Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
Respondent is nay of Tver, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2018. On October 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 October 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 2, 2018.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on November 7, 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, Andrey Ternovsky d/b/a Chatroulette, is the creator and owner of an online chat website by the name of Chatroulette that pairs random people from around the world together for real-time, webcam-based conversations. Complainant created the Chatroulette website and service in 2009. Complainant is the owner of several trademark registrations for the CHATROULETTE mark in connection with Complainant’s services, including, inter alia, in the Russian Federation (Registration No. 429957), which issued on February 10, 2011; the European Union (Registration No. 008944076), which issued on December 4, 2012; the United States of America (Registration No. 4445843), which was filed on January 10, 2011 and issued December 10, 2013; and Switzerland (Registration No. 600401), which issued on May 14,2010. Complainant has owned and used the domain name as its primary domain name for its website since 2009.
Respondent is based in the Russia Federation. The disputed domain was registered on June 14, 2012, but appears to have been acquired by Respondent in or about July 2015. Respondent has used the disputed domain name with a website that offers online video chat services.
On July 4, 2018, Complainant’s representative sent Respondent a demand letter regarding Respondent’s activities related to the disputed domain name. A subsequent demand letter was sent to Respondent on July 10, 2018. Respondent did not respond to either letter. 5. Parties’ Contentions A. Complainant
Complainant contends that he is the exclusive owner of all rights in the CHATROULETTE mark, which he adopted and has been using since 2009 in connection with Complainant’s online chat website. Complainant maintains that the Chatroulette service has become well known on account of its popularity and high-profile reputation internationally with fans, the media and competitors, and that as a result it is one of the most popular video chat sites in the world.
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s CHATROULETTE mark as it incorporates the CHATROULETTE mark in its entirety. Complainant further asserts that the inclusion of the term “rus” at the tail of the disputed domain name increases the confusion as the term is a short form reference for “the Russian Federation” which is where Complainant was based when he first created the Chatroulette service.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) is not commonly known by the disputed domain name, (ii) has obtained no authorization or license from Complainant to register and use a domain name based on Complainant’s CHATROULETTE mark, (iii) acquired the domain name well after Complainant had registered and started using the domain name in 2009 for his online chat services, and (iv) has not made a bona fide of the disputed domain name, as Respondent has only used the disputed domain name in connection with a website to offer online video chat services that directly compete with Complainant’s CHATROULETTE services.
Lastly, Complainant contends that Respondent has registered and is using the disputed domain name in bad faith as Respondent (i) has knowingly created a confusingly similar domain name for purposes of using such with a website that offers competing services, (ii) has registered the disputed domain to disrupt Complainant’s business, and (iii) has ignored Complainant’s attempts to resolve the matter by failing to respond to Complainant’s demand letters. 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.
Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also 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 at section 1.2.1. Complainant has provided evidence that he owns and obtained trademark registrations for the CHATROULETTE mark in multiple jurisdictions prior to the date that Respondent acquired the disputed domain name.
With Complainant’s rights in 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”) such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s CHATROULETTE mark as the disputed domain name fully incorporates the CHATROULETTE mark at the head of the disputed domain name. The addition of the reference “rus”, which is likely a short form reference to “the Russian Federation” at the tail of the disputed domain name does not prevent a finding of confusing similarity. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s CHATROULETTE mark and in showing that the disputed domain name is identical or confusingly similar to that trademark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Based on the evidence submitted in this proceeding, and Respondent’s failure to file a response, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain name. Since registering the disputed domain name, which was on a date well after Complainant had secured rights and notoriety in the CHATROULETTE mark, Respondent has used the disputed domain name to attract web users to its website for purposes of offering competing online video chat services. Such use of the disputed domain names does not constitute a legitimate use and is opportunistic. This is particularly so given that the disputed domain name is likely to be seen by consumers as referring to Complainant and/or a service offered by Complainant in the Russian Federation, given that the disputed domain name fully consists of Complainant’s CHATROULETTE mark with the abbreviation “rus” (which is a reference for “the Russian Federation”).
Given that Complainant has established with sufficient evidence that it owns rights in the CHATROULETTE mark, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest 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
In view of Respondent’s actions, and failure to appear in this proceeding, it is easy to infer that Respondent’s registration and use of the disputed domain name, which consists of Complainant’s CHATROULETTE mark, has been done opportunistically and in bad faith for purposes of attracting web users to Respondent’s website to offer competing online video chat services. Respondent registered the disputed domain name well after Complainant has established rights in the CHATROULETTE mark in connection with its online chat website, and after Complainant had obtained trademark registrations for the CHATROULETTE mark in connection with it services, including in the Russian Federation where Respondent is based. Given that Respondent used the entire CHATROULETTE mark in the disputed domain name in connection with a geographic indicator for the Russian Federation to offer the exact services that Complainant offers under its CHATROULETTE mark, it appears more probable than not that Respondent was fully aware of Complainant and its CHATROULETTE service and mark when Respondent registered the disputed domain name. As such, Respondent’s actions were in bad faith and knowingly meant to take advantage of the goodwill associated with Complainant’s CHATROULETTE mark.
Additionally, the fact that Respondent failed to respond to two demand letters sent by Complainant’s representative regarding the registration and use of the disputed domain name, and thereafter continued using the disputed domain name to offer competing online video chat services, further underscores Respondent’s bad faith in this matter.
The Panel thus 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 Complainant.
Georges Nahitchevansky
Sole Panelist
Date: November 23, 2018
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