The Complainant is Andrey Ternovskiy dba Chatroulette of Moscow, Russian Federation, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Admin ContactID 2420118, FBS INC, Whoisprotection biz / Masallah Avci of Istanbul, Turkey, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with FBS Inc. (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2017. On July 31, 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 disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint and indicating that the language of the registration agreement of the disputed domain name is Turkish. The Center sent an email communication to the Complainant on August 1, 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 7, 2017.
Pursuant to the Complaint submitted in English and the registrar verification dated August 1, 2017 stating that Turkish is the language of the registration agreement of the disputed domain name, on August 1, 2017, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On August 7, 2017, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding but it submitted an informal communication in English and Turkish on August 15, 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 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2017. The Respondent submitted an informal communication whereby it consented to the transfer of the disputed domain name to the Complainant. Upon the Complainant’s request, the proceeding was suspended on August 24, 2017 until September 23, 2017 for settlement negotiations between the Parties. On September 19, 2017, the Complainant requested the recommencement of the proceeding and accordingly, the proceeding was recommenced on the same day. The Center notified the Parties that the Response due date was September 26, 2017. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on September 27, 2017.
The Center appointed Dilek Üstün Ekdial as the sole panelist in this matter on October 5, 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 Andrey Ternovskiy dba Chatroulette is the owner of trademark registrations across various jurisdictions such as the European Union Intellectual Property Office (“EUIPO”), the German Patent and Trade Mark Office (“DPMA”) and the United States Patent and Trademark Office (“USPTO”) for the mark CHATROULETTE:
- CHATROULETTE EUIPO Registration Number 008946352 in the classes 35, 38, 42, registered on August 19, 2012;
- CHATROULETTE DPMA Registration Number DE302010003706 in the classes 35, 38, 42, registered on February 21, 2013;
- CHATROULETTE USPTO Registration Number 4445843 in the classes 38, 45, registered on December 10, 2013.
The Complainant is an online chat service provider that pairs random people from around the world together for real-time, webcam-based conversations.
The Complainant’s first use in commerce of the CHATROULETTE mark date back to 2009.
The Complainant’s domain name was registered on November 16, 2009.
According to the WhoIs information as confirmed by the Registrar, the disputed domain name was registered on September 24, 2016.
The disputed domain name does not currently resolve to an active website. However, the Complainant submitted a printout of the Respondent’s website (Annex 4 to the Complaint) indicating that the disputed domain name was used by the Respondent for competing services, i.e. for online chatting services, and that the links on the website at the disputed domain name resolved to pages belonging to the Complainant’s competitors. 5. Parties’ Contentions A. Complainant
According to the Complainant the disputed domain name is identical or confusingly similar to the Complainant’s CHATROULETTE marks.
The disputed domain name fully incorporates the Complainant’s CHATROULETTE trademark while adding the trademark of one of Complainant’s direct competitors, namely OMEGLE. As such, the disputed domain name must be considered confusingly similar to Complainant’s trademark.
Also addition of the generic Top-Level Domain (“gTLD”) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity of the disputed domain name to the trademarks.
The Complainant also stated that the Respondent’s use of the Disputed Domain Name contributes to the confusion. The Respondent used the disputed domain name to resolve to a website that allows users to “find sites like omegle and chatroulette alternatives”. In essence, the Respondent used the disputed domain name to not only promote the Complainant’s services but also the services of the Complainant’s direct competitors, which suggests that the Respondent intended the disputed domain name to be confusingly similar to the Complainant’s trademark as a means of furthering consumer confusion.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in a domain name.
The Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests.
The Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial fair use of the disputed domain name. On the website available at the disputed domain name, the Respondent offers and attempts to sell the products of the Complainant’s competitors, which directly compete with the Complainant’s own offerings. Previous UDRP panels have consistently held that selling competing goods, coupled with the unauthorized use of a complainant’s trademarks in a confusingly similar domain name, does not qualify as a bona fide offering of goods or services under Policy 4(c)(iii).
According to the Complainant, the disputed domain name was registered and is being used in bad faith. The Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website of the disputed domain name, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website. B. Respondent
The Respondent did not submit a formal response; however it submitted an informal communication in English and Turkish whereby it consented to the transfer of the disputed domain name to the Complainant. 6. Discussion and Findings 6.1. Language of the Proceeding
Although the language of the registration agreement of the disputed domain name is Turkish, the Panel determines in accordance with the Rules, paragraph 11(a) that the language of this administrative proceeding shall be English. The Panel finds that it would be inappropriate to conduct the proceeding in Turkish and request a Turkish translation of the Complaint, noting that the Respondent has failed to raise any objection with regard to the language of the proceeding and submitted an informal communication in both English and Turkish. 6.2. Substantive Issues
Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Section 1.12 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) reads as follows:
“Where the complainant’s trademark is recognizable within the disputed domain name, the addition of other third-party marks (i.e., ), is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark under the first element.”
There is no dispute that the Complainant holds rights in the mark CHATROULETTE. As respects confusing similarity, the Panel concludes that the Domain Name is in fact confusingly similar to the CHATROULETTE mark. The disputed domain name wholly incorporates the CHATROULETTE mark, and adds a third-party trademark, namely OMEGLE. The addition of the OMEGLE mark does not diminish the confusing similarity between the disputed domain name and the CHATROULETTE mark.
Previous UDRP panels have consistently found that the respondent’s inclusion of a third-party trademark in a domain name does not eliminate the visual impression that the disputed domain name is associated with the complainant’s trademark. (See to this effect, inter alia, Pfizer, Inc. v. Martin Marketing,WIPO Case No. D2002-0793; and Hofmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,WIPO Case No. D2003-0793; see also WhatsApp Inc. v. Private Whois , Private Whois and Private Whois ,WIPO Case No. D2012-0674; Yahoo! Inc. v. Scott Mcvey,WIPO Case No. D2011-1486.
The Panel concludes that Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name. It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by its using the disputed domain name. Nor has the Respondent shown that it has been commonly known by the disputed domain name. Rather, the evidence of the Complainant suggests that the Respondent has used the disputed domain name in an attempt to trade off the goodwill associated with the Complainant’s trademark.
The Complainant also showed, inter alia, that the Respondent has neither a license nor any other permission to use the Complainant’s trademark in the disputed domain name or otherwise.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
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 Panel is of the opinion that when the Respondent registered the disputed domain name it knew that CHATROULETTE was the trademark of the Complainant, and that the Respondent registered the disputed domain name in bad faith.
It is obvious to this Panel that by using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. In view of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.
There is no suggestion that the Respondent had any intention of legitimate use, that it enjoys a legitimate connection to the disputed domain name or that there is conceivable good faith use for the disputed domain name. After examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly the Panel finds in favor of the Complainant on the third element 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.
Dilek Üstün Ekdial
Sole Panelist
Date: October 25, 2017
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