Complainant is Andrey Ternovskiy dba Chatroulette of Moscow, Russian Federation, represented by CSC Digital Brand Services AB, Sweden.
Respondent is R. Vriens, Niro of Lopik, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Key-Systems GmbH dba (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 27, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Complaint was submitted in the English language. The language of the Registration Agreement for the Disputed Domain Name is Dutch. On February 28, 2017, the Center sent a language of proceeding communication in both Dutch and English to the Parties. On March 6, 2017, Complainant submitted an amended Complaint which includes a request for English to be the language of proceeding. Respondent did not reply to the Center's notification or Complainant's submission.
The Center verified that the Complaint together with amended 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 Respondent of the Complaint, and the proceedings commenced on March 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 30, 2017.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on April 3, 2017. 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
Complainant, Andrey Ternovskiy dba Chatroulette, is the holder of trademark registrations across various jurisdictions for the word mark CHATROULETTE. Complainant's trademark portfolio includes the following trademark registrations:
- CHATROULETTE, European Union trademark registration No. 008944076 in classes 35, 38 and 42 (applied for on March 10, 2010 and registered since December 4, 2012);
- CHATROULETTE, United States of America trademark registration No. 4445843 in classes 38, 45 (applied for on January 10, 2011 and registered on December 10, 2013.
Complainant uses its CHATROULETTE trademark in connection with online video chat services and online video social introduction and networking services.
The Disputed Domain Name, , was registered on March 22, 2014. Respondent has been using the Disputed Domain Name for chat services and presents the website linked to the Disputed Domain Name as the Dutch version of Chatroulette.
On December 5, 15, and 27, 2016, Complainant sent cease and desist letters to Respondent, requesting the transfer of the Disputed Domain Name. These letters remained unanswered. 5. Parties' Contentions A. Complainant
Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant argues that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Complainant claims that the Disputed Domain Name was registered and used in bad faith. Complainant claims that Respondent knew, or at least should have known, of the existence of Complainant's trademark, and that Respondent's use of the Disputed Domain Name constitutes a disruption of Complainant's business. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings 6.1. Language of the proceeding
As the Complaint was not filed in the language of the Registration Agreement and the Parties did not agree on the language of the administrative proceeding, the Panel may decide on the language of the administrative proceeding, having regard to the circumstances of the administrative proceeding. Indeed, paragraph 11(a) of the Rules reads: "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
In cases where the use in the proceeding of a language, which is different from the language of the Registration Agreement, would not be prejudicial to the interests of the respondent, whereas it would be a disadvantage for the complainant to be forced to translate the complaint, previous UDRP panels have decided to use the language of the complaint (see, e.g., The Dow Chemical Company v. Hwang Yiyi,WIPO Case No. D2008-1276, decision according to which, "where [a] respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even it is different to the language of the registration agreement").
In the present case, the Panel notes that the website associated to the Disputed Domain Name contains advertising in English. As a result, it appears that Respondent has an understanding of English. Respondent also did not reply to the Center's Dutch communication regarding the language of the proceeding. Respondent was notified of these proceedings in Dutch and English. By accepting the terms and conditions of the registration agreement and by the Center's communication, Respondent was sufficiently informed about the content of such administrative proceedings. The fact that Respondent did not reply to any of the communications sent by the Center indicates that Respondent deliberately opted for not taking part in the proceedings and chose not to use its right to defend itself. In such circumstances, the Panel finds that it would be a disadvantage for Complainant to be forced to translate the Complaint. As Respondent had ample chance to defend itself, but elected not to do so, the Panel, having regard to the circumstances of these proceedings, accepts the Complaint as filed in English and has issued its decision in English (see INTS IT IS NOT THE SAME, GmbH (dba DESIGUAL) v. Two B Seller, Estelle Belouzard,WIPO Case No. D2011-1978). 6.2. Substantive elements of the Policy
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. 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.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has established that there are registered CHATROULETTE trademarks in which Complainant has rights.
The Disputed Domain Name incorporates Complainant's CHATROULETTE trademark in its entirety while merely adding the geographically descriptive abbreviation "nl" to such trademark. It is well established that the mere addition of a geographic term or place name does not alter the underlying trademark or negate the confusing similarity (see Lange Uhren GmbH v. Dvlpmnt, Ltd.,WIPO Case No. D2013-1700).
Accordingly, Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is well established under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name, that Respondent's use and registration of the Disputed Domain Name was not authorized by the Complainant, and that there are no indications that a connection between Complainant and Respondent existed.
In addition, the Panel is of the opinion that Respondent is not "making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue" (Policy, paragraph 4(c)(iii)). The website available at the Disputed Domain Name is being used to host Respondent's own online, webcam chat site which directly competes with Complainant's own offerings. Past UDRP panels have consistently held that selling competing goods, coupled with the unauthorized use of a complainant's trademark in a confusingly similar domain name, does not qualify as a bona fide offering of goods or services under Policy, paragraph 4(c)(iii) (see America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374; Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae,WIPO Case No. D2016-1450). C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
In the instant case, the Panel finds that Respondent must have had knowledge of Complainant's rights in the CHATROULETTE trademark at the moment it registered the Disputed Domain Name. Complainant has valid trademarks and offers products in the Netherlands, where Respondent is located. Respondent also presents its website as the Dutch version of CHATROULETTE, and offers services which are similar to the services offered by Complainant. The Panel finds that Respondent's use of the Disputed Domain Name suggests that Respondent was aware of Complainant and its CHATROULETTE mark. The Panel therefore finds that Respondent's awareness of Complainant's trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix ("voip") suggested knowledge of the complainant's rights in the trademarks).
The Panel also considers that, by hosting a website which offers online, webcam chat services in direct competition with Complainant's own offerings, Respondent is disrupting Complainant's business. The Panel also notes that Respondent's website features pay-per-click advertising. While the intention to earn click-through-revenue is not in itself illegitimate, the Panel finds that the use of a domain name that is identical to a trademark to obtain click-through-revenue can amount to bad faith use (see Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258; L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623). In the instant case, the Panel concludes that Respondent has intentionally attempted to attract Internet users to its website for commercial gain gain by creating a likelihood of confusion with Complainant's trademark. In accordance with paragraph 4(b)(iv) of the Policy, this is evidence of registration and use in bad faith.
Finally, by failing to respond to the Complaint, Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. 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 Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: April 19, 2017
Full & Egal Universal Law Academy