WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Naresh Puniya

Case No. D2018-1351

1. The Parties

The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Naresh Puniya of Ahmedabad, India.

2. The Domain Name and Registrar

The disputed domain name <chatroulette-omegle.com> is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2018. On June 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 2018, 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 June 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2018.

The Center appointed Luca Barbero as the sole panelist in this matter on July 19, 2018. 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 operates an online chat website that pairs random people from around the world together for real-time, webcam-based conversations. Such website is published at the domain name <chatroulette.com>, which was registered on November 16, 2009.

The Complainant is the owner of trademark registrations across various jurisdictions for CHATROULETTE (word mark), including the following:

- European Union trademark registration No. 008944076, filed on March 10, 2010, in classes 35, 38 and 42;

- Swiss trademark registration No. 600401, filed on March 16, 2010, in classes 35, 38 and 42;

- United States trademark registration No. 4445843, filed on January 10, 2011, in classes 38 and 45;

- German trademark registration No. 302010003706, filed on March 10, 2010, in classes 35, 38 and 42.

The disputed domain name <chatroulette-omegle.com> was registered on February 28, 2017 and is pointed to a Wordpress website which provides comments about random chat websites and applications, including alternative services to the ones provided by the Complainant through its website “www.chatroulette.com”. The Complainant’s trademark CHATROULETTE and its domain name <chatroulette.com> are expressly mentioned in one of the comments on the website, reading “Chatroulette Alternatives – Sites like chatroulette.com”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its trademark CHATROULETTE, since it reproduces the mark in its entirety with the sole addition of a hyphen and of the third-party’s trademark OMEGLE.

The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name because:

i) the Respondent is not commonly known by the disputed domain name;

ii) the Complainant has not licensed, authorized, or permitted Respondent to register the disputed domain name;

iii) it is highly unlikely that the Respondent registered the disputed domain name without being aware of the Complainant’s well-known trademark since, in its website, the Respondent makes reference to the Complainant’s primary website at the domain name <chatroulette.com> and lists its alternative sites;

iv) the Respondent’s use of the disputed domain name to redirect users to a website providing alternative sites and applications to the Complainant’s “www.chatroulette.com” website cannot constitute a bona fide offering of goods or services or legitimate noncommercial or fair use; and

v) the Respondent uses the Complainant’s trademark as metadata to increase the likelihood that an Internet user searching for the Complainant through a search engine would come across the disputed domain name and subsequently becoming confused as to its source.

The Complainant submits that the Respondent registered and used the disputed domain name in bad faith since:

i) the Complainant and its CHATROULETTE trademark are known internationally, with trademark

registrations across numerous countries, and the Complainant has marketed and sold its goods and

services using this trademark since 2009, which is well before Respondent’s registration of the

disputed domain name on February 28, 2017;

ii) the Respondent has demonstrated knowledge of and familiarity with the Complainant’s brand and business by registering a domain name confusingly similar to the Complainant’s CHATROULETTE trademark;

iii) the Respondent has mentioned the Complainant’s primary website “www.chatroulette.com” and even listed its alternative sites on the website to which the disputed domain name resolves;

iv) due to the fame of the Complainant’s trademark, the Respondent has intentionally misappropriated the Complainant’s trademark as a way of redirecting Internet users to the website at the disputed domain name;

v) the Complainant sent cease and desist letters to the Respondent, by email, but the Respondent failed to reply.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights on the trademark CHATROULETTE based on the several trademark registrations for CHATROULETTE (word mark) cited under Section 4 above.

The disputed domain name incorporates the trademark CHATROULETTE in its entirety, with the mere addition of a hyphen and a third-party trademark, OMEGLE.

As stated in section 1.12 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “Where the complainant’s trademark is recognizable within the disputed domain name, the addition of other third-party marks (i.e., <mark1+mark2.tld>), is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark under the first element”.

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.

According to the evidence on record, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name.

In addition, there is no evidence that the Respondent might have been commonly known by the disputed domain name.

As mentioned above, the disputed domain name is pointed to a Wordpress website which provides comments about random chat websites and applications, citing the Complainant’s trademark CHATROULETTE and its domain name <chatroulette.com> and mentioning services provided by third parties which are expressly defined in one of the comments as “Chatroulette Alternatives - Sites like chatroulette.com“. The Panel finds that the comments published on the Respondent’s website are apt to divert Internet users to websites and applications competing with the ones of the Complainant. Moreover, the Panel further notes that the website does not display any clear disclaimer apt to inform users of the lack of affiliation with the Complainant.

In view of the above-described use of the disputed domain name, the Panel finds that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.

The Panel finds that, in view of the Complainant’s prior registration and use of the trademark CHATROULETTE in connection with the Complainant’s random chat services provided through the website “www.chatroulette.com” and the fact that the Complainant’s trademark is a coined term and has acquired notoriety in its sector, the Respondent was or should have been aware of the Complainant’s trademark at the time of registration.

Furthermore, the circumstance that the disputed domain name has been pointed to a website expressly citing the trademark CHATROULETTE and the Complainant’s website demonstrates that the Respondent was indeed aware of the Complainant and its trademark.

As to the use of the disputed domain name, the Panel finds that the contents of the website to which the disputed domain name resolves are apt to confuse Internet users looking for the Complainant and its CHATROULETTE service and divert them to competitive websites and applications which are expressly mentioned and promoted through the Respondent’s website. In view of the foregoing and also in light of the Respondent’s failure to publish a disclaimer, the Panel finds that the Respondent intentionally attempted to attract Internet users to its website, for commercial gain, by causing a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website according to paragraph 4(b)(iv) of the Policy.

The Panel also finds that the Respondent’s failure to reply to the Complainant’s cease and desist letter and to submit a Response amount to additional circumstances evidencing the Respondent’s bad faith.

Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by paragraph 4(a)(iii) of the Policy.

7. Decision

The transfer of the disputed domain name shall be ordered without prejudice to any rights of the third party owning the trademark OMEGLE in the disputed domain name.¹

Luca Barbero
Sole Panelist
Date: July 29, 2018

¹ 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 <chatroulette-omegle.com> be transferred to the Complainant.