3rd Mar 2015

ADR.eu

ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 100765

Time of Filing 20140306

12:18:43

Disputed domain name VIRTUALEXPO.com

Case Administrator

Name Lada Válková

Complainant

Organization Virtualexpo

Address 17, avenue André Roussin

City, State (if applicable) 13016 Marseille

Country France, Metropolitan

ZIP/Postal Code

Email

corentin.thiercelin@virtualexpo.

com

Telephone 04 86 13 48 48

Fax

Authorized Representative

Organization CHAIN AVOCATS

Address 3, rue de Logelbach

City, State (if applicable) 75017 Paris

Country France, Metropolitan

ZIP/Postal Code

Email

cyril.chabert@chainavocats.

com

Telephone 00 33 1 44 01 46 00

Fax 00 33 1 44 01 46 01

Respondent

Organization Kwangpyo Kim Mediablue

Inc

3/3/2015 ADR.eu

https://udrp.adr.eu/arbitration_platform/form_print.php?dispute_id=100765&page=2&item_id=8631 2/9

Address 2203103

Hoban Vertium 1Cha Saingadon Gwangsangu

City, State (if applicable) Gwangju

Country Korea (South)

ZIP/Postal Code 506307

Email

admin@mediablue.com

Telephone +82.625313624

Fax

Other Legal Proceedings

None of which the Panel is aware.

Identification of rights

The Complainant relies upon a number of trade marks that incorporate or comprise the term VirtualExpo. They

include:

(i) Community Trade Mark No 4783981 published on 19 June 2006 and registered on 20 November 2006 for

the word mark VIRTUALEXPO in classes 35, 38 and 42; and

(ii) International; (Madrid) trade mark no 1173812 applied for on 28 May 2013 and designating China, Russia,

in classes 35, 38 , 41, 42, taking the form of a device mark combining the terms “Virtual” and “Expo” with a

design representing the countries of the world

Each of these trade marks is registered in the name of one Benoît Thiercelin.

Factual Background

The Complainant is a French company with a registration date of 2 August 2000 and located in Marseille

France. It organises “virtual exhibitions” and ”virtual trade shows” and operates from a website using the

domain name <virtualexpo.

com>.

The Domain Name was first registered in May 1996. As at 23 April 2010 the Domain Name was registered in

the name of CyberDeal Inc, a company with an address in New York.

In June 2010, M. Corentin Benoit Thiercelin commenced UDRP proceedings at WIPO against the then

registrant of the Domain Name (see M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D20100941).

The lawyers for that individual in the WIPO proceedings were the same as those currently representing

the Complainant in the current proceedings. In the WIPO proceedings Mr Thiercelin claimed to control the

activities of the Complainant.

On 10 August 2010 the panellist in the WIPO proceedings, rejected the Complaint and made a finding of

3/3/2015 ADR.eu

https://udrp.adr.eu/arbitration_platform/form_print.php?dispute_id=100765&page=2&item_id=8631 3/9

Reverse Domain Name Hijacking. The reason given for that finding was as follows:

“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 Domain Name was acquired by the current Respondent in September 2010. The Respondent would

appear to be a company based in Korea managed by one “Kwang Po Kim”.

Thereafter the Domain Name was registered behind a “privacy shield” operated by Whois Privacy Services Pty.

It would appear that at all material times the Domain Name has been used for a payperclick

webpage. As at

January 2014 the links displayed on that page (presumably when viewed from France) were as follows:

China Exhibition, Expo Trade Shows, International Exhibitions, Expo Booth, Free Domain Registration, Line

Array, Power Plant, Coal Power, Enterprise Domiciliation, Societe Domiciliation

On 17 January 2014, the Complainant’s lawyers sent a letter before action to Whois Privacy Services Pty

demanding the lifting of the privacy shield and the transfer of the Domain Name to the Complainant. Whois

Privacy Services Pty did not reply to that letter.

Further, it would appear that the Domain Name has been made available for sale by the Respondent. At some

point prior to the commencement of these proceedings the Complainant offered to purchase the Domain Name

for US$ 8,000 but received a response stating that “the offer is too low to be presented to the seller”.

The Complainant filed a complaint in these proceedings on 25 February 2014. In response to the CAC’s

registrar verification request, the registrar of the Domain Name revealed the underlying registrant of the

Domain Name to be the Respondent.

A Response was filed on 10 April 2014.

On 16 April 2014 the Complainant sought to file a short supplemental submission to reply to the Response.

