The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Andrei Tyukalov of Moscow, Russian Federation, self-represented. 2. The Domain Names and Registrars
The disputed domain name is registered with Registrar of Domain Names REG.RU LLC. The disputed domain names and are registered with Tucows Inc. 3. Procedural History
The Complaint in respect of the disputed domain name was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 5, 2018. The proceeding was assigned case number D2018-0235. On February 5, 2018, the Center transmitted by email to the Registrar of Domain Names REG.RU LLC a request for registrar verification in connection with this disputed domain name. On February 6, 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 February 7, 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 February 12, 2018.
The Complaint in respect of the disputed domain name was filed with the Center on February 5, 2018. The proceeding was assigned case number D2018-0239. On February 5, 2018, the Center transmitted by email to the Registrar Tucows Inc. a request for registrar verification in connection with this disputed domain name. On February 5, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for this 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 February 7, 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 February 14, 2018.
The Complaint in respect of the disputed domain name was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 12, 2018. The proceeding was assigned case number D2018-0311. On February 12, 2018, the Center transmitted by email to the Registrar of Domain Names Tucows Inc. a request for registrar verification in connection with this disputed domain name. On February 12, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for this 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 March 2, 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 March 6, 2018.
The Center verified that the above Complaints 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 in respect of the disputed domain name , and the proceedings commenced on February 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2018. On March 9, 2018, the Respondent requested an extension of the due date for the Response; the new due date for the Response was March 17, 2018. The Response in respect of the disputed domain name was filed with the Center on March 16, 2018.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in respect of the disputed domain name , and the proceedings commenced on February 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2018. On March 5, 2018, the Respondent requested an extension of the due date for the Response; so that the new due date for the Response was March 10, 2018. On March 9, 2018, the Respondent requested an additional extension of the due date for the Response, so that the new due date for the Response was March 17, 2018.The Response in respect of the disputed domain name was filed with the Center on March 16, 2018.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in respect of the disputed domain name , and the proceedings commenced on March 9, 2018. In accordance with the Rules, paragraph 5, the due date for this Response was March 29, 2018. On March 16, 2018, the Respondent requested a four day extension of the due date for the Response, which request was granted by the Center on March 18, 2018, so that the new due date for the Response was April 2, 2018. The Response in respect of the disputed domain name was filed with the Center on March 30, 2018.
The Center appointed Assen Alexiev as the sole panelist inWIPO Case No. D2018-0235 and inWIPO Case No. D2018-0239 on April 5, 2018. The Center appointed Assen Alexiev as the sole panelist inWIPO Case No. D2018-0311 on April 12, 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
In 2009, the Complainant created the online chat website Chatroulette, which pairs random people from around the world together for real time, webcam-based conversations, and provides online video chat services and online video social introduction and networking services. The Complainant created the name Chatroulette by combining the term "chat" (one of the core services offered by the Complainant's website), with the word "roulette", which is associated with the thrill of unpredictability. Very shortly after its launch, the Chatroulette website began to receive 500 visitors per day while continuing to experience consistent growth, and only one month later in January 2010, this figure had increased to 50,000 visitors per day (approximately 1.5 million users per month). In February 2010, the traffic increased to approximately 130,000 visitors per day (3.9 million monthly visitors). According to A statistics, the Complainant's Chatroulette website received over 270,000 unique monthly visitors in the month of December 2017, earning a global popularity rank of 18,214.
The Complainant owns a number of trademark registrations for the sign CHATROULETTE around the world, including the following registrations (the "CHATROULETTE trademark"):
- The European Union trademark CHATROULETTE with registration No. 008944076, registered on December 4, 2012, covering services in International Classes 35, 38 and 42;
- The German trademark CHATROULETTE with registration No. 3020100037067, registered on February 21, 2013, covering services in International Classes 35, 38 and 42;
- The United States trademark CHATROULETTE with registration No. 4,445,843, registered on December 10, 2013, covering services in International Classes 38 and 45.
The Complainant operates its official website at the domain name , which was registered on November 16, 2009.
