WIPO Domain Name Decision DRO2019-0003 for chatroulette.ro
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Andrey Ternovskiy dba Chatroulette v. Arcanite Media Ltd. Case No. DRO2019-0003 1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Arcanite Media Ltd. of Belize City, Belize. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with ROTLD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2019. On March 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 22, 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 March 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2019.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on May 2, 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 since 2009 operates an online chat website under the name “Chatroulette” that pairs random people from around the world together for real-time, webcam-based conversations.
The website under the Complainant’s domain name grew to over 500,000 daily visitors in early 2010 and received 2.5 million visits in February 2019.
The Complainant is the owner of, inter alia, the following trade marks (the “Trade Marks”):
- German trade mark CHATROULETTE No. 302010003706, registered on February, 21 2013.
- European Union trade mark CHATROULETTE No. 008944076, registered on December, 4 2012.
- Swiss trade mark CHATROULETTE No. 600401, registered on May 14, 2010.
- United States trade mark CHATROULETTE No. 4445843, registered on December 10, 2013.
The Domain Name was registered on September 22, 2018 and does not resolve to a website.
By email of November 19, 2018, the Complainant has sent a cease-and-desist letter to the Respondent. By e-mail of November 20, 2018 the Respondent replied:
“We have no intention in using the domain name in any of your client’s registered trademark classes.
Thanks for letting us know!”
The Complainant responded by reply e-mail:

“Please note that our client has a strict policy against unauthorized third‐party domain name registrations containing their CHATROULETTE trademark.

In light of the above we respectfully request that you agree to transfer the domain name with immediate effect.”
To which the Respondent replied:

“We are not in the business of transferering valuable generic IP assets free of charge.
Bear in mind, we will not respond unless you have a reasonable offer or solution.”

The Complainant by email of November 21, 2018 wrote:

“The domain name concerned ‐ ‐ is not a generic domain name and, as you
rightfully say, is in fact an IP asset that belongs to Chatroulette.

We will refund registration costs so to expedite the transfer process, but please do be aware that
should you not agree to transfer this domain name, we reserve the right to escalate to UDRP.”

The Respondent then replied by return e-mail:

“As a policy, we do not respond to threats.
Please go ahead with your reverse domain name hijacking attempt.” 5. Parties’ Contentions A. Complainant
According to the Complainant, the Domain Name incorporates the Trade Marks in their entirety, thus rendering the Domain Name identical to the Trade Marks. The applicable country code Top-Level Domain (“ccTLD”) in the Domain Name (in this case “.ro”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test, the Complainant submits.
The Complainant states that the Respondent is not commonly known by the Domain Name, which would demonstrate a lack of rights or legitimate interests. In addition, the Complainant contends, the Respondent’s name is Arcanite Media Ltd. which does not resemble the Domain Name in any manner. Furthermore, the Complainant points out that the Respondent is not sponsored by or affiliated with the Complainant in any way and the Complainant has not licensed, authorized, or permitted the Respondent to register a domain name incorporating the Trade Marks.
The Complainant states that