Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Contact Privacy Inc. Customer 0126933250 of Toronto, Canada / Marie-Georges Faure of Brie Comte Robert, France. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2018. On June 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 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 Complainant on June 26, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 27, 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 Respondent of the Complaint, and the proceedings commenced on June 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 20, 2018.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on July 30, 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
Complainant is the owner of “Chatroulette”, an online chat website that pairs random people from around the world together for real-time, webcam-based conversations. Shortly after Complainant’s domain name was registered on November 16, 2009 and its corresponding website was launched, it very quickly established incredible popularity and a high-profile reputation, rapidly growing to 130,000 visitors per day by February 2010. Complainant’s “Chatroulette” website quickly became well-known as one of the most popular video chat sites in the world, and from an early start the website generated significant interest and attention internationally including in numerous publications and media outlets such as The New York Times (February 13, 2010 and March 12, 2010), The New Yorker (May 17, 2010), and New York magazine, as well as on television shows including Good Morning America and The Daily Show with Jon Stewart. Currently, Complainant averages over 4,522 million monthly visitors to its “www.” website. Complainant owns valid and subsisting registrations for the CHATROULETTE trademark in numerous jurisdictions around the world, including with the Russian Federal Service for Intellectual Property, the European Union Intellectual Property Office, the German Patent and Trademark Office, and the United States Patent and Trademark Office, the earliest reference to which was applied for on March 10, 2010 and registered on December 4, 2012 (European Union Trademark Reg. No. 008944076).
Respondent registered the disputed domain name on July 5, 2010. Currently, the disputed domain name resolves to a website with pornographic images and hyperlinks to third party pornographic content. Respondent also attempts to provide pornographic online video chat services on the website in competition with Complainant. 5. Parties’ Contentions A. Complainant
Complainant asserts that its trademark registrations demonstrate exclusive ownership and use of the CHATROULETTE trademarks. Complainant also asserts that the disputed domain name can be considered as capturing, in its entirety, Complainant’s CHATROULETTE trademark and simply adding the generic term “top” in front of the trademark, and that the mere addition of this generic term to Complainant’s trademark does not negate the confusing similarity to it. Complainant further asserts that Respondent’s use of the disputed domain name to host online video chat sites contributes to the confusion because it suggests that Respondent intended it to be confusingly similar to Complainant’s trademark as a means of furthering consumer confusion.
Complainant asserts that Respondent is not sponsored by or affiliated with Complainant in any way. Complainant also asserts that Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names. Complainant asserts that Respondent, identified in WhoIs information as “Marie-Georges Faure”, is not commonly known by the disputed domain name. Complainant also asserts that Respondent is not making a bona fide offering of services or legitimate fair use of the disputed domain name because it resolves to a website that directly competes with Complainant, and because it directs Internet users to websites that feature adult content.
Complainant asserts that its CHATROULETTE trademark is known internationally, and that Respondent knew, or at least should have known, of the existence of Complainant’s “www.” website and unfairly sought to capitalize on Complainant’s (nascent) trademark rights. Complainant further asserts that Respondent creates a likelihood of confusion with Complainant and its trademarks by making reference to Complainant’s CHATROULETTE mark in the metadata for the website to which the disputed domain name resolves, increasing the likelihood that Internet users will find Respondent’s website through online searches, with Respondent then attempting to profit from such confusion by offering online webcam chat services which compete with Complainant’s business. Complainant further asserts that the impression given by the disputed domain name and its website would cause consumers to believe Respondent is somehow associated with Complainant when, in fact, they are not. Complainant asserts that the disputed domain name features sexually-explicit, pornographic content, which provides evidence of Respondent’s bad faith registration and use of this domain. Complainant further asserts that bad faith is established by Respondent’s use of a privacy service to hide its identity. Finally, Complainant asserts that Respondent has ignored Complainant’s cease and desist letter, further evidencing bad faith registration and use of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the CHATROULETTE mark, which has been registered internationally.
With Complainant’s rights in the CHATROULETTE mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s CHATROULETTE mark because it incorporates this mark in its entirety; it is also the dominant element of the disputed domain name. The addition of the dictionary term “top” and a hyphen before the readily recognizable “chatroulette” element does not distinguish the disputed domain name from Complainant’s mark. See, e.g., Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez,WIPO Case No. D2016-1004.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the CHATROULETTE mark and in showing that the disputed domain name is identical or confusingly similar to this mark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the Policy.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its CHATROULETTE mark and that Respondent does not have any rights or legitimate interests in the disputed domain name. Respondent has not made any bona fide or noncommercial fair use of the disputed domain name in connection with any product or service. Rather, the disputed domain name resolves to a website that both features pornographic content, and advertisements for third party pornographic services, as well as pornographic video chat services, which according to Complainant, compete with its own video chat services. See America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374. Furthermore, it is evident that Respondent is not known by the disputed domain name, and that Respondent is not sponsored by or affiliated with Complainant, or otherwise authorized to use the CHATROULETTE trademark in any manner.
Given that Complainant has established with sufficient evidence its prima facie case, and given Respondent’s failure to file a response, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, 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 online 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.”
In the instant proceeding, Complainant first used the CHATROULETTE trademark shortly after Complainant’s domain name was registered and its website was launched on November 16, 2009. Complainant has provided ample evidence that its website and the CHATROULETTE trademark quickly garnered international recognition by early 2010 based on website visitors per day and significant attention in numerous publications and media outlets, which are all concurrent with Complainant’s earliest referenced trademark applications filed with the European Union Intellectual Property Office in March 2010. Thus, it is evident that Respondent intended to capitalize on Complainant’s nascent but expanding trademark rights through registration of the disputed domain name in bad faith. WIPO Overview 3.0, section 3.8.2, Madrid 2012, S.A. v. Scott-Martin-Madridman Websites,WIPO Case No. D2003-0598.
Furthermore, pornographic content on the website associated with the disputed domain name, and hyperlinks to third-party pornographic websites, serve as strong evidence that Respondent knew of Complainant plus its mark and services and registered the disputed domain name to divert traffic to the disputed domain name based on confusing similarity with the CHATROULETTE trademark in order to derive commercial gain, which also constitutes use of the disputed domain name in bad faith. See, e.g., AXA SA v. Ran Jian,WIPO Case No. D2017-0205.
Although Complainant’s arguments with respect to proxy registration services are not especially persuasive in this case, Respondent’s failure to reply to cease and desist correspondence sent by Complainant or to respond to the Complaint in this proceeding weigh as further evidence of bad faith given the other circumstances of this case. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Accordingly, the Panel finds that Complainant succeeds under this 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.
Brian J. Winterfeldt
Sole Panelist
Date: August 14, 2018
Full & Egal Universal Law Academy