The Complainant is O LLC of Seattle, Washington, United States of America, represented by Focal PLLC, United States of America.
The Respondent is Chukhmanenko Aleksei Aleksandrovich of Kiev, Ukraine, represented by Landver Law Corporation, APC, United States of America. 2. The Domain Name and Registrar
The disputed 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 September 5, 2015. On September 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 8, 2015, 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 September 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2015. On September 23, 2015 the Respondent submitted a 30 day extension request to the Center. On September 24, 2015, the Center invited the Complainant to submit its comments with regards to such extension by September 25, 2015. On September 25, 2015, the Complainant opposed to a 30 day extension but accepted a 4 day extension for the Respondent to respond. On September 28, 2015 the Center notified the parties that the response due date was extended to October 3, 2015. The Respondent did not submit any response.
The language of the proceeding is English.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on October 21, 2015. 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 in this proceeding is O LLC, an Oregon limited liability company carrying out its activities through the website under the domain name , an interactive website that allows its users to be paired with other uses at random to chat one-on-one, utilizing both video and text chat. The domain name was first registered on July 26, 2008 and has been used since March 25, 2009. The Complainant's website receives almost 40 million visits monthly.
The Complainant holds the US service mark OMEGLE in connection with "[p]roviding internet chatrooms", which was registered on July 19, 2011 under the registration No. 3997588 with a priority date as of December 23, 2010.
Both the above mentioned domain name and service mark were first registered by Leif K-Brooks on behalf and for the account of the Complainant, before being assigned to the Complainant on August 27, 2015.
The Respondent registered the disputed domain name on October 17, 2013. The service proposed by the Respondent on its website is similar to the one of the Complainant, consisting of a random video chat. 5. Parties' Contentions A. Complainant
The Complainant first alleges that the disputed domain name is similar to its OMEGLE mark as it entirely contains its mark and that the addition of the country code Top-Level Domain ("ccTLD") element ".tv" is not sufficient to exclude the likelihood of confusion resulting from such incorporation.
The Complainant further considers that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant did neither authorize nor license any right to the Respondent with regards to its OMEGLE mark. The Respondent is not known under that term and is not making any bona fide offering of goods or services under the disputed domain name.
The Complainant finally claims that the Respondent was obviously aware of its rights upon the mark OMEGLE when it registered the disputed domain name. It also uses it in bad faith as the website at the disputed domain name emulates Complainant's website design and uses the same font and color for displaying the OMEGLE mark in order to divert Internet users looking for the Complainant's website to the Respondent's one. As a result, the Complainant concludes that the disputed domain name has been registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the holder of the mark OMEGLE. The disputed domain name wholly incorporates the Complainant's mark. The only difference between the Complainant's mark and the disputed domain name is the addition of the ".tv" ccTLD.
UDRP panels widely agree that incorporating a trademark into a domain name is sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629), as the mere addition of a ccTLD does not serve to differentiate the domain name from the mark (see, e.g., Al Jazeera Media Network v. James Harden,WIPO Case No. DTV2014-0003).
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name "would require complainant to prove a negative, a difficult, if not impossible, task". Thus, in that decision, the panel opined that "[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion". Following that decision, subsequent panels developed a consensus view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent's burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
In the present case, the Complainant is the owner of the OMEGLE trademark. The Complainant has no business or other relationship with the Respondent, who has not been duly authorized by the Complainant to use its trademarks.
The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
On its side, the Respondent has not answered to the Complaint.
Considering the absence of a Response and the fact that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
Consequently, in light of the above and the Panel's findings as to bad faith below, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled. C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith typically requires the Respondent to be aware of the Complainant's trademark.
In the present case, at the time when the Respondent registered the dispute domain name, the Complainant's website under the domain name had a significant number of users around the world and kept considerable attention from the media.
Considering the fact that the Respondent's website expressly states: "we are one of the best Sites like Omegle" and uses use the same font and color (orange) for displaying the Complainant's mark, there is absolutely no doubt that the Respondent was well aware of the Complainant's trademark when it registered the disputed domain name. The Respondent's website layout is thus clear evidence that the Respondent tried to exploit the Complainant's goodwill by creating a likelihood of confusion with the Complainant's mark, so as to divert Internet users from the Complainant's website to its website and make them falsely believe that they would be visiting the Complainant's website.
Consequently, the Panel is of the opinion that the disputed domain name has been registered and is being used in bad faith under the paragraph 4(a)(iii) of 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.
Philippe Gilliéron
Sole Panelist
Date: October 28, 2015
Full & Egal Universal Law Academy