The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Andrei Gurbanov of Primorsky Krai, Russian Federation. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2018. On February 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 12, 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 the same date providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On February 12, 2018, the Center communicated to the Parties in English and Russian regarding the language of the proceedings. The Complainant filed an amended Complaint on February 14, 2018, which included a request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings.
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 February 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2018.
The Center appointed Mariya Koval as the sole panelist in this matter on March 14, 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 is Andrey Ternovskiy dba Chatroulette, which is an online chat website pairing random Internet users from all over the globe together for real-time and web-cam communication.
The Complainant is the proprietor of a number of registrations for the Trademark CHATROULETTE since 2011, within different jurisdictions, namely Russian Federation, the European Union, Germany and the United States of America (“United States”), including the following ones:
Trademark
Jurisdiction
Registration No.
Registration Date
IC class
CHATROULETTE
Russian Federation
429957
February 10, 2011
35, 38, 42
CHATROULETTE
European Union
008944076
December 4, 2012
35, 38, 42
CHATROULETTE
Germany
3020100037067
February 21, 2013
35, 38, 42
CHATROULETTE
United States
4445843
December 10, 2013
38, 45
The Chatroulette service and website was created in 2009 by Mr. Ternovskiy who at that time was a 17-year-old student of a high school in Moscow, Russian Federation. The Complainant has operated a website at the domain name since November 16, 2009. The Chatroulette website became popular very quickly and began to receive 500 visitors per day. One month later in January 2010 the number of visitors rose up to 50,000 per day, running now more than a quarter million visitors per month.
Chatroulette was featured and highlighted by number of publications 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”.
According to the WhoIs database the Disputed Domain Name was registered by the Respondent on August 6, 2017.
On January 5, 2018, the Complainant forwarded a cease-and-desist letter to the Respondent asking for the transfer of the Disputed Domain Name to the Complainant (Annex 10 to the Complaint). The Respondent did not respond to this letter and on January 10, 2018 the Complainant sent the second and final notice asking once more for the transfer of the Disputed Domain Name to the Complainant (Annex 10 to the Complaint). At the date of filing the Complaint no response from the Respondent has been received by the Complainant.
At the date of this decision, the website under the Disputed Domain Name is inactive. 5. Parties’ Contentions A. Complainant
The Complainant submits that the number of the registrations of the Complainant’s CHATROULETTE Trademark in different jurisdictions demonstrates the Complainant’s considerable investment in protection of its intellectual property rights.
The Complainant also notes that its extensive and continuous use of the CHATROULETTE Trademark and the consequent investment demonstrate that the Complainant enjoys a substantial degree of public recognition in the Complainant’s Trademark and that this mark has become uniquely and directly associated with the Complainant.
The Complainant contends that the Disputed Domain Name contains the Complainant’s CHATROULETTE Trademark in its entirety and, as a result, is identical to the Complainant’s Trademark.
The Complainant further contends that the Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name since the Respondent is not in any way sponsored by or affiliated with the Complainant and that the Complainant has not ever given any permission for use of its CHATROULETTE Trademark to the Respondent.
The Complainant alleges that the Disputed Domain Name has been registered and is being used in bad faith since the Respondent, having registered the Disputed Domain Name, which incorporates the Complainant’s CHATROULETTE Trademark in its entirety, has demonstrated a knowledge of and familiarity with the Complainant’s brand and business.
The Complainant finally contends that the Respondent had initially used a privacy service to hide its identity, which past Panels have held as further evidence of bad faith registration and use. B. Respondent
The Respondent has not filed a Response to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that the Respondent has registered a domain name which is:
(i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements to succeed. A. Language of Proceedings
According to the Paragraph 11 of the Rules the language of the proceeding shall be the language of the Registration Agreement unless the Panel determines otherwise. The Registrar has confirmed that the language of the Registration Agreement is Russian. The Complainant submitted the Complaint in English and requested English as the language of proceeding referring to the reasons, among others, that the Disputed Domain Name is comprised of Latin characters and the proceeding in other language but English would unduly burden the Complainant to have arrange and pay for translation.
The Respondent did not reply to the Center’s English and Russian communications in respect of the language of the proceeding, despite having been given the opportunity to submit any arguments/supporting materials as to why the proceedings should not be conducted in English. According to the Paragraph 10(c) of the Rules “The Panel shall ensure that the administrative proceeding takes place with due expedition”. In view of the above and that the Respondent in no way is participating in this proceeding, taking into consideration all other relevant circumstances of this case, the Panel accepts the Complaint as filed and concludes that it is appropriate that the language of the proceeding should be English. B. Identical or Confusingly Similar
The Panel accepts that the Complainant has established that it is the owner of the registered CHATROULETTE Trademark. The Complainant has registered exclusive rights in the CHATROULETTE Trademark in a number of jurisdictions around the world (Russian Federation, European Union, Germany, United States).
The Panel notes that the Complainant’s CHATROULETTE Trademark is constantly a subject for illegal exploitation in domain names registrations, see e.g. Andrey Ternovskiy dba Chatroulette v. WhoisGuard Protected, WhoisGuard, Inc. / Armando Machado, WIPO Case No. D2018-0082 (˂˃); Andrey Ternovskiy dba Chatroulette v. Artem Kravcov / Protection of Private Person,WIPO Case No. D2017-0416 (˂˃); Andrey Ternovskiy, dba Chatroulette v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-2122 (˂mon˃) and many others. A great number of proceedings initiated by the Complainant on the ground of illegal exploitation of its CHATROULETTE Trademark is a result of worldwide popularity and notoriety of the Complainant’s Trademark.
