The Complainant is Andrey Ternovskiy dba Chatroulette of Moscow, Russian Federation, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Registration Private, Domains by Proxy, LLC, DomainsByP of Scottsdale, Arizona, United States of America / David Grandpierre, webcam of New York, New York, United States of America ("United States"). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 28, 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 July 28, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 3, 2017 providing the Registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 5, 2017.
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 did not submit any response. Accordingly, the Center notified the Respondent's default on August 29, 2017.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on September 6, 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 created and owns "Chatroulette", an online chat website that pairs random people from around the world together for real-time webcam-based conversations. It is known for providing online video chat services and online social introduction and networking services.
The Complainant created the "Chatroulette" service and website in 2009 when he was a 17-year-old high school student in Moscow. The novel idea for "Chatroulette" stemmed from the Complainant's realisation at the time of its inception that no website existed which allowed for random video chatting with other Internet users from around the world. The Complainant chose the name "Chatroulette" after watching a film in which American soldiers in Viet Nam played the game of Russian roulette. By combining the term "chat" which is one of the core purposes of the website and the word "roulette" which has associations with the thrill of unpredictability, the essence of "Chatroulette" was captured. The Complainant submits that it coined a name which it felt encapsulated the ideas, goals and mission of its business. It has turned out to be a concept and name that people readily and eagerly embraced.
Shortly after its launch, the website began to receive 500 visitors per day and continued to experience consistent growth. By January 2010, the number of visitors per day had increased to approximately 50,000 or 1.5 million users per month.
This demonstrates the actual popularity that the Complainant and its website and business were able to achieve within mere months of its launch. It continues to be well known as one of the most popular video chat sites in the world and the website has generated interest and attention internationally amongst fans, the media and competitors. The Complainant exhibits at Annex 7 to the Complaint articles relating to the Complainant and at Annex 9 Google interest data.
The Complainant points out that the popularity of the website has unfortunately also spawned numerous copies and clone sites that mimic the website and functionality as well as encouraging a throng of other cyber squatters that wish to exploit the popularity and good will of the Complainant.
The Complainant has managed to achieve its popularity by news and media publicity. "Chatroulette" has also been featured and highlighted in numerous publications and media outlets including the New York Times, The New Yorker, New York Magazine and on television shows including Good Morning America and The Daily Show with Jon Stewart.
By the period August 2015 to August 2016 the visitors to the website amounted to approximately 260,000 per month.
The Complainant adduces evidence at Annex 2 to the Complaint of its trademark rights in CHATROULETTE throughout the world including its European Union trademark with registration number 008944076 registered on December 4, 2017 in Classes 35, 38 and 42, its German trademark with registration number 3020100037067, registered on February 21, 2013 in Classes 35, 38 and 42 and United States trademark with registration number 4445843 registered on December 10, 2013 in Classes 38 and 45.
The disputed domain name was registered on November 8, 2013 and resolves to a website offering Internet users random webcam-based interaction with each other.
In the absence of evidence to the contrary, the Panel accepts the evidence adduced by the Complainant as true and proceeds to determine this Complaint on the basis of this evidence. 5. Parties' Contentions A. Complainant
The Complainant submits:
1.1 The Complainant is the owner of worldwide trademark rights in the name "Chatroulette".
1.2 The disputed domain name is confusingly similar to CHATROULETTE in which the Complaint has trademark rights.
1.3 The Respondent has no rights or legitimate interests in respect of the disputed domain name, in particular there is no evidence that the Respondent is affiliated with the Complainant in any way.
1.4 The disputed domain name was registered and is being used in bad faith in particular the Complaint relies upon evidence that Respondent had employed a privacy to hide its identity and ignored the Complainant's attempts to resolve the dispute as well as its cease-and-desist letters.
1.5 The Respondent is using the disputed domain name to redirect users to a website offering website-based interaction between users. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
For the reasons set out above the Panel is satisfied that the Complainant has trademark rights in the mark CHATROULETTE.
The Complainant maintains that disputed domain name added the descriptive term "webcam" to the Complainant's mark thereby making the disputed domain name confusingly similar to the Complainant's trademarks. In particular the descriptive term "webcam" presents the service offered through the website associated with the Complainant's own domain name which permits users of the Complainant's website to communicate with one another.
The Complainant submits that the addition of a hyphen between the words "webcamchat" and "roulette" does nothing to distinguish the disputed domain name from the Complainant's trademarks. Furthermore, the Complainant contends that the use of the hyphen does not diminish the confusing similarity between the disputed domain name and the Complainant's trademarks and should be disregarded.
The Panel finds that the similarities between the Complainant's trademarks CHATROULETTE and the domain name in dispute are sufficient for it to find that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant submits that the Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant's trademarks in any manner including in domain names.
The Complainant points out that the Respondent is not commonly known by the disputed domain name nor for the reasons set out below is it making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. To the contrary, the Respondent's website at the disputed domain name is used by the Respondent to offer and attempt to sell products of the Complainant's competitors which directly compete with the Complainant. The Panel has seen at Annex 4 to the Complaint a screen shot of the disputed domain names website.
In these circumstances the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant submits that at the time of the registration of the disputed domain name, the Respondent knew or at least should have known of the existence of the Complainant's marks and that registration of the domain names containing well known trademarks constitutes bad faith per se. Moreover, since the Respondent is trading in a similar sphere of activity and given the very significant publicity and reputation attached to the Complainant's website, the Respondent should have been aware of the Complainant's rights.
The Complainant also submits that the Respondent's use of the disputed domain name constitutes a disruption of the Complainant's business and qualifies as bad faith registration under paragraph 4(b)(iii) of the Policy because the Respondent's domain name is confusingly similar to the Complainant's trademarks and the website operated under the disputed domain name features a webcam based interactive user experience similar to that offered by the Complainant.
The Complainant relies upon evidence that the Respondent has ignored the Complainant's attempts to resolve this dispute. In particular it has failed to respond to cease and assist letters sent to the Respondent. These are exhibited at Annex 10 to the Complaint.
In summary, the Complainant submits that on the balance of the facts adduced by it, more likely than not the Respondent knew and targeted the Complainant's trademarks and therefore has registered and used the disputed domain name in bad faith.
Taking these factors into account, and also taking into account that there is no evidence to the contrary from the Respondent, the Panel finds that the disputed domain name was registered and used in bad faith by the Respondent. 7. Decision
For all 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.
Clive Duncan Thorne
Sole Panelist
Date: September 19, 2017
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