The disputed domain names and were registered on November 23, 2016, and the disputed domain name was registered on November 27, 2016. At the time of filing of the Complaints, the disputed domain names resolved to websites offering webcam chatting services. 5. Parties' Contentions A. Complainant
The Complainant submits that each of the disputed domain names contains the Complainant's CHATROULETTE trademark in its entirety, thus resulting in domain names that are identical to the trademark.
According to the Complainant, the Respondent has no rights and legitimate interests in the disputed domain names. The Respondent is not commonly known by the disputed domain names, it is not sponsored by or affiliated with the Complainant, and the latter has not given to the Respondent a permission to use the Complainant's CHATROULETTE trademark in any manner. The Respondent registered the disputed domain names in 2016, significantly later than the registration of the CHATROULETTE trademark and of the Complainant's domain name in 2009. The Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. The websites associated to the disputed domain names offer services that directly compete with the Complainant's own offerings.
The Complainant contends that the disputed domain names were registered and are being used in bad faith. By registering domain names that incorporate the Complainant's CHATROULETTE trademark in its entirety, the Respondent has created domain names that are confusingly similar to the same trademark and to the Complainant's domain name. The Respondent uses the disputed domain names to provide webcam-based roulette-style video interaction between users, which is similar to the Complainant's business. In view of this, the Respondent must have been aware of the Complainant's brand and business at the time the disputed domain names were registered.
According to the Complainant, the Respondent's use of the disputed domain names disrupts the Complainant's business. The Respondent creates a likelihood of confusion by passing itself off as the Complainant and offering similar services, as the websites at the disputed domain names would cause consumers to wrongly believe the Respondent is associated with the Complainant. B. Respondent
The Respondent submits that the disputed domain names were registered and used by Respondent in good faith and without knowledge of the existence of the Complainant's rights to the sign "Chatroulette". The Respondent believed that this designation had been in common use for a long period of time, since in 1998, the German citizen Horst Wischnewski registered it as a trademark, and in 2005, the German programmer Holger Vogt created a service with the same name using the principle of random video connections on the Internet through webcams and registered the domain name . As a result of a theft, Holger Vogt later lost the control over this domain name and the associated website. All these events happened before the Complainant allegedly invented the Chatroulette service in 2009. The Respondent points out in this regard that a third party failed to register the sign "Chatroulette" as a word trademark in the Russian Federation and succeeded in registering it there only as a graphic trademark, because it was commonly used.
According to the Respondent, the Complainant used the temporary popularity of the sign "Chatroulette" and registered it as a trademark, and now uses it for unfair competition benefitting from someone else's domain name and using someone else's ideas. The Respondent points out that the protection of a trademarks is limited to the territory of its registration, and there is no information that the Complainant has sought and obtained trademark protection in India, Japan or Vietnam. The Respondent further mentions that the Complainant has failed to disclose its unsuccessful attempt in 2017 to register the CHATROULETTE trademark with registration No.1341139 in the Russian Federation and in the United States of America.
The Respondent alleges that the Complainant has turned the Chatroulette service into a pornographic website and engaged in illegal pornography demonstrated to minors on the Complainant's website which is forbidden in most civilized countries of the world.
The Respondent denies that it has registered the disputed domain names in order to capitalize on the trademark of the Complainant or with a purpose of undermining a competitor. The disputed domain names have protection in different countries and are focused on audiences that do not interact with the audience of the Complainant. There is no likelihood of confusion with the trademark of the Complainant, the financing, affiliation or support of the Respondent's websites, which have a completely different design, idea and functionality from the Complainant's website. In the Respondent's submission, the disputed domain name is focused only on India and Indian audience, the disputed domain name is focused only on Japan and Japanese language audience, and the disputed domain name is focused only on Vietnam and Vietnamese audience. This, according to the Respondent, is evident from the names, titles, and texts on the websites, associated to each of the disputed domain names, and from their audience, and is allegedly confirmed by the Google Analytics data submitted by the Respondent. The geographical targeting, and protection of the rights of the Complainant are locally distributed exclusively in the European Union and do not intersect with the custom audience of the Respondent's websites.