The Disputed Domain Name contains the entire Complainant’s registered CHATROULETTE Trademark and differs from the registered Trademark only by the generic top-level domain (“gTLD”) “.website”. It is well-established principle that the addition of a gTLD is irrelevant when considering, whether a trademark is identical or confusingly similar or not, under paragraph 4(a)(i) of the Policy, because gTLDs are viewed as a standard registration requirement, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), see also Idle Media, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Andrew Wisdom,WIPO Case No. D2017-0267; Andrey Ternovskiy, dba Chatroulette v. WhoisGuard Protected, WhoisGuard, Inc. / Abdennacer Hamdane, Nasser,WIPO Case No. D2016-2100.
The Panel concludes that the Disputed Domain Name is identical to the Complainant’s Trademark, disregarding the gTLD “.website”.
In light of the above the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. C. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant has made a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Disputed Domain Name is identical to the Complainant’s CHATROULETTE Trademark and name of its website for purposes of the Policy.
The Complainant has used its CHATROULETTE Trademark and its domain name ˂˃ since 2009 and also has had its first Trademark registration since 2011 that is long before the Respondent registered the Disputed Domain Name in 2017.
The Complainant has declared that it is not sponsored by or affiliated in any way with the Respondent and that it has not authorized the Respondent in any manner to use its CHATROULETTE Trademark.
Moreover the Panel finds that the Respondent, being a natural person, is not commonly known by the Disputed Domain Name, that demonstrates a lack of rights or legitimate interests in accordance with paragraph 4(c)(ii) of the Policy.
Furthermore, the Panel finds that there are no indications that the Respondent has made preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services and/or that it intends to make a legitimate, noncommercial or fair use of the Disputed Domain Name.
In the present case, by not submitting a Response to the Complainant’s contentions, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Disputed Domain Name.
For the above reasons, the Panel finds that the Complainant has satisfied the requirements of the second element of the Paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
The Panel finds that the Complainant’s first use and first registration of its CHATROULETTE Trademark significantly predates the registration of the Disputed Domain Name. Additionally, the Complainant registered its domain name and began operating its website at “www.” in 2009 long before the Respondent registered the Disputed Domain Name.
Moreover taking into account that the Respondent registered the Disputed Domain Name, that incorporates the CHATROULETTE Trademark in its entirety, it is more likely that the Respondent could not have been unaware of the Complainant’s well-known online chat website and Trademark at the time of registration of the Disputed Domain Name. Based on the evidence provided by the Complainant, the Panel holds the opinion that the Respondent was aware of the Complainant’s Trademark registrations and rights to the CHATROULETTE Trademark when it registered the Disputed Domain Name.
Furthermore the Complainant’s CHATROULETTE Trademark has been acknowledged as well-known by numerous UDRP decisions, see e.g. Andrey Ternovskiy dba Chatroulette v. A Anoniem,WIPO Case No. D2017-0940, Andrey Ternovskiy dba Chatroulette v. Alexander Ochkin,WIPO Case No. D2017-0334. Previous UDRP panels have ruled that in appropriate circumstances, bad faith is established where the Complainant’s Trademark has been shown to be well-known or in wide use at the time of registering a domain name, see, e.g. Société des Produits Nestlé S.A. v. Sonia de Ferrero,WIPO Case No. D2016-1300.
Accessing the Disputed Domain Name, the Internet users would most likely presume that the Disputed Domain Name is related to or associated with the Complainant and the Complainant’s service. Incorporation of internationally famous Trademark in the Disputed Domain Name for the purpose of attracting the users to an inactive website cannot be anyhow considered as fair use or use in good faith. Furthermore, UDRP panels have recognized that the non-use of a domain name would not prevent a finding of bad faith instead looking at the totality of the circumstances to establish bad faith, see section 3.3, WIPO Overview 3.0. With reference to the foregoing, and considering the totality of the circumstances, the Panel concludes that the Respondent has registered the Disputed Domain Name intending to target the goodwill and reputation of the Complainant’s well-known Trademark.
Additionally, the Respondent failed to respond to the Complainant’s cease-and-desist letters, namely ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding, that also leads Panel to the conclusion that the Respondent has registered and has used the Disputed Domain Name in bad faith.
Moreover the Panel agrees with the Complainant’s contention that privacy service was used by the Respondent on the date of initial filing the Complaint in this case with a purpose to hide its identity, also supports a finding the Respondent’s bad faith. Numerous past UDRP panels have held that hiding of the Respondent’s identity serves as further evidence of bad faith registration and use, see e.g. Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC / David Grandpierre,WIPO Case No. D2017-0456; Pearson Education, Inc. v. William M. Dees,WIPO Case No. D2011-1088.
Based on everything of the foregoing, the Panel finds that the Respondent has registered and has been using the Disputed Domain Name in bad faith. Accordingly, the Panel concludes that the third element of the Policy has been met. 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.
Mariya Koval
Sole Panelist
Date: March 26, 2018
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