The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“USA”) / Ef Communications of Beverly Hills, California, USA. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2018. On October 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 2, 2018, 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 October 3, 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 October 8, 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 October 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2018.
The Center appointed Dawn Osborne as the sole panelist in this matter on November 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
The Complainant is the owner of trade mark registrations for CHATROULETTE registered, inter alia, in the USA (Reg. No. 85214314, filed on January 10, 2011, and registered on December 10, 2013) and first in time in the Russian Federation from 2011 for Internet chatting related services with first use from 2009.
The Domain Name registered in June 5, 2012 has been used to a site which points to competitors of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of trade mark registrations for CHATROULETTE registered, inter alia, in the USA and first in time in the Russian Federation from 2011 for Internet chatting related services with first use from 2009.
The Domain Name registered in 2012 is confusingly similar to the Complainant’s trade mark adding only the generic term “sites” and the generic Top-Level Domain (“gTLD”) “.com” which do not prevent confusing similarity.
The Respondent is not commonly known by the Domain Name and has not been authorized by the Complainant.
The Respondent does not have rights or legitimate interests in the Domain Name. The Domain Name redirects Internet users to a third party website that advertises competitors of the Complainant. This is not a bona fide offering of goods and services or a legitimate noncommercial fair use. It is registration and use in bad faith as it disrupts a competing business and confuses customers on the Internet for gain. The Respondent did not reply to the Complainant’s cease and desist letter. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Domain Name in this Complaint combines a sign very similar to the Complainant’s CHATROULETTE mark (registered, inter alia, in the USA and first in time in the Russian Federation from 2011 for Internet chatting related services with first use from 2009), the generic term “sites” and the gTLD “.com”.
The addition of the generic term “sites” does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s CHATROULETTE mark under the Policy, paragraph 4(a)(i).
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s CHATROULETTE mark.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy. B. Rights or Legitimate Interests
The Respondent does not appear to be commonly known by the Complainant’s mark. The Complainant has not authorised the Respondent to use the Complainant’s mark. The use of the Domain Name is commercial and so cannot be legitimate noncommercial use.
UDRP panels have found that a respondent is not using a domain name for a bona fide offering of goods or services if it intentionally uses the name to advertise websites competing with the Complainant under its mark.
It it is clear from the evidence that the Respondent has used the site attached to the Domain Name to link to competing websites which are not connected with the Complainant. The usage of the Complainant’s CHATROULETTE mark which has a reputation in relation to Internet related services in relation to similar services not connected with the Complainant is not fair and the site does not make it clear that there is no commercial connection with the Complainant. As such it cannot amount to the bona fide offering of services.
The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant’s trade marks in this way. As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy. C. Registration and Use in Bad Faith
The Complainant submitted evidence that Chatroulette established high popularity and reputation very shortly after its launch in 2009. Further to the Respondent’s website refers to the Complainant’s business on the website under the Domain Name showing the Respondent is aware of the Complainant and its business.
Further, the Respondent’s use of its site is commercial and it is using the site to make profit by linking to competing websites not associated with the Complainant in a manner in which their relationship or otherwise with the Complainant is not clear. The use of the Complainant’s mark in the Domain Name for competing websites would cause people to associate the websites at the Domain Name with the Complainant and its business and services. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website or services offered on that site. This also appears designed to disrupt the business of a competitor.
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4(b)(iii) and (iv) of the Policy and has satisfied the third limb 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 Domain Name be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Date: November 20, 2018
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