The Complainant is Andrey Ternovskiy, dba Chatroulette of Moscow, Russian Federation, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with Internet Domain Service BS Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2016. On October 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 2016, 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 November 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2016.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on December 5, 2016. 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 created the Chatroulette service in 2009, which is an online chat website that pairs random people from around the world together for real-time, webcam-based conversations.
The Complainant is the owner of several trademark registrations across several jurisdictions consisting of the term CHATROULETTE, registered notably under classes 35, 38 and 42 of the Nice Classification, notably the European Union trademark filed on March 10, 2010 (No. 008944076), Germany filed on that same day (No. 302010003706) or in the United States of America filed on January 10, 2011 (No. 85214314).
The Complainant owns the domain name since November 19, 2009.
The CHATROULETTE system very quickly gained popularity and recognition and counts more than a quarter million visitors per month. It was featured and highlighted by numerous publications including “The New York Times”, “The New Yorker” as well as on television shows including “Good Morning America” and “The Daily Show with Jon Stewart”.
The Respondent registered the domain name on March 24, 2014. On its website, the Respondent refers to the Complainant, as it states: “Le premier initiateur du système chatroulette est un jeune programmeur russe Andrey Ternovskiz qui a inventé ce concept délirant”.
On July 20, 2016, the Complainant sent a cease and desist letter to the Respondent, that was renewed on August 1 and 12, drawing the Respondent’s attention upon its exclusive rights, the breach resulting from the exploitation of the website attached to the disputed domain name, and inviting the Respondent to disclose the identity of the true Respondent hiding its identity behind a privacy shield. The Respondent did not respond. 5. Parties’ Contentions A. Complainant
The Complainant first argues that that the domain name is confusingly similar to its trademark as it entirely contains the term “chatroulette”’ with the addition of the descriptive term “mon” that proves insufficient to exclude such likelihood of confusion.
The Complainant then alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not given the Respondent any permission to use the Complainant’s trademarks in any manner, and the Respondent is not commonly known by the name “chatroulette”. The Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial fair use of the disputed domain name as it offers and attempts to market a competing website providing online video chat services and networking services, thus a direct competing service.
The Complainant finally asserts that the domain name was registered and is being used in bad faith. The Respondent was obviously aware of the Complainant’s trademark when it registered the disputed domain name as it expressly refers to the Complainant. By providing a competing service for adult content, the disputed domain name is being used in bad faith as it disrupts Complainant’s business. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a 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”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a 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. A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the holder of the trademark CHATROULETTE.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).
This is all the more true when the inserted trademark consists of the dominant part of the disputed domain name, and that the added elements are merely descriptive. Such happens to be the case here where the addition of the prefix “mon” (which is the word for “mine” in French) proves insufficient to exclude the likelihood of confusion resulting from the incorporation of the Complainant’s trademark in the disputed domain name.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent UDRP panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
In the present case the Complainant is the owner of the CHATROULETTE trademark. The Complainant has no business or other relationships with the Respondent. The website at the disputed domain name offers an online chat and dating services which to some extent competes with the Complainant’s services. This does not amount to a legitimate interest under the Policy.
The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
On its side, the Respondent has not answered to the Complaint.
Considering the absence of a Response and the fact that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled. C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith at the time of registration requires, for example, the Respondent to be aware of the Complainant’s trademarks.
Considering the wide recognition of the Complainant’s trademark for online chat systems and the express reference made to it on the Respondent’s website attached to the disputed domain name, it is obvious that the Respondent was perfectly aware of the Complainant’s trademark when it chose to register the disputed domain name.
As the website attached to the disputed domain name is meant to serve as a competing service to the Complainant’s one, expressly referring to it but with an adult related content, there is no doubt in the Panel’s opinion that the disputed domain name has been registered, and is being used to attract Internet users to the Respondent’s website for commercial gain, by creating a likelihood of confusion and leading Internet users to believe that the Respondent’s website might be operated or at least affiliated by the Complainant.
Consequently, the Panel is of the opinion that the disputed domain name has been registered and is being used in bad faith under the paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Philippe Gilliéron
Sole Panelist
Date: December 12, 2016
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