The Complainant is Andrey Ternovskiy dba Chatroulette of Moscow, Russian Federation ("Russia"), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Quan Wen Jun of Guangzhou, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with West263 International Limited (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on August 10, 2017. On August 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 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. On August 15, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding and submitted an amended Complaint on August 17, 2017. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on August 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 12, 2017.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on September 20, 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 the Chatroulette online chat website that pairs random people from around the world together for real-time, webcam-based conversations in 2009, when he was just a 17-year-old high school student in Moscow, Russia. The Complainant coined the name "Chatroulette" to capture the essence of the website by combining the term "chat", referring to one of the core purposes of the website, and the term "roulette", in reference to the game Russian roulette and the thrill of unpredictability. The Chatroulette website quickly established popularity and a high-profile reputation. Shortly after its launch, the website began to receive 500 visitors per day, and only one month later that number increased to 50,000 visitors per day (about 1.5 million users per month). After another month, the traffic jumped to 130,000 visitors per day (about 3.9 million users per month).
The Chatroulette website continues to be one of the most popular video chat sites in the world and has generated significant interest and media attention. The website has been featured in and highlighted by numerous publications and media outlets, including The New York Times, The New Yorker, and New York Magazine, and the television shows Good Morning America and The Daily Show with Jon Stewart.
The Complainant is the owner of trademark registrations for CHATROULETTE, including in the European Union (Registration No. 008944076, registered on December 4, 2012), Germany (Registration No. 302010003706, registered on February 21, 2013), and the United States of America (Registration No. 4445843, registered on December 10, 2013).
The Respondent registered the disputed domain name on April 12, 2017. The disputed domain name resolves to a website that features sexually explicit, pornographic content, contains links to download pirated movies, and attempts to infect visitors' computers with viruses or malware. On May 30, 2017, the Complainant sent a cease-and-desist letter to the Respondent and, on June 9, 2017, the Complainant send a second follow-up letter to the Respondent, both requesting transfer of the disputed domain name. The Respondent did not respond to the correspondence. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant's trademark. The Complainant is the owner of the CHATROULETTE mark. The Complainant is not required to register its mark within the Respondent's country in order to protect its rights in the mark. When comparing the disputed domain name to the Complainant's mark, the relevant comparison is between the mark and only the second-level portion of the disputed domain name. The Top-Level Domain ("TLD") should not be considered. In this case, the disputed domain name includes the CHATROULETTE mark in its entirety. The addition of the generic terms "www" and "com" to the beginning and end of the trademark, respectively, does not negate the confusing similarity between the disputed domain name and the CHATROULETTE mark. Similarly, the hyphens in the disputed domain name do not distinguish it from the Complainant's trademark and should be disregarded.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant's trademark registrations are prima facie evidence of the validity of the term "chatroulette" as a trademark, of the Complainant's ownership of the trademark, and of the Complainant's exclusive right to use the CHATROULETTE trademark in commerce or in connection with the goods and/or services recited in the registrations. The Respondent is not sponsored by or affiliated with the Complainant in any way and the Complainant has not given the Respondent permission to use the Complainant's trademark in any manner, including in domain names. The Respondent is not commonly known by the disputed domain name. The WhoIs data for the disputed domain name suggests that the Respondent is known as an entity other than the Complainant's trademark. The disputed domain name resolves to a website featuring adult content, which is not a bona fide offering of goods or services or a legitimate or noncommercial fair use of the disputed domain name, further evincing a lack of rights or legitimate interests. The Respondent's website also provides access to links to download pirated movies, which also indicates that the Respondent does not have any bona fide offering of goods or services. Such links attempt to download files with viruses or malware. The Respondent's nefarious use of the disputed domain name to spread malware or viruses to Internet users also evinces a lack of rights or legitimate interests.
Finally, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. At the time of registration of the disputed domain name, 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. The disputed domain name resolves to a website that attempts to infect Internet users' computers with viruses or malware, that makes available pirated movies for download (which also contain files with malware and/or viruses), and that also features sexually explicit, pornographic content. Additionally, the Respondent ignored the Complainant's attempts to resolve this dispute outside of this proceeding. These facts evidence the Respondent's bad faith use of the disputed domain name.
The Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1 Language of the Proceeding
The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The Rules also provide that the panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment. Regardless, the Respondent's conduct suggests that the Respondent understands English. The disputed domain name consists of Latin characters and English terms with no meaning in Chinese. Additionally, the Respondent's website contains English terms. What is more, if the Complainant were to submit all documents in Chinese, the proceeding would be unduly delayed.
6.2 Substantive Discussion
The Policy provides for transfer or cancellation of the disputed domain name if the complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
(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 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
The Complainant has rights in the CHATROULETTE trademark. The Complainant has established that it is the registered owner of trademark registrations of the CHATROULETTE trademark. Although the Complainant does not own a trademark registration in China, where the Respondent is located, this is not required for purposes of paragraph 4a(i) of the Policy. "It is sufficient that a complainant can demonstrate a mark in some jurisdiction." Koninklijke KPN N.V. v. Telepathy Inc.,WIPO Case No. D2001-0217. The Panel accepts that the Complainant's CHATROULETTE mark is internationally well-known.
