The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Administrator, See PrivacyG of Phoenix, Arizona, United States of America (“United States”) / Jonas Kropf of Olten, Solothurn, Switzerland. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2018. On May 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 8, 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 May 10, 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 May 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2018.
The Center appointed Tommaso La Scala as the sole panelist in this matter on June 11, 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
Chatroulette is an online chat website that pairs random people from around the world together for real-time, webcam-based conversations.
The Complainant created such service in 2009 and shortly after its launch it quickly gained great popularity and a high-profile reputation all around the world.
The Complainant owns several trademark registrations for the word mark CHATROULETTE, including:
- United States Trademark Registration No. 4445843, registered on December 10, 2013;
- European Union Trade Mark Registration No. 008944076, registered on December 4, 2012;
- European Union Trade Mark Registration No. 008946352, registered on August 19, 2012;
- Russian Federation Trademark Registration No. 429957, registered on April 6, 2015;
- German Trademark Registration No. 302010003706, registered on February 21, 2013.
As of November 16, 2009, the Complainant further owns the domain name which identifies the principal website for his Chatroulette service.
The Domain Name was registered on July 2, 2017, and it currently redirects to a third-party website that offers games of chance. The Domain Name is also being offered for sale for an amount that – according to the Complainant – far exceeds the Respondent’s out-of-pocket expenses in registering it.
Despite a cease-and-desist letter sent by the Complainant and requesting cessation of any use of the Domain Name and transfer of it, the Respondent did not reply to such communication. 5. Parties’ Contentions A. Complainant
The Complainant submits that the Domain Name is identical and confusingly similar to the Complainant’s CHATROULETTE trademark, as it entirely incorporates such distinctive sign.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not commonly known by the Domain Name, nor it is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademarks of another.
The Domain Name redirects to a website sponsoring gambling and the Respondent is offering it for sale.
Given the above, the Complainant further states that the Domain Name has been registered and used in bad faith, considering that the Respondent surely was aware that the CHATROULETTE trademark existed and was registered in the United States, European Union and in many other jurisdictions worldwide. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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 established its registered rights in the CHATROULETTE trademark.
Furthermore, the Domain Name consists solely of the Complainant’s CHATROULETTE trademark, resulting in a domain name that is identical to the Complainant’s CHATROULETTE trademark and thus meeting the requirements under paragraph 4(a)(i) of the Policy (see, in this regard, Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503). B. Rights or Legitimate Interests
The Panel finds the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Domain Name incorporating its trademarks. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of the Complainant. Rather, the Domain Name is being used to misleadingly redirect Internet users to a third-party website advertising online gaming. Moreover, the Domain Name is also listed for sale for USD 1,999. Such use does not amount to a bona fideuse of the Domain Name within the meaning of the Policy.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. Taking into account the renowned status of the CHATROULETTE trademark and the specific circumstances of this case – namely the redirection of the Domain Name toward a website that offers games of chance and its offer for sale for the amount of USD 1,999 – the Panel finds that the Respondent knew or should have known of the Complainant’s well-known CHATROULETTE trademark at the time of registration of the Domain Name, and registered the Domain Name in bad faith.
Furthermore, there is no plausible good-faith reason or logic for the Respondent’s actions. Rather, the record indicates that the Respondent’s registration and use of the Domain Name is “to profit in some fashion from or otherwise exploit the complainant’s trademark” either by redirecting Internet users searching for the Complainant to a third-party website offering online gaming, or to sell the Domain Name for consideration in excess of the Respondent’s out-of-pocket costs associated with the Domain Name. Such use of the Domain Name amounts to bad faith registration and use within the meaning of paragraphs 4(b)(i) and 4(b)(iv) of the Policy. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 3.1.1 and 3.1.3. 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 Domain Name be transferred to the Complainant.
Tommaso La Scala
Sole Panelist
Date: June 25, 2018
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