The Respondent points out that he has not offered for sale the disputed domain names. After their registration, the Respondent claims to have invested money, time and effort in the promotion of the associated websites, without knowing of the Complainant, and claims having plans for the further development of its chat roulettes in Asian countries. During this time the Complainant was hiding and watching these investments and the rise in popularity of the disputed domain names, without contacting the Respondent.
The Respondent states that the disputed domain names are registered in generic Top-Level Domain ("gTLDs") that were open to the public in 2015, and that the Complainant had the opportunity to register them for almost two years when they were registered by the Respondent. The Respondent also points out that the Complainant has the opportunity to register its CHATROULETTE trademark as a domain name in 389 other available gTLDs. 6. Discussion and Findings A. General
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(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 Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name".
First, however, it is necessary to address certain procedural issues. B. Consolidation of the proceedings
On March 29, 2018, the Complainant requested the consolidation of the proceedings inWIPO Case No. D2018-0235,WIPO Case No. D2018-0239, andWIPO Case No. D2018-0311. The Respondent has not objected to this request and has itself initiated a court proceeding in Moscow against the Complainant in respect of the three domain names that are subject of the three proceedings pending before the Center.
As discussed in section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), where a complaint is filed against multiple respondents, panels look at whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties. Panels also consider whether the consolidation would achieve procedural efficiency.
In the present situation, the Complainant has filed three separate Complaints, rather than a single one, and requested consolidation only after it became aware that the registrant of the three disputed domain names is the same. The identity of the Parties to the three proceedings is not in dispute, and the arguments and evidence submitted are substantially the same or very similar, and they participate with the same procedural roles in the three proceedings.
In this situation, the Panel considers that the consolidation of the three related proceedings would be fair and equitable to the Parties and would achieve procedural efficiency. Therefore, in exercise of its authority under Paragraph 10(e) of the Rules, the Panel decides to consolidate the proceedings inWIPO Case No. D2018-0235,WIPO Case No. D2018-0239, andWIPO Case No. D2018-0311 in the present proceeding underWIPO Case No. D2018-0235 and to issue a single decision on all three disputes.
On March 29, 2018, the Complainant requested also the consolidation into the present proceeding of a dispute regarding the domain name . As discussed in section 4.12.2 of the WIPO Overview 3.0, except in limited cases where there is clear evidence of respondent gaming/attempts to frustrate the proceedings (e.g., by the respondent's registration of additional domain names subsequent to complaint notification), panels are generally reluctant to accept such requests because the addition of further domain names would delay the proceedings which are expected to take place with due expedition. This is likely to happen in the present proceeding, as the Complainant has not yet filed a formal Complaint in respect of this additional domain name and the Respondent has respectively not filed a Response. The Panel is not aware of any exceptional circumstances in this case that would support a deviation from the practice described in section 4.12.2 of the WIPO Overview 3.0, and notes that in any case the declining of the consolidation request would not prevent the filing of a separate complaint where the additional domain name may be addressed. Therefore, the Panel decides to not allow the consolidation into the present proceeding of a dispute regarding the domain name . C. Language of the proceeding
In respect of the language of the proceeding, the Panel notes the following. According to the information provided by the Registrar of Domain Names REG.RU LLC, the language of the registration agreement for the disputed domain name is Russian, and according to the information provided by the Registrar Tucows Inc., the language of the registration agreements for the other two disputed domain names is English. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant has submitted its Complaint in the English language and requests the proceeding to be held in English with the arguments that the Complainant's representative, who prepared the Complaint, is unable to communicate in Russian and that the translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and the adjudication of this matter. The Complainant is represented in this proceeding by counsel from Sweden. The Center has sent its messages to the Respondent in both English and Russian and has invited the Respondent to express its views on the language of the proceeding. The Respondent has objected to the Complainants' request for the proceeding to be held in English and has insisted the proceeding to be held in Russian, pointing out that both the Complainant and the Respondent are Russian nationals. The Respondent has submitted its Response in relation to the disputed domain name in Russian, and has submitted its Responses in relation to the disputed domain names and in English, together with English translations of the submitted evidence.