The disputed domain name comprises the CHATROULETTE mark in its entirety, the terms "www" and "com" and the TLD ".loan". As a technical part of a domain name, the ".loan" TLD is not relevant in determining confusing similarity and is without legal significance. See Alienware Corporation v. Truther,WIPO Case No. DCO2012-0027; Belo Corp. v. George Latimer, WCM, Inc.,WIPO Case No. D2002-0329. Similarly, the hyphens in the disputed domain name may be ignored. Punctuation is irrelevant in the confusing similarity analysis and does not distinguish the disputed domain name from the Complainant's trademark. See, e.g., Yahoo! Inc. v. wangwei, gaohaolvshishiwusuo/shaoxiaogen, wang tian, ni maiwo, fangjincheng,WIPO Case No. D2014-0714. The addition of the letters "www" and "com", does not sufficiently distinguish the disputed domain name from the Complainant's trademark. See Compagnie Générale des Establissements Michelin-Michelin & Cie. v. Tgifactory,WIPO Case No. D2000-1414. CHATROULETTE remains the dominant component of the disputed domain name and the disputed domain name is, therefore, confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the Respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) The Respondent's use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; or
(ii) The Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant contends, and the Respondent does not deny, that the Complainant never authorized the Respondent to use its CHATROULETTE trademark or to register any domain name incorporating that trademark. The Respondent is not affiliated with the Complainant in any way. Additionally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant's CHATROULETTE mark is widely known around the world. In the absence of any evidence to the contrary, knowledge of the Complainant's rights in the CHATROULETTE trademark may be imputed to the Respondent at the time of registration of the disputed domain name. Because the name "Chatroulette" bears no obvious relationship to the Respondent, "the inevitable conclusion is that these words are not ones that the Respondent would legitimately choose in the context of provision of goods, services or information via a web site unless seeking to create an impression of an association with the Complainant." See Harvey Norman Retailing Pty Ltd v. Pty Ltd,WIPO Case No. D2000-0945. No rights or legitimate interests can be created where the Respondent would not have chosen the disputed domain name unless seeking to create an impression of association with the Complainant. See Drexel University v. David Brouda,WIPO Case No. D2001-0067.
Furthermore, the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services. Although the offering of an adult-oriented website is not illegitimate per se, using a domain name that is confusingly similar to the Complainant's trademark to attract users to the Respondent's commercial site is not a bona fide offering of services. See A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen,WIPO Case No. D2001-0900. Similarly, the offering of pirated movies for download does not constitute a bona fide offering of goods or services because the Respondent's website is offering illegal content.
Accordingly, the record indicates that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Respondent must have been aware of the Complainant and its trademark at the time of registration of the disputed domain name. The CHATROULETTE trademark and the Chatroulette website are well known throughout the world. The Complainant's website is extremely popular and enjoyed by Internet users globally. Even though the Complainant does not own a trademark registration for the CHATROULETTE trademark in China, where the Respondent is located, the Respondent nonetheless should have been aware of the Complainant and its rights in the mark. A simple Internet search for CHATROULETTE would have yielded many obvious references to the Complainant and its website. Bad faith registration can be inferred from the Respondent's registration of a domain name incorporating a well-known mark of which the Respondent must have been aware without any evident right to do so. See Hurriyet Gazetecilik ve Matbaacilik Anonim Sirketi v. Onuno L.L.C.,WIPO Case No. D2015-1504; AXA S.A. v. P.A. van der Wees,WIPO Case No. D2009-0206; BHP Billiton Innovation Pty Ltd v. Ravindra Bala,WIPO Case No. D2008-1059.
By fully incorporating the CHATROULETTE trademark into the disputed domain name and by using the website at such domain name in connection with a commercial website providing pornographic content, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for commercial gain, which constitutes bad faith under paragraph 4(b)(iv) of the Policy. V&S Vin & Sprit AB v. VCN - Whois Protection Service Panama,WIPO Case No. D2010-0715. Additionally, using a well-known trademark in connection with a pornographic website has been found to be bad faith registration and use. See id.; La Quinta Worldwide, LLC v. Andirich, AndiPerdana / WhoisGuard Protected,WIPO Case No. D2011-1684 ("The conduct of using the Complainant's trademark as part of a domain name in order to expose Internet users to material of a pornographic nature is evidence of bad faith."); GA MODEFINE SA v. pumo,WIPO Case No. D2006-0619. The Respondent also uses the goodwill and reputation established by the Complainant in the CHATROULETTE trademark to direct Internet users to a website that attempts to spread malware or viruses, which indicates opportunistic bad faith. See Wikimedia Foundation, Inc. v. RespectedR / Email Marketing Systems Inc,WIPO Case No. D2015-1820. Additionally, the Respondent's failure to respond to the Complainant's efforts to contact the Respondent for settlement outside of this proceeding "provide[s] strong support for a determination of 'bad faith' registration and use." Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330.
For these reasons, the Panel finds that the Respondent's registration and use of the disputed domain name is 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 the Complainant.
Kimberley Chen Nobles
Sole Panelist
Date: September 28, 2017
Full & Egal Universal Law Academy