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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy, dba Chatroulette v. WhoisGuard Protected, WhoisGuard, Inc. / Abdennacer Hamdane, Nasser

Case No. D2016-2100

1. The Parties

The Complainant is Andrey Ternovskiy, dba Chatroulette of Moscow, Russian Federation, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Abdennacer Hamdane, Nasser of Casablanca, Morocco.

2. The Domain Name and Registrar

The disputed domain name <chatrouletteapp.com> (the "Disputed Domain Name") is registered with eNom, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 14, 2016. On October 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 18, 2016, 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 October 20, 2016 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 October 21, 2016.

On October 20, 2016, an email communication was received from the Respondent indicating that he bought the Disputed Domain Name for one year and he did not use any domain name related to any trademark. The Center acknowledged receipt of this email communication on the same day.

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 October 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2016.

On October 31, 2016, the Respondent sent an email communication to the Center indicating that he spent USD 1,000 on the Disputed Domain Name and the Complainant, if interested, could only buy the Disputed Domain Name from him. On November 1, 2016, the Center invited the Complainant to comment whether it would like to suspend the proceedings to explore the possibility of settlement. No reply was received from the Complainant.

On November 21, 2016, the Center informed the Parties that it would proceed with panel appointment.

The Center appointed Michael D. Cover as the sole panelist in this matter on November 23, 2016. 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 is the proprietor of a number of trade mark registrations consisting of or including the word "Chatroulette". The Complainant's trademark CHATROULETTE (the "Complainant's Trademark") is registered in the United States and also with the German and European Union Intellectual Property Offices, inter alia, in International Classes 35, 38, 42 and 45.

The business carried on by the Complainant under the Complainant's Trademark is an online chat website that pairs together random people from around the world for real time, web cam-based conversations. The Complainant created the business, that he carries out under the Complainant's Trademark, in 2009. The business carried on under the Complainant's Trademark grew rapidly and the number of visitors to the Complainant's website at "www.chatroulette.com" grew to several million annually. The Complainant registered its domain name <chatroulette.com> on November 16, 2009.

The Disputed Domain Name was registered on December 22, 2015. All that is known about the Respondent is set out above in this Decision, including the fact that the Respondent communicated with the Center by email on October 20 and 31, 2016. The Disputed Domain Name resolves to a website that offers for download the Complainant's own mobile chat app (Appendix 4.2 to the Complaint).

The Complainant sent three cease and desist letters to the Respondent, the last one being dated August 12, 2016. Copies of these are set out in Annex 10 to the Complaint. No response was received.

5. Parties' Contentions

A. Complainant

The Complainant notes that the extent of the registrations of the Complainant's trademark demonstrate the investment in its intellectual property rights. The Complainant also notes that the extensive and continuous use by the Complainant of the Complainant's Trademark and the consequent investment demonstrate that the Complainant enjoys a substantial degree of public recognition in the Complainant's Trademark and that this mark has become uniquely and directly associated with the Complainant.

The Complainant submits that the Respondent, in creating the Disputed Domain Name has added the descriptive term "app" to the Complainant's Trademark, having noted that the addition of a generic Top-Level Domain (gTLD), as here with the addition of ".com", does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly-similar to the Complainant's Trademark. The Complainant further notes that the fact that the word "Chatroulette" is so closely linked with the Complainant's brand and the Complainant's Trademark only increase the confusing similarity.

The Complainant notes that past panels have consistently held that a domain name which consists merely of a complainant's trademark and an additional term that closely relates to the complainant's business is confusingly similar to the complainant's trademark and concludes that the Disputed Domain Name is confusingly similar to the Complainant's Trademark.

With regard to the Respondent having no rights or legitimate interests in respect of the Disputed Domain Name, the Complainant notes that it has not given the Respondent permission to use the Complainant's Trademark and that Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant also notes that the Respondent is not known by the Disputed Domain Name and it is not making a bona fide offering of goods or services nor a legitimate noncommercial use of the Disputed Domain Name. The Complainant also draws the Panel's attention to Annex 4 to the Complaint, which comprises screenshots of the Respondent's website. Finally, with regard to this aspect, the Complainant draws the Panel's attention to the fact that the Dispute Domain Name was registered in 2015, substantially after the Complainant started using the Complainant's Trademark and registered its own domain name, which was in 2009.

The Complainant concludes that the Respondent has no rights and legitimate interests in the Disputed Domain Name and then goes on to make submissions on the Disputed Domain Name being registered and used in bad faith.

The Complainant notes that the Respondent had initially used a privacy service to hide its identity, which other panels have held is evidence of bad faith registration and use. It also submits that it would be illogical to believe that the Respondent registered the Disputed Domain Name without targeting the Complainant.

The Complainant submits that the Respondent's use of the Disputed Domain Name as noted above constitutes disruption of the Complainant's business.

B. Respondent

The Respondent has not filed a Response and has only communicated by the two emails of October 20 and 31, 2016 to the Center.

6. Discussion and Findings

The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to its trademark, in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has established that it has rights in the Complainant's Trademark CHATROULETTE. The Complainant has registered rights in the Complainant's Trademark in a number of important jurisdictions around the world and has also likely established common law rights, although the Complainant does not supply revenue or turnover to substantiate the scope of the business carried on under the Complainant's Trademark.

The Panel also accepts the Complainant's submission that the Disputed Domain Name is confusingly similar to the Complainant's Trademark. "Chatroulette" is the dominant part of the Disputed Domain Name and, as noted in the decisions cited by the Complainant, it is well established that the addition of a generic word as "app" and a gTLD is not sufficient to avoid confusing similarity. The Panel therefore concludes that the Disputed Domain Name is confusingly similar to the Complainant's Trademarks.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In particular, the Panel accepts that the Complainant has not authorized or licensed the Respondent to use the Complainant's Trademark.

The Panel accepts that the Respondent would not meet the tests for the non-exhaustive list of circumstances that demonstrate rights or legitimate interests in a domain name, as set out in paragraph 4(c). How to demonstrate your rights to and legitimate interests in the domain name in responding to a complaint. The use of the Disputed Domain Name commenced well after the registration of the Complainant's Trademark and also well after the registration of the Complainant's domain name <chatroulette.com>. There is no evidence that the Respondent was commonly known by the Disputed Domain Name or that the Respondent has been making legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's Trademarks. In this case, the evidence points strongly the other way, with the Disputed Domain Name resolving to a website that competes with the business of the Complainant.

The Panel accordingly concludes that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Panel accepts the submissions of the Complainant on this aspect and finds that the Disputed Domain Name has been registered and is being used in bad faith. The Panel finds, on the balance of probabilities, that the conduct of the Respondent set out by the Complainant does constitute registration and use of the Disputed Domain Name in bad faith. This is primarily because the Panel finds, on the balance of probability that the Respondent, by using the Disputed Domain Name, has intentionally attempted to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with Complainant's Trademark as to the source or affiliation of the Respondent's website. The Panel also finds, on the balance of probability, that it is a reasonable inference that the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of the Complainant.

The Panel accordingly concludes 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, <chatrouletteapp.com> be transferred to the Complainant.

Michael D. Cover
Sole Panelist
Date: December 7, 2016

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