It is clear that the Respondent understands English and that using the English language in this proceeding will be fair and efficient and will not put either of the Parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will take into account all evidence in the case file available in English or Russian languages. D. Request for termination of the proceedings
With its Responses in respect of each of the disputed domain names, the Respondent has requested the termination of the proceedings pending before the Center. In support of this request, the Respondent has submitted documents related to what it described as "an analogous claim between the same Parties in respect of the same subject matter" – the proceedings under case number 77RS0023-201-18-0000042 of March 14, 2018 before the Savyolovskiy district court of Moscow, the Russian Federation.
The Complainant asks the Panel to reject the request for termination of the present administrative proceeding. It questions the veracity of the alleged court case filed by the Respondent and points out that the case number provided by the Respondent returns no results from the online database of the Russian court, and no case can also be found when searching by the Complainant's or Respondent's name in the same database. The Complainant submits that if the Respondent has indeed filed a case before the Russian court, it was filed in order to stall the present proceeding, which contravenes the spirit of fairness of the Policy. The Respondent submitted a late email with a link to his case file in Moscow Court.
In this regard, the Panel notes the following paragraph 18(a) of the Rules gives the Panel discretion to suspend, terminate, or continue a UDRP proceeding where the disputed domain name is also the subject of other pending legal proceedings. As discussed in section 4.14 of the WIPO Overview 3.0, the UDRP system preserves Parties' court options before, during, and after a UDRP proceeding, and the UDRP does not bar either Party from seeking judicial recourse. Panels generally issue a UDRP decision on the merits even in an overlapping court-UDRP proceeding scenario where, notwithstanding the fact that a UDRP decision would not be binding on the court, the relative expediency of the UDRP versus courts is seen as a benefit to the parties. It is also within the Panel's discretion to determine the relevance to ascribe to such proceeding in the UDRP context in light of the case circumstances.
In the present case, it is unclear to the Panel whether and to what extent the Russian court seized by the Respondent (if this has indeed been done) would find that it has jurisdiction to resolve the matter referred to it, since the Complainant is located in Malta and two of the disputed domain names are registered with a registrar located in Canada. For the same reasons, it also unclear whether and to what extent an eventual decision of the Russian court on the merits would be binding on the Complainant and on the registrar in Canada (who is not even party to the proceeding initiated by the Respondent) and would be relevant to the present dispute. The documents for the claim contain a statement by the Respondent that the UDRP proceedings in respect of the disputed domain names are pending, and the requested relief is only a declaration that the Respondent is entitled to own and administer the disputed domain names, without any requests for granting of interim relief while the UDRP proceedings are pending. One can also expect that the court proceeding will take longer to complete than the present proceeding.
In view of the above, the Panel finds that the circumstances of this case do not justify the termination of the present proceeding and will proceed to issue its decision on the merits of the Complaint. E. Procedural deficiency of the Complaints
The Respondent submits that the Complaints are procedurally deficient, as they are signed by an entity that is different from the representative authorized by the Complainant. It points out that the Complainant has authorized the company CSC Digital Brand Services, AB to act as its representative, while the Complaint was signed by CSC Digital Brand Services AB Group, and that the company registration number or address were not specified. The Respondent further states that the power of attorney was signed by the Complainant as CEO of some unspecified legal entity, and not as a physical person, while the Complaint specified the Complainant as a physical person and did not include evidence about any trademark rights of legal entities. The Respondent also submits that the power of attorney is not certified by a notary or other governmental official and so its authenticity cannot be confirmed. The Complainant rejects these allegations.
The Panel has reviewed the evidence in the case file and is not satisfied that any significant procedural deficiencies are in place. There is no substantial difference in the name of the Complainant's representative as specified in the power of attorney and in the Complaint, and the physical addresses specified in these two documents are the same. The power of attorney provides that it is issued by the Complainant as a physical person, and the fact that the Complainant's signature is followed by the title "CEO" does not change that, more so since no legal entity is mentioned. The Policy and Rules do not require the representatives of the parties to UDRP proceedings to submit notarized powers of attorney. F. Supplementary submissions
Both the Complainant and the Respondent have filed supplementary submissions in the dispute. The Panel notes that Paragraph 10 of the Rules vests the panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition, while Paragraph 12 of the Rules expressly provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case.
