The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Arcanite Media Ltd. of Belize City, Belize. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with ROTLD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2019. On March 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 22, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 March 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2019.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on May 2, 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. 302010003706, 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 May 14, 2010.
- United States trade mark CHATROULETTE No. 4445843, registered on December 10, 2013.
The Domain Name was registered on September 22, 2018 and does not resolve to a website.
By email of November 19, 2018, the Complainant has sent a cease-and-desist letter to the Respondent. By e-mail of November 20, 2018 the Respondent replied:
“We have no intention in using the domain name in any of your client’s registered trademark classes.
Thanks for letting us know!”
The Complainant responded by reply e-mail:
“Please note that our client has a strict policy against unauthorized third‐party domain name registrations containing their CHATROULETTE trademark.
In light of the above we respectfully request that you agree to transfer the domain name with immediate effect.”
To which the Respondent replied:
“We are not in the business of transferering valuable generic IP assets free of charge.
Bear in mind, we will not respond unless you have a reasonable offer or solution.”
The Complainant by email of November 21, 2018 wrote:
“The domain name concerned ‐ ‐ is not a generic domain name and, as you
rightfully say, is in fact an IP asset that belongs to Chatroulette.
We will refund registration costs so to expedite the transfer process, but please do be aware that
should you not agree to transfer this domain name, we reserve the right to escalate to UDRP.”
The Respondent then replied by return e-mail:
“As a policy, we do not respond to threats.
Please go ahead with your reverse domain name hijacking attempt.” 5. Parties’ Contentions A. Complainant
According to the Complainant, the Domain Name incorporates the Trade Marks in their entirety, thus rendering the Domain Name identical to the Trade Marks. The applicable country code Top-Level Domain (“ccTLD”) in the Domain Name (in this case “.ro”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test, the Complainant submits.
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, the Respondent’s name is Arcanite Media Ltd. which does not resemble the Domain Name in any manner. Furthermore, the Complainant points out that the Respondent is not sponsored by or affiliated with the Complainant in any way and the Complainant has not licensed, authorized, or permitted the Respondent to register a domain name incorporating the Trade Marks.
The Complainant states that the Respondent has not used the Domain Name to connect to a website and has not demonstrably made any attempt to make legitimate use of the Domain Name. In the view of the Complainant, this evinces a lack of rights or legitimate interests in the Domain Name.
The Complainant points out that the Domain Name was registered, well after the Complainant registered the domain name on November 16, 2009 and the registration date of the Trade Marks. Therefore, the Complainant submits, 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.
Furthermore, the Complainant submits that the fact that the Domain Name currently resolves to a blank page and the Respondent has failed to make any genuine use of the Domain Name can be considered to constitute a factor in finding bad faith registration and use. The Complainant also points out 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. Furthermore, the Complainant states, the Respondent has failed to positively respond to a cease-and-desist letter from the Complainant.
Finally, according to the Complainant the Respondent has engaged in a bad faith pattern of “cybersquatting”. The Respondent has been involved in three other UDRP cases (see Facebook Inc. v. Bogdan Surdu and Arcanite Media Ltd.,WIPO Case No. DRO2019-0001; Guideline AS v. Domain Department / Arcanite Media Ltd.,WIPO Case No. DSE2018-0015; and MM Sports AB v. Domain Department, Arcanite Media Ltd.,WIPO Case No. DSE2017-0031) and holds several other domain names which, in the view of the Complainant constitute trade mark infringement, such as (Burberry Limited – BURBERRY), (Facebook Inc. - FACEBOOK), (Sanrio Company, Ltd. – HELLO KITTY) and (Prada S.A. - PRADA).
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 identical to the Trade Marks as it incorporates the term “Chatroulette”, of which the Trade Marks consist, in its entirety. The ccTLD (in this case “.ro”) is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11). Therefore, the Panel finds that the Domain Name is identical 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 the Domain Name. The Respondent’s lack of use of the Domain Name for a website or otherwise in the present case does not amount to a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
In view of these circumstances and the lack of a Response, the Panel concludes that the Complainant has established 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 Respondent’s acquisition of the Domain Name occurred eight 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 online chat services;
- 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.
With regard to bad faith use, the fact that the Domain Name at this stage does not appear to resolve to an active web site does not imply a lack of bad faith. As set out in the WIPO Overview 3.0, section 3.3, the consensus view is that the apparent lack of so-called active use (in this case: to resolve to a website) of a domain name without any active attempt to sell or to contact the trade mark holder (passive holding), does not as such prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Dzianis Zakharenka,WIPO Case No. D2015-0640). In accordance with this UDRP jurisprudence, a UDRP panel must examine all the circumstances of the case to determine whether a respondent is acting 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 mark CHATROULETTE incorporated in its 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;
- the response to the cease-and-desist letters sent by the Complainant, which at first was “We have no intention in using the domain name in any of your client’s registered trademark classes” subsequently “We are not in the business of transferring valuable generic IP assets free of charge” and “Bear in mind, we will not respond unless you have a reasonable offer or solution”, showing disregard for the Complainant’s trade mark rights and an indication that the Respondent registered the Domain Name in order to sell it if the Complainant were to make a reasonable offer;
- the Respondent’s practice of abusive registration of domain names, as evidenced by its holding several domain names incorporating third-party trade marks and its involvement as respondent in several other UDRP cases, in which it was ordered to transfer the domain name involved to the complainant;
- 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 17, 2019
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