PARTIES’ CONTENTIONS:

COMPLAINANT:

The Complainant refers to various trade marks said to be “owned by the Complainant”. However, no

explanation is offered as to why these are instead in the name of Mr Thiercelin nor is any attempt made to

3/3/2015 ADR.eu

https://udrp.adr.eu/arbitration_platform/form_print.php?dispute_id=100765&page=2&item_id=8631 4/9

explain the relationship between Mr Thiercelin and the Complainant.

The Complainant claims that it has “continued to expand all around the world” and to have “gained an

important notoriety in France and abroad”. However, no evidence is offered to support that contention nor is

there any disclosure of the level of its sales either in France or elsewhere.

The Complainant contends that the Domain Name is identical to the trade marks relied upon.

The Complainant further contends that the Respondent has no rights or legitimate interests in the Domain

Name, asserting that none of the examples of rights or legitimate interests in paragraph 4(c) of the UDRP apply

in this case. It further relies upon the fact that neither Whois Privacy Services Pty nor the Respondent

responded to the Complainant’s letter before action.

So far as bad faith registration and use is concerned, the Complainant contends that the date of transfer of the

Domain Name to the Respondent is the date of registration for the purposes of assessing bad faith. It claims

that at that time the Respondent was “able” at that time “to know the Complainant’s trade[ ]mark and the

infringement to intellectual property rights he was committing by registering this domain name”. So far as bad

faith use is concerned, the Complainant relies upon the payperclick

landing page displayed from the Domain

Name, which is said to redirect internet users to competitors of the Complainant.

The Complainant also relies upon the fact that the Domain Name has been made available for sale, and

contends that it is evident that the Domain Name was primarily registered for the purpose of selling, renting or

otherwise transferring its registration to the Complainant or to a member of the public for valuable

consideration in excess of any documented out of pocket costs directly related to the Domain Name.

For the reasons set out later in this decision it is not necessary to set out the Complainant’s contentions in it

supplemental submission

RESPONDENT:

The Respondent refers to the previous proceeding at WIPO and accuses the Complainant of engaging in

forum shopping.

The Response is lengthy and incorporates references to a very large number of UDRP cases. Nevertheless the

Respondent’s position is relatively straight forward.

It contends that the Domain Name comprises two common English words; i.e. “Virtual” and “Expo” (which is

said to be a shortened form of the word “Exposition”). It claims that is has used the Domain Name in

accordance with that meaning.

Evidence has also been filed in the form of a declaration signed by Mr Kwang Pyo Kim in which Mr Kim claims

that the Domain Name, was purchased at auction because it was an “inherently valuable descriptive term”. He

claims that at the time of purchase the Respondent had no knowledge of the Complainant’s marks.

3/3/2015 ADR.eu

https://udrp.adr.eu/arbitration_platform/form_print.php?dispute_id=100765&page=2&item_id=8631 5/9

Mr Kim also states that the Respondent also owns a number of Domain Names which contain the words

“Virtual” (identifying 4 such domain names) or “Expo” (identifying 2 such domain names). This is claimed to be

part of a portfolio of “hundreds of domain names” and that while the Respondent “develop[s] names [it] hosts

them with …. a domain name parking service that displays payperclick

advertising links on hosted domain

names powered by its software”. That software is said to automatically generate the links “based upon the

contextual meaning of the term and words contained in the domain name”.

So far as the Respondent’s legal arguments are concerned, it is not necessary to set them out in any detail,

save to record the fact that at one stage in the Response the Respondent claims that:

“Where the prior owner [i.e. Cyber ] held the [D]omain [N]amed for 14 years, without interruption … and sold it

at public auction, it is a signal to the Respondent that there is no competing thirdparty

trade[ ]mark claim”.

The Respondent also claims that there has been a four year delay in bringing these proceedings and that this

is said to raise the inference that the Complainant did not believe the registration and use of the Domain Name

to be improper.

Rights

The failure of the Complainant to explain properly why it can rely upon trade marks that are not in the

Complainant’s name might be said to justify the Panel summarily dismissing the Complaint.

However, when both parties’ submissions and the previous decision in Corentin Benoit Thiercelin v. CyberDeal,

Inc., WIPO Case No. D20100941

are considered in the round, it appears that Mr Thiercelin was the founder of

the Complainant and that accordingly the marks relied upon are still in the name of a person who controls the

activities of the Complainant today.

