The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is JH Saaltink of Heerenveen, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Cronon AG Berlin, Niederlassung Regensburg (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2018. On November 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 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 14, 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 15, 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 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2018. The Center received various email communications from the Respondent in the period between November 15, and November 21, 2018. The Respondent did not however submit a response. Accordingly, the Center notified the Parties of the Commencement of Panel Appointment Process on December 12, 2018.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on December 21, 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 and creator of Chatroulette, an online chat website that pairs random people from around the world together for real-time, webcam-based conversations. The Complainant’s Chatroulette service and website started in 2009 when he was a high school student in Moscow, Russian Federation. According to the Complainant, the Chatroulette website very quickly gained popularity after it was launched; within a month, it had a visitor traffic increase of 10,000 per cent. According to A statistics, the Chatroulette website earned a global popularity rank of 19,388.
The Complainant is the owner of the trademarks containing or comprising CHATROULETTE, registered across various jurisdictions. These registrations include:
- Russian Federation trademark with registration No. 429957, registered on February 10, 2011, in International Classes 35, 38, and 42;
- European Union trademark with registration No. 008944076, registered on December 4, 2012, in International Classes 35, 38, and 42;
- European Union trademark with registration No. 008946352, registered on August 19, 2012 in International Classes 35, 38, and 42;
- German trademark with registration No. 302010003706, registered on February 21, 2013, in International Classes 35, 38, and 42;
- United States trademark with registration No. 4445843, registered on December 10, 2013, in International Classes 38, and 45.
Additionally, the Complainant is also the registrant of the domain name , containing the CHATROULETTE trademark, which identifies the principal website for the Chatroulette services.
The disputed domain name was registered on December 29, 2016. The disputed domain name resolves to a website enabling users to find random group chats. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the generic Top-Level Domain (“gTLD”) “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
The Complainant further argues that by incorporating the Complainant’s CHATROULETTE trademark in its entirety and by adding the generic term “group” to the beginning of the trademark, the disputed domain name is confusingly similar to the Complainant’s trademark.
Additionally, the Complainant claims, relying on Pfizer Inc v. Intermeds, LTD/John Veslasquez, WIPO Case No. D2005-0153, that the mere adjunction of the generic term “group” does negate the confusing similarity between the disputed domain name and the Complainant’s trademark.
Finally, the Complainant submits that, although the content is usually disregarded under the first element of the UDPR, the use of the disputed domain name further contributes to the confusion by resolving to a website enabling users to find group chats. (b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts that it has rights in CHATROULETTE and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent is and was not commonly known by the disputed domain name. Additionally, the Complainant has never authorized, licensed or in any way permitted the Respondent to register and use the disputed domain name. Neither does the Respondent have an affiliation or sponsorship with the Complainant.
Furthermore, the Respondent does not appear to have used the disputed domain name for any legitimate noncommercial purpose; the disputed domain name was registered for the purpose of offering and attempting to sell services which directly compete with the Complainant’s own offering. Relying on America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374, the Complainantsubmits that the Respondent should be held to possess no rights or legitimate interests in the disputed domain name.
The Complainant further submits that the Respondent registered the disputed domain name on December 29, 2016, which is after the Complainant filed for registration of its CHATROULETTE trademark and also after the Complainant’s first use in commerce of the CHATROULETTE trademark in 2009. (c) The disputed domain name was registered and is being used in bad faith.
The Complainant contends that the Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use because the Respondent’s domain name is confusingly similar to the Complainant’s trademark and the website advertises Internet video and chatt services.
The Complainant moreover asserts that the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Relying on Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330 and RRI Financial, Inc. v. Ray Chen,WIPO Case No. D2001-1242, the Complainant asserts that failure to respond to a cease-and-desist letter may be considered as a factor in finding bad faith registration and use of a domain name.
The Complainant further asserts that, at the time of registration of the disputed domain name, given the international well-known popularity of the website, the Respondent knew of the existence of the Complainant’s trademarks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).
First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights in CHATROULETTE.
Secondly, the disputed domain name fully incorporates the Complainant’s CHATROULETTE trademark in which the Complainant has exclusive rights.
Thirdly, this Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the disputed domain name is viewed as a standard registration requirement and as such is disregarded.
Fourthly, this Panel finds that the addition of the term “group” does not constitute an element so as to avoid confusing similarity for purposes of the Policy.
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s CHATROULETTE trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.
With reference to section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel notes that where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. (AGUAS DE CABREIROA, S.A.U. v. Hello Domain,WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson,WIPO Case No. D2016 1338).
In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors:
- there is no evidence that the Respondent has been commonly known by the disputed domain name;
- there is no evidence that the Respondent has been licensed or authorized to use the disputed domain name by the Complainant;
- there is no evidence that legitimate noncommercial or fair use of the disputed domain name has taken place.
In fact, as set out in more detail below, this Panel believes, after having examined the evidence submitted by the Complainant, that the Respondent registered the disputed domain name with the intention of attracting visitors looking for the Complainant’s website to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith.”
The disputed domain name resolves to a website that directly competes with the Complainant by offering the same services to Internet users. This may confuse Internet users and attract them to the Respondent’s website, thus disrupting the Complainant’s business, which supports a finding that the Respondent uses the disputed domain name is bad faith under Policy, paragraph 4(b)(iii) and (iv).
The Panel also finds that the Respondent’s failure to reply to the Complainant’s cease-and-desist letter and to submit a Response amount to additional circumstances evidencing the Respondent’s bad faith.
Finally, with regard to the Respondent’s registration of the disputed domain name, this Panel believes bad faith may be found where the Respondent knew or should have known of the registration and use of the CHATROULETTE trademark prior to registering the disputed domain name. Such is true in the present case in which the Respondent registered the disputed domain name after the Complainant obtained its trademark registrations for the CHATROULETTE trademark. The established popularity and the extensive use of the CHATROULETTE trademark makes it disingenuous for the Respondent to claim that he was unaware that the registration of the disputed domain name would violate the Complainant’s rights.
In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under 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.
Benoit Van Asbroeck
Sole Panelist
Date: January 4, 2019
Full & Egal Universal Law Academy