The Complainant is Andrey Ternovskiy dba Chatroulette of Moscow, Russian Federation, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Sergey Kurguzenkov of Uman, Ukraine, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2017. On July 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 2017, 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 Complaint was submitted in the English language. The language of the Registration Agreement for the Domain Name is Russian. On August 1, 2017, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The Complainant requested in the amended Complaint filed with the Center on August 3, 2017, that English be the language of the proceeding. The Respondent replied to the Center’s notification and the Complainant’s submission but did not object to the Complainant’s request.
The Center verified that the Complaint together with the 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 the Respondent of the Complaint, and the proceedings commenced on August 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2017. The Respondent sent two email communications to the Center on August 21, 2017 and August 23, 2017.
The Complainant submitted a request for suspension on August 24, 2017. The Center notified the Parties on the same day that the proceeding was suspended until September 23, 2017. On September 18, 2017, the Complainant submitted a request to reinstitute this proceeding. On September 25, 2017, the Center informed the Parties the proceeding was reinstituted, including the new deadline for the Respondent to file a Response. The Center notified the parties the commencement of the panel appointment process on October 6, 2017.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on October 11, 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
The Complainant is the owner of Chatroulette 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 the following trademark registrations:
- European Union Trademark Registration CHATROULETTE No. 8944076, registered on December 4, 2012, duly renewed, and covering goods and services in classes 35, 38, 42;
- Russian Trademark Registration CHATROULETTE No. 429957, registered on February 10, 2011 and covering goods and services in classes 35, 38, 42;
- German Trademark Registration CHATROULETTE No. 302010003706, registered on February 21, 2013 and covering goods and services in classes 35, 38, 42;
- American Trademark Registration CHATROULETTE No. 4445843, registered on December 12, 2013 and covering goods and services in classes 35, 45.
The Complainant also owns the domain name .
The disputed domain name was registered on April 12, 2012.
The disputed domain name currently resolves to a website in Russian offering webcam based interaction between Internet users.
On May 26, 2017 and June 6, 2017, the Complainant’s representative sent a cease-and-desist letter to the Respondent. 5. Parties’ Contentions A. Complainant
Firstly, the Complainant contends that the disputed domain name is confusingly similar to the CHATROULETTE mark since it contains the mark in its entirety. According to the Complainant, the addition of the geographically descriptive term “ru,” along with a hyphen does not alter the underlying trademark or negate the confusing similarity.
Secondly, the Complainant states that the Respondent has no legitimate interests in the disputed domain name. According to the Complainant, the Respondent is neither known by the name of “Chatroulette” nor affiliated with the Complainant in any way, nor has he been authorized or licensed by the Complainant to use and register its mark, or to seek registration of any domain names incorporating the aforesaid mark. The Complainant emphasizes that 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 the Respondent offers and attempts to sell the products of Complainant’s competitors, which directly compete with Complainant’s own offerings.
Thirdly, the Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. This is because in addition to the numerous trademarks filed in connection with the Complainant’s business prior to the Respondent’s registration of the disputed domain name, the Complainant has retained impressive web traffic at “www.”. Moreover, the Complainant asserts that the Respondent’s use of the disputed domain name constitutes a disruption of its business as the website created under the disputed domain name features a webcam based on interactive user experience similar to that offered by the Complainant. Finally, the Complainant emphasizes that the Respondent has ignored its attempts to resolve this dispute outside of this administrative proceeding. B. Respondent
In the email communication of August 23, 2017, the Respondent expressed his will to suspend the operation of the website under the disputed domain name. The Respondent did not make any further submissions. 6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met. A. Preliminary Issue: Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “[u]nless 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.”
The Complaint was filed in English. The Complainant requested English to be the language of the administrative proceeding. The Complainant asserted that translating the Complaint from English into Russian would result in substantial expenses and unduly delay the administrative proceeding. The Complainant also drew the Panel’s attention to the fact that the website under the disputed domain name is presented in both Russian and English. The Respondent was properly notified about the language of the proceeding in English and Russian, and the Respondent has not objected to the Complainant’s language request.
Taking all the circumstances into account, including the Respondent’s failure to comment on this issue, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules. B. Identical or Confusingly Similar
The disputed domain name contains the CHATROULETTE mark in its entirety. The addition of the letters “ru-” which commonly stands for Russian Federation does not serve to distinguish the disputed domain name from the Complainant’s mark. Moreover, the adjunction of a generic Top-Level Domain is irrelevant for a finding of confusing similarity (Heineken Italia S.p.A. v. xiongmiao,WIPO Case No. D2016-2193; and Les Laboratoires Servier v. miller / JunZe zhang,WIPO Case No. D2016-2029).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the CHATROULETTE mark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (See Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use the CHATROULETTE mark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, in particular, the use of the disputed domain name to create a website offering the same kind of services as offered by the Complainant cannot be qualified as a bona fide offering of goods or services.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and concludes that the second element of paragraph 4(a) of the Policy is satisfied. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
At the time of registration of the disputed domain name, the CHATROULETTE mark was already registered in Russian Federation. Moreover, the Complainant’s business under the name ‘Chatroulette’ which is based on the Internet communication was very popular then. In the Panel’s opinion, the above circumstances as well as similarity of the disputed domain name with the CHATROULETTE mark itself indicates that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name.
The Respondent has also used the disputed domain name in bad faith which is evidenced by the fact that the Respondent’s website offers Internet communication services similar to those offered by the Complainant.
Moreover, the Panel finds that the Respondent’s failure to answer the Complainant’s cease and desist letter can be taken into account in a finding of bad faith (See Encyclopedia Britannica v. Zuccarini,WIPO Case No. D2000-0330). In the absence of a plausible explanation from the Respondent as to how and why his registration and use of the Complainant’s mark is appropriate or necessary for the operation of his business or personal affairs, the Panel finds that he registered and used the disputed domain name to take advantage of the goodwill of the Complainant and to somehow turn a profit from it.
The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, or endorsement of or affiliation with the website, pursuant to paragraph 4(b)(iv) of the Policy, and that the third element of paragraph 4(a) is satisfied. 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.
Piotr Nowaczyk
Sole Panelist
Date: October 25, 2017
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