The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Wang Lian Feng of Beijing, China. 2. The Domain Names and Registrars
The disputed domain name is registered with HiChina Zhicheng Technology Ltd.; the disputed domain names and are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrars”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2018. On June 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 3, 2018, the Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 3, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding and submitted an amended Complaint on July 4, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on July 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2018.
The Center appointed Jonathan Agmon as the sole panelist in this matter on August 6, 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, Andrey Ternovskiy dba Chatroulette, created and owns Chatroulette, which is an online chat website that pairs random people from around the world for real-time, webcam-based conversations. Chatroulette is also associated with, and known for providing, online video chat services and online video social introduction and networking services.
Chatroulette was created by the Complainant in 2009 in Russian Federation. This idea stemmed from the Complainant’s realization that, at the time of its inception, no website existed which allowed for random video chatting with other Internet users from around the world. The Complainant coined the name “Chatroulette” by combining the term “chat”, which is one of the core purposes of the Complainant’s website, and the word “roulette”, which is associated with the thrill of unpredictability (though not inherently or naturally connected to online webcam chatting).
The Complainant is the owner of many trademark registrations for the CHATROULETTE trademark worldwide, including:
- China trademark registration No. 8126890, CHATROULETTE, registered on May 7, 2011;
- China trademark registration No. 8126891, CHATROULETTE, registered on July 28, 2011;
- China trademark registration No. 8126892, CHATROULETTE, registered on April 21, 2011;
- United States of America (“United States”) trademark registration No. 4445843, CHATROULETTE, registered on December 10, 2013;
- Russian Federation trademark registration No. 429957, CHATROULETTE, registered on February 10, 2011; and
- European Union trademark registration No. 008944076, CHATROULETTE, dated December 4, 2012.
The disputed domain names were registered on April 6, 2018.
The disputed domain names do not resolve to any active websites. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain names are identical with the Complainant’s CHATROULETTE trademark as they consist solely of the Complainant’s trademark.
The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant further argues that the disputed domain names were registered and are being used in bad faith. The Complainant argues that the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks and that registration of domain names containing its trademarks constitutes bad faith at the time of the registration of the disputed domain names. The Complainant argues that the Respondent acted in bad faith when he offered the disputed domain names for sale. The Complainant also argues that the Respondent acted in bad faith since he failed to respond to a cease-and-desist letter sent to him. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) 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 language of the Registration Agreements for the disputed domain names is Chinese.
The Complainant requested that the language of the proceeding be English.
The Respondent did not comment on the language of the proceeding.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain names are in the English language;
(ii) To require the Complainant to translate the Complaint and all other supporting documents in Chinese would cause an unnecessary burden to the Complainant and unnecessary delay the proceeding;
(iii) The Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language;
(iv) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel determines that English be the language of the proceeding. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner (VKR Holding A/S v. Li Pinglong,WIPO Case No. D2016-2269; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section1.2.1). The Complainant is the owner of the trademark registrations for the CHATROULETTE mark. In the present case, the disputed domain names, , and , integrates the Complainant’s CHATROULETTE trademark in their entirety.
The Complainant’s CHATROULETTE trademark and the disputed domain names differ only by the addition of the extensions for the Top-Level Domains (“TLDs”), “.cc”, “.store” and “.tech”. Previous UDRP panels have found that the addition of TLDs do not avoid a finding of confusing similarity (Accor v. Noldc Inc.,WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; L’Oréal v. Tina Smith,WIPO Case No. D2013-0820; Titoni AG v. Runxin Wang,WIPO Case No. D2008-0820; Alstom v. Itete Peru S.A.,WIPO Case No. D2009-0877; WIPO overview 3.0, section 1.11.1). Therefore, the TLDs “.cc”, “.store” and “.tech” arewithout significance in the present case since the use of a TLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (WIPO Overview 3.0, section 2.1).