As noted in section 4.6 of the WIPO Overview 3.0, unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel, and panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response. Neither of the Parties has specifically addressed these points in their supplementary submissions. Nevertheless, in order to take into account all relevant circumstances and arguments, the Panel has decided to accept them and take them into account for the purposes of the present decision to the extent they are relevant. G. Identical or Confusingly Similar
The Complainant has provided evidence that it is the owner of valid registrations of the CHATROULETTE trademark with priority from 2012. The Respondent's arguments that a different trademark application of the Complainant has been refused registration in the Russian Federation and in the United States does not affect the Complainant's rights in the CHATROULETTE trademarks listed in section 4 above. This satisfies the Panel that the Complainant has established its rights in the CHATROULETTE trademark for the purposes of the Policy. The Respondent's argument that the Complainant has not registered the CHATROULETTE trademark in India, Japan, and Vietnam is not relevant to the issue of whether the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. As summarized in section 1.1.2 of the WIPO Overview 3.0, in view of the global nature of the Internet and the domain name system, the jurisdictions where a complainant's trademark is valid is not considered relevant to panel assessment under the first element.
The Panel notes that a common practice has emerged among UDRP panels under the Policy to disregard in appropriate circumstances gTLD section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the ".online" gTLD section of the disputed domain name , the ".world" gTLD section of the disputed domain name , and the ".video" gTLD section of the disputed domain name .
The relevant part of each of the disputed domain names is therefore their "chatroulette" element, which is identical to the CHATROULETTE trademark.
In view of the above, the Panel finds that the disputed domain name is identical to the CHATROULETTE trademark in which the Complainant has rights. H. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Respondent is not commonly known by them, is not sponsored by or affiliated with the Complainant, and the latter has not given to the Respondent a permission to use the CHATROULETTE trademark in any manner. The Complainant points out that the Respondent registered the disputed domain names years after the registration of the CHATROULETTE trademark and of the Complainant's domain name and is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names, since the websites at the disputed domain names offer services that directly compete with the Complainant's services. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
The Respondent has alleged that it has rights and legitimate interests in the disputed domain names, stating that they were registered and used by the Respondent in good faith and without knowledge of the existence of the Complainant's rights to the sign "Chatroulette". The Respondent believed that this designation had been in common use for a long period of time, since a third person had registered it as a trademark in 1998, and another person in 2005 created a service with the same name using the principle of random video connections on the Internet through webcams and registered the domain name .
The Respondent points out that the Complainant has not obtained trademark protection in India, Japan, or Vietnam, while the disputed domain names are focused on users in these countries, and that after their registration, the Respondent has invested money, time and effort in the promotion of the associated websites, without knowing of the Complainant.
The Panel has carefully reviewed the arguments and evidence submitted by the Parties and has reached the following conclusions. The disputed domain names incorporate the CHATROULETTE trademark entirely without the addition of any other elements. The Respondent confirms that it is using the disputed domain names to offer services that are similar (if not identical) to those offered by the Complainant, and the Respondent's websites do not mention the lack of relationship with or endorsement by the Complainant. This makes it likely that Internet users may regard the disputed domain names as being official online locations of the Complainant even if the associated websites have a design, idea, and functionality that differ from the Complainant's website (as summarily claimed by the Respondent without elaborating on any details).
The disputed domain names were registered by the Respondent in November 2016, which is seven years after the Complainant started the Chatroulette service on the website at its domain name, and four years after the Complainant first registered its CHATROULETTE trademark. The Respondent refers to a prior registration of the same trademark and domain name and to the offering of the same service by different persons prior to 2009 as an explanation why the Respondent believed that the term "Chatroulette" was in common use and therefore free to be registered by it as a domain name. The Panel does not understand how such trademark and domain name registrations could lead a reasonable person to the conclusion that it can freely register the disputed domain names; they would rather alert it that doing so may be infringing the rights of third parties. In addition, if the Respondent took the effort to research these registrations made prior to 2009, it can be expected that such search would have made it aware also of the current trademark and domain name registrations of the Complainant and of its business activities conducted for seven years before the registration of the disputed domain names.
