The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Armando Machado of Valbom, Portugal. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2018. On January 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2018, 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 January 18, 2018 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 January 23, 2018.
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 January 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2018.
The Center appointed Alistair Payne as the sole panelist in this matter on February 16, 2018. 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 has since 2009 operated an online chat website that pairs random people around the world for real time conversations, under the name, style or mark CHATROULETTE. The Complainant owns various trade mark registrations for this mark, including European Union Trade Mark (“EUTM”) CHATROULETTE (word mark) No. 008944076 filed on March 10, 2010 and registered on December 4, 2012. It registered its domain name on November 16, 2009 and commenced its online chat website very soon afterwards.
The disputed domain name was registered on May 25, 2017 and resolves to a place-keeper site. 5. Parties’ Contentions A. Complainant
The Complainant submits that he coined the mark CHATROULETTE and has operated an online chat website from the domain name for many years. He says that the website and mark has developed a very significant goodwill and reputation as a consequence of substantial website traffic growth which even by January 2010 had increased to 50,000 visitors per day (approximately 1.5 million users per month). Subsequently, says the Complainant, his website very quickly developed an even more significant following, such that it has been featured in and highlighted by numerous publications and media outlets including The New York Times, The New Yorker, and New York magazine, as well as on television shows including Good Morning America and The Daily Show with Jon Stewart. He says that according to A statistics, the Chatroulette website, located at , received over 270,000 unique monthly visitors in the month of December 2017, earning a global website popularity rank of 18,214.
The Complainant submits that it owns various trade mark registrations for its CHATROULETTE mark, including EUTM CHATROULETTE (word mark) No. 008944076 that was filed in 2010 and registered in 2012. It says that the disputed domain name can be considered as capturing, in its entirety, the Complainant’s CHATROULETTE trade mark. It notes that the disputed domain name adds a hyphen to separate the trade mark terms “chat” and “roulette” and also the generic abbreviated term “app” to the end of the trade mark. It submits that the Respondent’s addition of a hyphen does nothing to distinguish the disputed domain name from the Complainant’s trademarks and the mere addition of the term “app” does not diminish the level of confusing similarity. As a consequence, the Complainant submits that the disputed domain name is confusingly similar to its CHATROULETTE trade mark.
The Complainant says that the Respondent is not sponsored by or affiliated with the Complainant in any way, that the Complainant has not given the Respondent permission or licensed the Respondent to register domain names incorporating the Complainant’s trade mark, or to use the Complainant’s trade marks in any manner. Further, the Complainant submits that the Respondent is not commonly known by the disputed domain name. In addition, the Complainant submits that the disputed domain name resolves to an inactive holding page and the fact that the Respondent has failed to make any use of the disputed domain name is further consistent with a lack of rights or legitimate interests.
It is apparent, says the Complainant that the Respondent registered the disputed domain name in May 2017 many years after the Complainant started its website at the domain name in 2009. As a consequence of the very substantial degree of renown attaching to the Complainant’s CHATROULETTE mark and website by 2017, the Complainant says that the Respondent must have been aware of its mark and chat site and registered the disputed domain name with knowledge and in bad faith.
Although the Complainant admits that the disputed domain name resolves to an in-active place-keeper site, he says that in all the circumstances this amounts to a passive holding of the disputed domain name in bad faith. He notes the very distinctive nature of the Complainant’s CHATROULETTE mark and the very substantial degree of renown attaching to it. He says that the real owner of the disputed domain name has since registration engaged the Respondent privacy service to hold the disputed domain name in order to hide the owner’s real identity and the Respondent or the real owner have failed to respond to any of the cease and desist letters sent by the Complainant prior to the commencement of these proceedings. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns various registered trade mark rights for its CHATROULETTE mark and in particular EUTM No. 008944076. The disputed domain name wholly incorporates this mark but also includes a hyphen between “chat” and “roulette” and adds in the descriptive abbreviated term “app” at the end. The Panel finds that neither of these additions function to distinguish the disputed domain name from the Complainant’s trade mark and as a consequence that the disputed domain name is confusingly similar to the Complainant’s CHATROULETTE registered trade mark. Accordingly, the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent is not sponsored by or affiliated with Complainant in any way, that the Complainant has not given the Respondent permission or licensed the Respondent to register domain names incorporating the Complainant’s trade mark, or to use the Complainant’s trade marks in any manner. Further, it says that the Respondent is not commonly known by the disputed domain name. In addition, says the Complainant, the disputed domain name resolves to an inactive holding page and the fact that the Respondent has failed to make any use of the disputed domain name is further consistent with a lack of rights or legitimate interests.
The Panel notes that there is no evidence on the record that Mr. Armando Machado, as the real owner of the disputed domain name, is known by the CHATROULETTE name or mark and there is nothing otherwise to suggest that the Respondent has bona fide rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has failed to rebut this case. In these circumstances and for the additional reasons set out under Part C below, the Panel finds that the Complaint also succeeds under the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant’s CHATROULETTE mark is a coined term and quite distinctive and has been used by the Complainant in its business and for its own domain name since 2009. It seems to the Panel that the Complainant’s mark has developed a very high degree of renown as a result of the very substantial use made of it since 2009 and of the popularity of the Complainant’s online chat website. In these circumstances the Panel infers that the Respondent is more likely than not to have been aware of the Complainant’s mark and service when it registered the disputed domain name incorporating the Complainant’s distinctive mark.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 3.3, describes the circumstances under which the passive holding of a domain will be considered to be a bad faith registration: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case, the CHATROULETTE trade mark is quite distinctive and it seems unlikely that the Respondent would have invented it independently for its own purposes. A high degree of renown attaches to the Complainant’s CHATROULETTE mark as a result of its online chat service being very popular and having a very high Internet user following. The Complainant sent cease and desist letters on October 19, 2017 and on October 30, 2017 to the Respondent prior to the commencement of these proceedings but received no response. Finally, the disputed domain name was formerly held by a privacy service and the identity of the real owner was concealed. All of these factors are indicative of the disputed domain name being held passively and in bad faith.
As a result, the Panel finds that the disputed domain name was both registered and has been used in bad faith and that the Complaint succeeds under 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.
Alistair Payne
Sole Panelist
Date: March 2, 2018
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