Complainant is Andrey Ternovskiy dba Chatroulette, Malta, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Lukas Jansen, Germany. 2. The Domain Name and Registrar
The disputed domain name (“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 April 5, 2019. On April 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 6, 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 Complainant on April 12, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 15, 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 Respondent of Complaint, and the proceedings commenced on April 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2019. Respondent sent an email on April 24, 2019 stating: “Hello, can you explain to me which disputes this domain is about?” and an email on April 25, 2019 stating “Hello, maybe you should tell me what this complaint is about ...”. Respondent did not submit any formal response. Accordingly, the Center notified Respondent’s about commencement of Panel Appointment Process on May 8, 2019.
The Center appointed Marina Perraki as the sole panelist in this matter on May 15, 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
According to the Complaint, Chatroulette is an online chat website service that pairs random people from around the world together for real-time, webcam-based conversations (Chatroulette). Chatroulette is known for online video chat services and online video social introduction and networking services. It was created in 2009 by Complainant, when he was just a 17-year-old high school student in Moscow, the Russian Federation. Chatroulette very quickly established significant popularity. Per Complaint, shortly after its launch, Chatroulette began to receive 500 visitors per day and one month later, in January 2010, this figure had increased to 50,000 visitors per day (approximately 1.5 million users per month). This represented, per Complaint, a 10,000% increase in traffic over just one month. In February 2010, that traffic had increased to approximately 130,000 visitors per day (3.9 million monthly visitors), which, per Complaint, is a 26,000% increase in traffic over the December 2009 figures.
Chatroulette also immediately attracted the attention of international media. It was featured in a number of publications including “The New York Times” on February 13, 2010, “The New Yorker” on May 17, 2010, “New York” magazine on February 5, 2010, “Spiegel On Line” on May 3, 2010, as well as on television shows including “Good Morning America” and “The Daily Show with Jon Stewart”.
Chatroulette continues to be one of the most popular video chat sites in the world, as per Complaint.
Complainant holds numerous trademark registrations for the CHATROULETTE mark in a number of countries and territories, including:
- the European Union trademark registration No. 008944076, filed on March 10, 2010, registered on December 4, 2012, for services in International Classes 35, 38, 42,
- the German trademark registration No. 302010003706, filed on March 10, 2010, registered on February 21, 2013, for services in International Classes 35, 38, 42, and
- the Swiss trademark registration no 600401, filed on March 16, 2010, registered on May 14, 2010, for services in International Classes 35, 38, 42.
Complainant is also the owner of the domain name registered on November 16, 2009.
The Domain Name was registered on June 9, 2014 and is used for a website that features adult content.
On July 3, 2018, July 9, 2018 and March 26, 2019, Complainant sent cease and desist letters to Respondent to which Respondent did not reply. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent
Respondent did not formally reply to Complainant’s contentions, and submitted two informal emails on April 24 and 25 2019. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has demonstrated rights through registration and use on the CHATROULETTE mark.
The Panel finds that the Domain Name is confusingly similar with the CHATROULETTE mark of Complainant.
The Domain Name incorporates the said mark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525).
The word “house” and the hyphen “-“ which are added in the Domain Name do not avoid a finding of confusing similarity as they are non-distinctive terms and the CHATROULETTE mark remains clearly distinguishable (Andrey Ternovskiy dba Chatroulette v. 1&1 Internet Inc / David Grandpierre, WIPO Case No. D2018-2237; Andrey Ternovskiy dba Chatroulette v. Gregory Rivera,WIPO Case No. D2018-2388; Accenture Global Services Limited v. Jean Jacque / Luck Loic,WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin1 ,WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic top-level domain (“gTLD”) “.com” is disregarded, as TLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275).
The Panel finds that the Domain Name is confusingly similar to the CHATROULETTE mark of Complainant.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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. The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complaint, Respondent was not authorized to register the Domain Name.
Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. On the contrary, as Complainant has demonstrated, the Domain Name directs internet users to a website that features adult content (MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant’s CHATROULETTE mark is well known for video-chat services and has gained immediate success within only a few weeks upon its launching. Because the CHATROULETTE mark had been widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226).
Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search and also due to Complainant’s nature of business, namely online services, wide use and immediate success of the CHATROULETTE mark on the Internet and in particular the website “www.” (Caesars World, Inc. v. Forum LLC,WIPO Case No. D2005-0517; Compart AG v. C / Vertical Axis Inc.,WIPO Case No. D2009-0462).
Furthermore, the Domain Name incorporates Complainant’s mark in its entirety. Use of the Domain Name therefore creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Name. It also indicates knowledge of Complainant and its field of business.
As regards bad faith use, Complainant demonstrated that the Domain Name directs Internet users to a website that features adult content. The Domain Name use therefore tarnishes Complainant’s reputation by suggesting a connection between Complainant and adult content services. This is an indication of bad faith use (WIPO Overview 3.0, section 3.12; MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205; Andrey Ternovskiy dba Chatroulette v. Wu Rui Jun, WIPO Case No. D2018-0695; Christian Dior Couture v. Identity Protection Service / Tom Birkett,WIPO Case No. D2014-1053).
Lastly, as Complainant has demonstrated, Respondent did not reply to any of the cease and desist letters sent by Complainant.
Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.
Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name be transferred to Complainant.
Marina Perraki
Panelist
Sole Panelist
Date: May 29, 2019
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