The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Beauvais Gary of Montpellier, France, represented by DEM Avocat, France. 2. The Domain Name and Registrar
The disputed 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 November 12, 2018. On November 12, 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 13, 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 16, 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 proceeding commenced on November 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2018. On December 3, 2018, the Respondent requested an extension to file the Response. On December 4, 2018, the Center granted the automatic 4 day Response extension until December 10, 2018. The Response was filed with the Center on December 10, 2018.
On December 13, 2018, the Complainant filed a supplemental submission in reply to the Response. On December 13, 2018, the Respondent filed an objection to the filing of the Complainant’s supplemental submission.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on December 24, 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.
On December 27, 2018, the Respondent filed a supplemental submission in response to the Complainant’s supplemental submission. On December 31, 2018, the Complainant filed an additional supplemental submission. On January 2, 2019, the Respondent filed an additional supplemental submission. 4. Factual Background A. Complainant
The Complainant is an individual with an address in Malta.
The Complainant has, since November 2009, been operating a real time online chat website that pairs random users for webcam based conversations, under the trade mark CHATROULETTE (the “Trade Mark”)
The Complainant is the owner of registrations in several jurisdictions for the Trade Mark, including the European Union registration No. 008944076, with a registration date of December 4, 2012.
The Complainant has been the owner of the domain name (“the Complainant’s Domain Name”) since November 16, 2009. B. Respondent
The Respondent is an individual with an address in France. C. Disputed Domain Name
The disputed domain name was registered on March 15, 2010. D. Website at the Disputed Domain Name
The Respondent has, since 2010, been using the disputed domain name in respect of the Respondent’s real time online chat website that pairs random users for webcam based conversations with an adults only (X-rated) focus (“the Respondent’s Website”). 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith. B. Respondent
The Respondent contends that:
(i) It registered the disputed domain name before publication of the Complainant’s applications for registration of the Trade Mark, so he could not know at that time that the Complainant had applications pending for registration of the Trade Mark;
(ii) The Trade Mark is a generic term, and the Complainant has not defended its Trade Mark. Therefore the Complainant’s registrations for the Trade Mark are invalid;
(iii) Furthermore, the Complainant did not invent the concept of “chat roulette” and there were “chat roulette” websites available before the Complainant set up his website;
(iv) The Respondent has registered and used the disputed domain name in good faith to provide adult focussed (X-rated) online chat services that pair random users for webcam based conversations, via the Respondent’s Website; and
(v) The Respondent chose to add the letter “x” to the disputed domain name to refer to the Respondent’s X-rated services, and therefore the Respondent has not engaged in typosquatting as alleged by the Complainant. 6. Discussion and Findings 6.1 Supplemental Filings
Panels have sole discretion, under paragraphs 10 and 12 of the Rules, whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and explain why it was unable to provide that information in the complaint or response (for example, owing to some exceptional circumstance).
Paragraph 12 of the Rules expressly provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case. Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6).
It is not usual practice, absent special circumstances and a satisfactory explanation from the party seeking to file supplementary submissions, for UDRP panels to allow reply or sur-reply submissions.
In the present proceeding, the Parties have failed to address in their (several) unsolicited supplemental submissions any exceptional circumstances that would warrant the Panel exercising its discretion to allow the supplemental submissions. The Panel further considers that it is not necessary for the Panel to take into account the Parties’ supplemental submissions in order to fairly decide the present dispute.
In all the circumstances, the Panel therefore determines that it will not admit the Parties’ supplemental submissions. 6.2 Substantive Elements of Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The Respondent has not placed before the Panel any evidence to support the Respondent’s contentions (even if relevant for the purposes of the Policy) that the Trade Mark is a generic term, that the Complainant has not defended his Trade Mark, and that the Complainant did not invent the concept of “chat roulette”. The Complainant asserts that it invented the Trade Mark, by combining the words “chat” and “roulette”, and there is no evidence before the Panel to suggest otherwise.
The Respondent has submitted evidence of a competitor of the Complainant providing similar services to those offered by the Complainant under the Trade Mark, and which apparently predate (by several months) the registration of the Complainant’s Domain Name, but under a trade mark very different to the Complainant’s Trade Mark.
The fact the Complainant’s registrations for the Trade Mark postdate the date of registration of the disputed domain name is immaterial for the purposes of the first limb under paragraph 4(a) of the Policy (see WIPO Overview 3.0, section 1.1.3).
In addition to the Complainant’s registrations for the Trade Mark, the Panel finds that the Complainant’s (uncontested) evidence demonstrates that the Complainant has obtained common law or unregistered rights in the Trade Mark which (incidentally, for the purposes of the first element under paragraph 4(a) of the Policy; and, relevantly, for the purposes of the second and third elements) predate the date of registration of the disputed domain name (see WIPO Overview 3.0, section 1.3). Amongst other things, the Complainant relies upon the exponential increase in visitors to the Complainant’s website, from approximately 50,000 visitors per day in January 2010, to approximately 130,000 visitors per day in February 2010. The Complainant also relies upon articles from The New York Times and from New York Magazine in February 2010 and March 2010 regarding the Complainant and the exponential growth of his services offered under the Trade Mark, which articles predate the date of registration of the disputed domain name.
The disputed domain name consists of a common, obvious, or intentional misspelling of the Trade Mark – specifically, it contains the Trade Mark in its entirety with the letter “x” interspersed between the words “chat” and “roulette” (see WIPO Overview 3.0, section 1.9).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that the Respondent has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Respondent’s Website, to provide real time random online webcam chat services (albeit with an adult or X-rated focus) in direct competition with the real time random online webcam chat services offered by the Complainant under the Trade Mark since November 2009.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
In light of the manner of the use of the disputed domain name highlighted in section (b) above, the Panel finds that the requisite element of bad faith has been made out in accordance with paragraph 4(b)(iv) of the Policy.
In all the circumstances, the Panel finds it is inconceivable the Respondent was not aware of the Complainant and of the Complainant’s Trade Mark when the Respondent registered the disputed domain name. The Respondent has not denied such knowledge in the Response.
For the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. 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.
Sebastian M.W. Hughes
Sole Panelist
Date: January 7, 2019
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