The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is On behalf of OWNER, c/o of Alexandria, Virginia, United States of America (“United States”) / Domain Admin, High Tech Investments LTD of Providence, Seychelles. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Key-Systems GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 26, 2019, 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 March 27, 2019, 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 March 29, 2019.
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 April 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2019.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on May 1, 2019. 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 since 2009 operates an online chat website under the name “Chatroulette” that pairs random people from around the world together for real-time, webcam-based conversations.
The website under the Complainant’s domain name grew to over 500,000 daily visitors in early 2010 and received 2.5 million visits in February 2019.
The Complainant is the owner of, inter alia, the following trade marks (the “Trade Marks”):
- German trade mark CHATROULETTE no. DE302010003706, registered on February 21, 2013;
- European Union trade mark CHATROULETTE no. 008944076, registered on December 4, 2012;
- Swiss trade mark CHATROULETTE no. 600401 registered, on March 14, 2010;
- United States trade mark CHATROULETTE no. 4445843, registered on December 10, 2013.
By email of November 19, 2018, the Complainant sent a cease-and-desist letter to the Respondent, with a reminder by email of November 26, 2018, to which no response was received.
The Domain Name was registered on July 6, 2011. The website to which the Domain Name resolves contains, inter alia, sponsored links labelled “Chatroulette”, “Chatroulette Kostenlos” (German for “free”), “Chat Video Chat”, and “Live Chat App”. 5. Parties’ Contentions A. Complainant
According to the Complainant, the Domain Name incorporates the Trade Marks in their entirety while adding the geographically descriptive term “de” (country abbreviation for Germany), thus rendering the Domain Name confusingly similar to the Trade Marks. The Complainant further submits that the addition of a geographical term to the Trade Marks does not sufficiently differentiate the Domain Name from the Trade Marks.
The Complainant states that the Respondent is not commonly known by the Domain Name, which would demonstrate a lack of rights or legitimate interests. In addition, the Complainant contends, at the time of filing of the Complaint, the Respondent was using a privacy WhoIs service, which would equate to a lack of legitimate interests. Furthermore, the Complainant points out that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not licensed, authorized, or permitted the Respondent to register a domain name incorporating the Trade Marks.
According to the Complainant, historical screenshots of the website to which the Domain Name resolves show that since 2015, the Respondent has been using the Domain Name to redirect Internet users to a website featuring sponsored links to third-party websites, some of which directly compete with the Complainant’s business. The Complainant assumes that the Respondent receives pay-per-click revenue from the linked websites that are listed at the website. Such use of the Domain Name in the Complainant’s view does not qualify as a bona fide offering of goods or services.
Although the Domain Name was registered on July 6, 2011, the Complainant alleges that to the best of its knowledge, the Domain Name only transitioned to the Respondent between September 4, 2014, and November 12, 2014, well after the Complainant registered the domain name on November 16, 2009, and the registration date of the Trade Marks.
Also in view of the exponential growth in the number of visitors to the website under already in early 2010, the Complainant believes that at the time of registration of the Domain Name in the Respondent’s name, the Respondent knew, or at least should have known, of the existence of the Trade Marks.
The Complainant also points out that the Domain Name is currently listed at Sedo for a “buy now” price of USD 1,088, an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the Domain Name. Furthermore, the Complainant contends that the Respondent creates a likelihood of confusion with the Complainant and the Trade Marks by registering the Domain Name, which incorporates the Trade Marks in their entirety. The presence of multiple pay-per-click (“PPC”) links on the website connected to the Domain Name, some of which directly reference the Complainant and/or its competitors, demonstrates, the Complainant submits, that the Respondent is using the Domain Name to confuse unsuspecting internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the Domain Name and the website connected thereto. Furthermore, the Complainant states that the Respondent failed to respond to a cease-and-desist letter from the Complainant, while employing at the time of initial filing of the Complaint a privacy service to hide its identity.
Together, these circumstances in the view of the Complainant constitute bad faith registration and use of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the term “Chatroulette”, of which the Trade Marks consist, in its entirety. The addition of “de”, which may refer to the country code Top-Level Domain for Germany (i.e., “.de”), does not avoid a finding of confusing similarity between the Domain Name and the Trade Marks (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see also, inter alia, TPI Holdings, Inc. v. Carmen Armengol,WIPO Case No. D2009-0361, and F. Hoffmann-La Roche AG v. John Mercier,WIPO Case No. D2018-0980). The generic Top-Level Domain (“gTLD”) “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. If the Complainant succeeds in doing so, 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 (See WIPO Overview 3.0, section 2.1).
Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name and has not acquired trade mark rights in “chatroulettede”.
Applying paragraph 4(c) of the Policy, previous UDRP panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. See WIPO Overview 3.0, section 2.9.
The Respondent’s use of the Domain Name in the present case does not amount to a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, since the website to which the Domain Name resolves, inter alia contains hyperlinks labelled “Chatroulette”, “Chatroulette Kostenlos”, “Chat Video Chat’ and ‘Live Chat App”, redirecting Internet users to third-party websites that compete with the Complainant’s services.
It is known that websites offering sponsored links likely generate PPC income. The Panel has verified that at the time of this decision the website was still active, containing these hyperlinks, and connected to the Domain Name.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks, since:
- the registration date confirmed by the Registrar is July 6, 2011, while the Respondent appears to have acquired the Domain Name between September 2014 and November 2014. The Respondent’s acquisition of the Domain Name therefore occurred four years after the registration of the earliest of the Trade Marks;
- the trade mark CHATROULETTE, which is incorporated in its entirety in the Domain Name, does not appear to be a dictionary word, nor a name of which it is likely that a registrant would spontaneously or accidentally think of;
- the website to which the Domain Name resolves, contains hyperlinks named “Chatroulette”, “Chatroulette Kostenlos”, redirecting Internet users to services that compete with the Complainant’s;
- a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name in its name would have informed the Respondent of the existence of the Trade Marks.
Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.
The Panel finds that the following circumstances taken together warrant a finding of bad faith use of the Domain Name:
- the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks;
- the non-dictionary nature of the Trade Marks incorporated in their entirety in the Domain Name, such that the Respondent cannot claim to have “accidentally” registered a domain name that happens to correspond to the Trade Marks;
- by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s Trade Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website;
- the PPC links displayed on the website at the Domain Name compete with and capitalize on the reputation and goodwill of the Trade Marks
- the lack of a response to the cease-and-desist letters sent by the Complainant and the absence of a formal Response of the Respondent.
Therefore, the Panel concludes that the 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.
Wolter Wefers Bettink
Sole Panelist
Date: May 15, 2019
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