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard. In the absence of any license or permission from the complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the domain name would ordinarily be found. (Groupe Auchan v. Gan Yu,WIPO Case No. D2013-0188; LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138). In this case, the Complainant owns various trademark registrations of the CHATROULETTE trademark long before the disputed domain names were registered. The Respondent is not known by the Complainant’s mark nor did the Complainant license or otherwise permit the Respondent to use its trademark (Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875). The Respondent is also not commonly known as “Chatroulette” but is identified as “Wang Lian Feng” in the WhoIs data, which does bear any resemblance to the disputed domain names. Further, the disputed domain names do not resolve to active websites except for the message, “This site can’t be reached.” (Philip Morris USA Inc. v. Muhammad Faisal,WIPO Case No. D2016-0621), which also fails to provide any indication of a connection between the Respondent and the disputed domain names. The Respondent failed to provide any response which would demonstrate any attempt to make legitimate use of the disputed domain names and websites, and the Respondent has not asserted any rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
The Complainant must also show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence which shows that the Respondent has registered the disputed domain names long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant owned registrations for the CHATROULETTE trademark in the various jurisdictions such as the United States, China, Russian Federation and European Union from as early as 2011. In addition, the evidence submitted by the Complainant indicates that the Complainant has established a strong presence on the Internet with the name Chatroulette (Caesar World, Inc. v. Forum LLC,WIPO Case No. D2005-0517). As such, the Respondent likely registered the disputed domain names incorporating the Complainant’s trademark as it was aware of the Complainant and its trademark. It is suggestive of the Respondent’s bad faith that the trademark of the Complainant was registered long before the registration of the disputed domain names. (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
In the present case, the disputed domain names are inactive. It has long been held that under certain circumstances the non-use of a disputed domain name would not prevent a finding of bad faith registration and use under the Policy. (Telstra Corporation Limited v. Nuclear Marshmallows, supra). The various factors that can be taken into account include the (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, and (iii) the implausibility of any good faith use to which the domain name may be put. (WIPO Overview 3.0, section 3.3)
The Complainant provided evidence showing that he coined the CHATROULETTE mark creating a distinctive mark which combines the words “chat” and “roulette”, the latter is not related to the services offered by the Complainant and would not be commonly used with video chat services. The coined term provides a degree of distinctiveness; which the Panel considers would be such that the Respondent would not spontaneously decide to register without some recognition of the Complainant’s services. Furthermore, the Complainant had also been featured by numerous publications and media outlets such as The New York Times and The New Yorker as well as television shows such as Good Morning America which provide additional strong indication of the Complainant’s trademark reputation and visibility in the eyes of Internet users. As a result, under the particular circumstances of this case, the use of the Complainant’s trademark by the Respondent is evidence of bad faith registration and use of the disputed domain names.
In addition, the Respondent failed to provide a response explaining his use of the Complainant’s trademark, and the Panel considers this failure, especially under the particular circumstances of this case to be additional evidence of bad faith registration and use of the disputed domain names.
The Complainant also sent the Respondent a cease-and-desist letter and a reminder prior to filing the Complaint. The Respondent failed to respond to the cease-and-desist letter. Under the particular circumstances of this case, the Respondent’s failure to express any denial or explanation despite the opportunity offered to him reinforces the inference of bad faith registration and use of the disputed domain names. (Sanofi-Aventis v. A Domain Privacy/ Transure Enterprise Ltd, Host Master,WIPO Case No. D2009-1634).
In addition, the Complainant provided evidence showing that the Respondent is also offering to sell the disputed domain names at USD 5,999 each. Under the specific circumstances of this case, this constitutes another indication of bad faith registration and use on the part of the Respondent as it demonstrates an intent to sell, rent or otherwise transfer the disputed domain names for valuable consideration in excess of his out-of-pocket expenses and thereby seeking to profit from the sale of a confusingly similar domain name that incorporates a third party’s trademark.
Finally, the Complainant provided evidence that show that the Respondent also presently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses and has a history of cybersquatting.
The Panel also notes that the Respondent has a recent line of antecedents for engaging in the “cybersquatting” pattern, in the following cases:
- ZB, N.A., a national banking association, dba Vectra Bank Colorado v. Wang Lian Feng,WIPO Case No. D2018-0555;
- Boehringer Ingelheim Pharma GmbH & Co. KG v. Wang Lian Feng,WIPO Case No. D2018-0562;
- Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Wang Lian Feng,WIPO Case No. D2018-0659;
- Esselunga S.P.A. v. Wang Lian Feng,WIPO Case No. D2018-0842; and
- Volkswagen AG v. Wang Lian Feng,WIPO Case No. D2018-0881.
Taking the above into consideration, the Panel is of the view that the Respondent is engaging in a consistent pattern of cybersquatting, which demonstrates bad faith registration and use of domain names by the Respondent.
Having regard to all the circumstances, the Panel considers the Respondent’s passive holding of the disputed domain names to be in bad faith. The Respondent has failed to come forward with any evidence of any contemplated good-faith use of the disputed domain names, and the Panel is unable to conceive of any such use.
Based on the evidence presented to the Panel, including the registration of the disputed domain names long after the registration of the Complainant’s CHATROULETTE mark, the confusing similarity between the disputed domain names and the Complainant’s mark, the Respondent’s offering of the disputed domain names for sale, the Respondent failure to respond to cease-and-desist letters, the Panel concludes that the disputed domain names were registered and are being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 names, , and be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: August 20, 2018
Full & Egal Universal Law Academy