No explanation is given or evidence adduced to support these conclusions, although M.Thiercelin’s email

address is given in the Complaint as the point of contact for the Complainant. Accordingly, on this occasion the

Panel will give the Complainant the benefit of the doubt that there is some form of licence arrangement

between the Complainant and Mr Thiercelin as the formal trade mark owner, so that the Panel can decide the

case on the more substantial issues involved.

The Panel therefore finds by inference that the Complainant has established rights in the trade marks relied on.

However, parties and their advisers should remember that they must adduce evidence to support all of their

contentions, that they must, in particular, prove all three of the elements specified in the Policy and that the

Policy makes this clear.

So far as the Community Trade Mark No 4783981 is concerned, the only difference between the mark and the

Domain Name is the “.com” TLD. In the circumstances, the Panel accepts that the Domain Name is identical or

confusingly similar to a trade mark or service mark in which the Complainant has rights. Accordingly, the

Complainant has made out the requirements of paragraph 4(a)(i) of the UDRP.

3/3/2015 ADR.eu

https://udrp.adr.eu/arbitration_platform/form_print.php?dispute_id=100765&page=2&item_id=8631 6/9

No rights or legitimate interests

It seems reasonably clear that the Respondent is a domain name trader. However, there is nothing per se

illegitimate under the UDRP about trading in domain names. In general terms, such trade is only likely to fall

foul of the UDRP where it involves some form of unfair taking of advantage of the trade mark rights of others.

In this case the Respondent claims that it has simply acquired a domain name that incorporates a generic or

descriptive phrase which it is then using in a manner which does no more than take advantage of that generic

or descriptive meaning.

The question of when and in what circumstances there may be a right or legitimate interest in the domain

name comprising ordinary words or phrases, is one that is addressed in paragraph 2.2 of the WIPO Overview

2.0. This records the following to be a consensus view among WIPO panelists:

“If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the

respondent fails to show one of the three circumstances under paragraph 4(c) of the UDRP, or any other basis

for rights or legitimate interests, then the respondent may lack a legitimate interest in the domain name, even if

it is a domain name comprised of a dictionary word or phrase. Factors a panel tends to look for when

assessing whether there may be rights or legitimate interests would include the status and fame of the

trademark, whether the respondent has registered other domain names containing dictionary words or

phrases, and whether the domain name is used in connection with a purpose relating to its generic or

descriptive meaning (e.g., a respondent may well have a right to a domain name “apple” if it uses it for a

genuine site for apples but not if the site is aimed at selling computers or MP3 players, for example, or an

inappropriate other purpose). Panels have recognized that mere registration of a domain name, even one that

is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or

services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find

rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase

contained therein, the domain name would need to be genuinely used or at least demonstrably intended for

such use in connection with the reliedupon

meaning (and not, for example, to trade off thirdparty

rights in

such word or phrase).”

In this case the Respondent claims that it is genuinely using the Domain Name in connection with the relied

upon generic or descriptive meaning by using the Domain Name for pay per click advertising associated with

that generic or descriptive meaning; i.e. the display of links that relate to virtual exhibitions or expositions.

So far as payperclick

(or “PPC”) activity is concerned, paragraph 2.6 of the WIPO Overview 2.0 describes the

consensus view as follows:

“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links

may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising

from a “bona fide offering of goods or services” [see also paragraph 3.8 below] or from “legitimate noncommercial

or fair use” of the domain name, especially where resulting in a connection to goods or services

competitive with those of the rights holder. As an example of such permissible use, where domain names

3/3/2015 ADR.eu

https://udrp.adr.eu/arbitration_platform/form_print.php?dispute_id=100765&page=2&item_id=8631 7/9

consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic

meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources

of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result

that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the

word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to

consider such practices generally as unfair use resulting in misleading diversion.”

Here the Panel accepts that the most natural reading of the Domain Name is as the English terms “virtual” and

“expo” in combination. Therefore, in this case to satisfy the requirements of paragraph 4(a)(ii) of the UDRP, the

Complainant must show on the balance of probabilities that the Domain Name is being used to take advantage

of its trade marks rather than any descriptive meaning of the phrase “Virtual Expo”.

Ultimately, the Panel is of the view that the Complainant has failed to make out a case in this regard. The

phrase “Virtual Expo” appears to the Panel to be prima facie descriptive of the exercise of the provision of

virtual expositions and exhibitions via the internet.

