the Domain Name. There is no evidence before the Panel to suggest that the Domain Name has ever been put to active use.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to the Complainant’s registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used to prevent the Complainant acquiring the Domain Name.

B. Respondent

The Respondent has not replied to the Complainant’s contentions.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name was registered and is being used in bad faith.

If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence, namely:

“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

B. Identical or Confusingly Similar

The Domain Name comprises the Complainant’s registered trade mark VIRTUALEXPO and the generic “.com” domain suffix. For the purposes of assessing identity and confusing similarity under this head it is well-established that the domain suffix may be ignored.

The Panel finds that the Domain Name is identical to the Complainant’s registered trade mark.

C. Rights or Legitimate Interests

In light of the Panel’s finding under the next head, it is unnecessary for the Panel to address this issue.

D. Registered and Used in Bad Faith

Ordinarily a complaint under the Policy cannot succeed unless the respondent had the complainant and/or the complainant’s trade mark in mind at time of registration of the domain name in issue. Paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions reads as follows:

“3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?

Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.

However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.”

As can be seen from the Factual Background set out in paragraph 4 above, in this case the Domain Name was registered on May 2, 1996 and the earliest of the Complainant’s trade mark registrations did not materialize until December 14, 2005. Even if one were to take the claimed date of registration of the Complainant’s VIRTUALEXPO company (August 2000) as the date from which the Complainant’s trade mark rights commence, the Complainant is still left with over 4 years to explain away and there is absolutely nothing before the Panel to enable the Panel to infer that the Respondent should have been aware of the Complainant’s plans for his VIRTUALEXPO company/brand in May 1996.

The Complainant asserts in the Complaint that “The Domain Name was only registered in order to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name”. On the papers before the Panel this was a wild, unsupported and wholly misconceived claim.

Despite the Complainant’s representative’s claim in his threatening letters to the Respondent that the operation of the Respondent’s website is causing damage to the Complainant, no such allegation is made in the Complaint. The main thrust of the Complaint is that the Respondent’s non-use of the Domain Name is evidence of bad faith use.

Certainly, non-use may constitute evidence of bad faith in line with the much-cited authority Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, but in that case the domain name was registered long after the trade mark in question had acquired fame and the trade mark was very well-known.

The Panel finds that there is nothing in the papers before the Panel to support the Complainant’s claim that the Domain Name was registered and is being used in bad faith.

E. Reverse Domain Name Hijacking

In the view of the Panel this is a Complaint which should never have been launched. The Complainant knew that the Domain Name was registered nearly 10 years before the Complainant acquired his registered rights, no attempt was made to demonstrate the existence of any earlier rights nor was any attempt made to address the issue arising from the disparity in dates. It simply was not mentioned. Instead, a flagrantly insupportable claim was made as to the Respondent’s bad faith intent at time of registration of the Domain Name and the Panel can only assume that it was hoped that the Panel would miss the point.

The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Tony Willoughby
Sole Panelist
Dated: August 10, 2010

1 . For completeness it should be mentioned that the annex identifying the Complainant’s trade mark registrations also includes details of a registered device mark featuring the words “Virtual Expo” dating back to 2000, but it is in the name of another apparently unrelated company and is not referred to in the body of the Complaint.

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