The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Mia Petkovic of Rees, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2018. On November 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 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 the Complainant on November 5, 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 November 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 November 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2018.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on December 10, 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, d/b/a Chatroulette, is a Russian person resident in Malta who founded and operates an online chat website that pairs random people from around the world for real-time, webcam based, conversations. According to the Complaint, the Complainant created the Chatroulette service and website in 2009; it very quickly established large-scale popularity and reputation, and has become one of the most sought-after video chat sites in the world, with its website now receiving millions of visitors each month. The Complainant also submits articles, data and media mentions that testify to the high profile and renown of its website and business.
The Complaint lists and documents that the Complainant holds the following German, United States, Russian Federation and European Union trademarks, together with dates and classes;
CHATROULETTE DE / DPMA 3020100037067, registered on February 21, 2013 in classes 35, 38, 42;
CHATROULETTE US / USPTO 4445843, registered on December 10, 2013 in classes 38, 45;
CHATROULETTE RU/ ROSPATENT 429957, registered on April 6, 2015 in classes 35, 38, 42;
CHATROULETTE EM / EUIPO 008944076, registered on December 4, 2012 in classes 35, 38, 42;
CHATROULETTE.TO EM / EUIPO 008946352, registered on August 19, 2012 in classes 35, 38, 42A.
The disputed domain name was registered on August 4, 2013 and currently does not resolve to an active website. The Complainant asserts and submits evidence that the disputed domain name was previously used to redirect Internet users to third-party websites that compete with the Complainant’s business. The Complainant has sent two cease-and-desist letters to the hosting provider of the disputed domain name, but has received no reply.
Little is known about the Respondent who appears to be an individual residing in Germany. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the Respondent is making deliberately improper use of its well-known trademarks and business name in order to profit from the Complainant’s extensive investment and renown.
The Complainant alleges that the disputed domain name is confusingly similar to its trademarks, and that the Respondent does not and cannot have any legitimate interest or right in the disputed domain name. The Respondent has moreover registered the disputed domain name in bad faith with knowledge of the Complainant and its trademark and then proceeded to use the disputed domain name in bad faith, notably by seeking improperly to attract Internet users for the Respondent’s commercial gain.
Thereupon, the Complainant asks that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name begins with and contains the entirety of the Complainant’s trademark. The addition of the term “like sites” does not here dispel or prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition 3.0 (“WIPO Overview 3.0”) at section 1.8.
It follows that the elements of paragraph 4(a)(i) of the Policy are here established. B. Rights or Legitimate Interests
The Complainant has clearly emphasized that it has not sponsored or in any way given the Respondent permission to use its trademark, in the disputed domain name, or otherwise. It is equally clear that the Respondent is not known as “Chatroulette” or Chatroulettelikesites”. There is no indication that the Respondent has used the disputed domain name in connection with a bona fide offering of goods and services.
It is well established in UDRP case law and jurisprudence that a complainant needs to establish at least a prima facie case that the respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Where such a prima facie case is made, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. See also, Meizu Technology Co., Ltd. v. “osama bin laden”,WIPO Case No. DCO2014-0002; H & M Hennes & Mauritz AB v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo,WIPO Case No. D2014-0225.
As the Complainant has here established at least such a prima facie case, and there is nothing in the case file that would rebut or contradict it, the Complainant has met its burden of proof under paragraph 4 (a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant has well documented that its CHATROULETTE trademarks are and have been well-known internationally for a number of years. It is difficult to see how the disputed domain name could or would have been registered without knowledge of the Complainant’s trademarks and business. The additional term “like sites” after the Complainant’s trademarks in the disputed domain name not only does not diminish confusion and similarity, but shows that the Respondent had actual knowledge of the Complainant’s site and trademarked name and sought to register a domain name that was similar (“like”), in order to profit from the Complainant’s renown. It thus defies common sense to believe that the Respondent selected the disputed domain name by serendipity and without awareness of the Complainant and its trademarks. See Asian World of Martial Arts Inc. v. Texas International Property Association,WIPO Case No. D2007-1415.
Bad faith use of the disputed domain name by the Respondent is also evident, inter alia from its use of the Complainant’s trademarked name, and associated renown and good will to capitalize on the same by attracting Internet users for commercial gain, see WIPO Overview 3.0 at section 3.5. The failure to answer cease-and-desist letters or otherwise to reply to the Complainant’s contentions is here further indicia of bad faith.
The Complainant has, accordingly, here proven the elements of 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 name be transferred to the Complainant.
Nicolas Ulmer
Sole Panelist
Date: December 18, 2018
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