The Complainant appears to contend that the term is somehow distinctive of the Complainant, but there is no

real evidence before the Panel to support that contention. It does not appear to the Panel to be a particularly

unusual or striking combination of words.

There is, of course, the Complainant’s marks themselves. Perhaps those marks themselves might be

considered evidence of distinctiveness of the term. Nevertheless it is noticeable that although the

Complainant’s device mark appears to cover virtual expositions and exhibitions, the word mark on its face does

not. In short, the mere fact that the Complainant has obtained trade marks that incorporate or comprise the

term “Virtual Expo”, is insufficient to persuade the Panel that the use of the term “Virtual Expo” alone in respect

of virtual expositions and exhibitions would involve the taking advantage of any trade mark meaning of that

term.

This is not to say that there are aspects of the facts of this case and the Respondent’s claims that a majority of

the Panel do not find curious. Amongst these is the fact that the Domain Name was purchased only very shortly

after the publication of the decision in Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D20100941

in relation to the Domain Name. The Respondent claims that it should be able to rely upon “signals”

arising from the fact that the Domain Name had been held without interruption for 14 years. However, in order

to notice any such “signal” the Respondent would have had to engage in some investigation as to the history of

the Domain Name. But if some investigation into the history of the Domain Name were undertaken, it is hard to

believe that the Respondent would not also have become aware of the then recent decision concerning that

Domain Name and consequentially the Complainant’s marks.

However, even if the Respondent had knowledge of the Complainant’s marks, the Panel is unconvinced that

the Respondent’s use of the Domain Name for PPC advertising that appears to do no more than use the term

“Virtual Expo” descriptively, would take unfair advantage of those marks.

In the circumstances, the Complainant has failed to make out the requirements of paragraph 4(a)(ii) of the

3/3/2015 ADR.eu

https://udrp.adr.eu/arbitration_platform/form_print.php?dispute_id=100765&page=2&item_id=8631 8/9

Policy.

Bad faith

Given the Panel’s finding on the issue of rights and legitimate interests, it is unnecessary to consider the issue

of bad faith registration or use.

Procedural Factors

On 16 April 2014 the Complainant sought to file a short supplemental submission to reply to the Response.

The substance of that supplemental submission was directed to the issues of (a) would could and could not be

inferred from the fact that there had been previous proceedings in relation to the Domain Name before WIPO

and (b) the alleged generic nature of the term “VirtualExpo”.

Paragraph 4.2 of the WIPO Overview 2.0 comments on the question of whether panels will accept

supplemental filings as follows:

“Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind

the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each

party has a fair opportunity to present its case. The party submitting its filing would normally need to show its

relevance to the case and why it was unable to provide that information in the complaint or response. Most

panels that have allowed unsolicited filings have also tended to require some showing of ‘exceptional’

circumstances.”

In this particular case, in the opinion of the Panel the Complainant has failed to show any exceptional

circumstances that would justify the consideration of further submission by the Complainant in this case. The

Complainant was obviously aware of those proceedings as they were brought on its behalf by Mr Thiercelin.

Not only could the Complainant have brought this to the attention of the Panel in the Complaint, but this would

have been an obvious thing to do. So far as the alleged generic nature of the term “VirtualExpo” is concerned,

this is an allegation that any competent domain name lawyer could and should have anticipated.

In the circumstances, the Panel have not admitted the Complainant’s supplemental submission document into

these proceedings.

Principal Reasons for the Decision

The Domain Name in this case was most sensibly read as the words “Virtual” and “Expo” in combination. The

Respondent was using the Domain Name in connection with payperclick

advertising that displayed links that

appeared to be consistent with the descriptive meaning of the phrase “Virtual Expo”. Further the Complainant

failed to bring forward any evidence to the effect that the term “Virtual Expo”, although used for its business,

was anything other than descriptive of the activity of providing virtual expositions or exhibitions on the internet.

In the circumstances, the Complainant had failed to show that the Respondent did not have a right or legitimate

interest in the Domain Name. Accordingly the Complaint was rejected.

3/3/2015 ADR.eu

https://udrp.adr.eu/arbitration_platform/form_print.php?dispute_id=100765&page=2&item_id=8631 9/9

Decision

For all the following reasons, the Complaint

is

Rejected

and the disputed domain name(s) are to be

VIRTUALEXPO.COM Complaint rejected

Panellists

Name The Hon. Neil Brown, QC , Flip Petillion , Matthew Harris

Date of Panel Decision 20140527

Publication of the Decision

Publish the Decision