The disputed domain names are registered in gTLDs that do not suggest any geographical locations, so the Respondent's allegation that they are solely targeting audiences in India, Japan, and Vietnam and are not affecting the Complainant's rights and business, is not convincing. The Respondent is offering services that compete with the Complainant, and due to the global nature of the Internet these services could be used by visitors from other countries as well, unless the Respondent has put in place technical measures to prevent this, which it has not claimed to have done.
The Panel also notes that the Respondent has not put forward any evidence of its alleged investment of money, time, and effort in the promotion of its websites, and has not provided any details of its alleged plans for the further development of its "chat roulettes" in Asian countries.
Taking into account all the above, the Panel is satisfied that the Respondent, being aware of the Complainant, is likely to have registered and used the disputed domain names in an attempt to exploit the goodwill of the Complainant's CHATROULETTE trademark to mislead Internet users that the Respondent is the Complainant and that the websites at the disputed domain names offer the Complainant's services, and thus to attract business from these Internet users. In the Panel's view, such use of the disputed domain names is not legitimate and may not give rise to rights and legitimate interests of the Respondent in the disputed domain names.
Therefore, the Panel finds that the Respondent has not rebutted the Complainant's prima facie case and does not have rights or legitimate interests in the disputed domain names. I. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
As discussed above, the disputed domain names incorporate the CHATROULETTE trademarks entirely. The Respondent's websites at the disputed domain names offer services that are similar or identical to the services offered by the Complainant.
On the basis of the above, and in view of the considerations of the Panel set out in the section related to rights and legitimate interests, the Panel finds that the Respondent is likely to have registered the disputed domain names with knowledge of the Complainant and targeting its CHATROULETTE trademark in an attempt to attract business by confusing Internet users into believing that they are dealing with the Complainant. Therefore, the Panel finds that the Respondent has registered the disputed domain names in bad faith.
The Respondent's arguments that the Complainant had the opportunity to register the disputed domain names for almost two years when they were registered by the Respondent, and that the Complainant still has the opportunity to register its CHATROULETTE trademark as a domain name in 389 other available gTLDs does not contradict the above finding. A party cannot be required to register its trademark in all available TLDs in order to be able to assert its rights against cybersquatters.
The Respondent has not denied that the disputed domain names are being used for offering services that are similar or identical to those of the Complainant. As discussed in the section on rights and legitimate interests, the disputed domain names are registered in gTLDs that do not suggest any geographical locations, and due to the global nature of the Internet the Respondent's services could be used by visitors from all over the world, and such visitors may be confused into believing that they are being offered the Complainant's services.
In view of this, the Panel finds that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain names, by creating a likelihood of confusion with the Complainant's CHATROULETTE trademark as to the source, sponsorship, affiliation, or endorsement by the Complainant of the disputed domain names and the affiliated websites. Therefore, the Panel finds that the disputed domain names have been used in bad faith.
The Respondent has alleged that the Complainant's website at the domain name has pornographic content and illegally offers such content to minors. The Panel notes that this allegation of the Respondent is not relevant to the issue of bad faith of the Respondent itself, but due to its seriousness has to be commented on. The Panel believes that the conduct described by the Respondent, if proven, should not be tolerated. In many countries, it may lead to criminal liability and its investigation and prosecution is therefore within the exclusive competence of the respective state law enforcement institutions and as such is obviously beyond the limited scope of the Policy. Nevertheless, the Panel notes that the Respondent has not submitted any evidence that it has notified any competent authorities about such alleged conduct of the Complainant. Rather, the Respondent has registered the disputed domain names that on their face suggest a link to the Complainant. One would wonder in this situation for what purposes the Respondent would seek to create the impression of such a link if it was concerned that the Complainant's services have the reputation of being illegal. J. Reverse Domain Name Hijacking
The Respondent has requested a finding of Reverse Domain Name Hijacking against the Complainant. Since the Complainant has established all the required elements to succeed in this dispute, the Respondent's request is hereby rejected. 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 names , and be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: May 3, 2018
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