WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. 1&1 Internet Limited
Case No. D2017-0266
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 1&1 Internet Limited of Gloucester, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <topchatroulette.com> (the “Disputed Domain Name”) is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2017. On February 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 15, 2017, 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 and that the language of the Registration Agreement is German. On February 21, 2017, the Complainant requested English to be the language of the proceeding in an amended Complaint. The Respondent made no submission in this regard.
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 in both English and German of the Complaint, and the proceedings commenced on February 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2017.
The Center appointed Andrea Mondini as the sole panelist in this matter on March 24, 2017. 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 created the Chatroulette service and website “www.chatroulette.com” that allows for random video chatting with other Internet users from around the world. Since its launch in 2009, Chatroulette has become increasingly popular, with a monthly average of around 260,000 visitors in 2016.
The Complainant is the owner of several registrations for the trademark CHATROULETTE, including United States Trademark and Patent Office (“USPTO”) registration no. 4445843, registered on December 10, 2013 in classes 38 and 45, and European Union Trade Mark (“EUTM”) registration no. 008944076 registered on December 4, 2012 in classes 35, 38 and 42.
The Respondent registered the Disputed Domain Name <topchatroulette.com> on July 7, 2016
The Disputed Domain Name resolves to a website offering an online webcam chat site.
5. Parties’ Contentions
The Complainant contends in essence:
- That the Complainant owns registrations for the trademark CHATROULETTE and that this trademark has acquired a high degree of public recognition and goodwill;
- That the Disputed Domain Name is confusingly similar to its trademark CHATROULETTE as it includes the entirety of this trademark, whereby the addition of the generic word “top” does not dispel the confusing similarity;
- That the use of the Disputed Domain Name for services that directly compete with the Complainant’s services does not constitute bona fide offering of goods or services;
- That the Respondent is not sponsored or affiliated in any way with the Complainant, nor commonly known by the Disputed Domain Name;
- That the Complaint has not given to the Respondent permission to use the Complainant’s trademark in any manner;
- That the Respondent registered the Disputed Domain Name in bad faith because it knew or should have known of the existence of the Complainant’s trademark and because it used a privacy service to hide its identity;
- That the Respondent is using the Disputed Domain Name in bad faith because it is using it to offer an online webcam site which directly competes with the Complainant’s own offerings.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the proceeding
The Panel notes that, although the registration agreement is in German, the Complainant requested English to be the language of the proceeding and that the Respondent made no submission in this regard.
Considering that the Complainant states that it is unable to communicate in German and that Respondent is a company located in the United Kingdom and did not object to the English language, the Panel determines that English is the language of the proceedings in accordance with paragraph 11(a) of the Rules.
6.2. Substantive Issues
According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;
(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
The Complainant has shown that it is the holder of several registrations of the trademark CHATROULETTE in numerous jurisdictions. The Disputed Domain Name includes the trademark entirely. In the Panel’s opinion, the addition of the descriptive term “top” does not suffice to avoid the confusing similarity.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s CHATROULETTE trademark in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Although the complainant bears the ultimate burden of establishing this element of paragraph 4(a) of the Policy, previous UDRP panels have recognized that this could result in the potentially impossible task of proving a negative proposition. Such a proof requires information that is primarily within the knowledge of the respondent. Therefore, the common view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name once the complainant has established a prima facie showing indicating the absence of such rights or legitimate interests. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In the present case, the Respondent is not commonly known by the Disputed Domain Name. Moreover, the Complainant has declared that it is not affiliated in any way with the Respondent and that it has not authorized the Respondent to use its trademark CHATROULETTE in any way. The Respondent has not contested these allegations. Moreover, the Panel finds that the Respondent’s use of the Complainant’s trademark to offer web chat services that directly compete with the Complainant’s offerings does not amount to a bona fide offering of goods or services within the meaning of the Policy.
In the light of the Complainant having established an unrebutted prima facie case, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Considering the popularity of the Complainant’s web chat services, the Complainant contends that the Respondent registered the Disputed Domain Name in bad faith because it knew or should have known of the existence of the Complainant’s trademark. The Respondent has not denied this allegation. The Respondent’s website the Disputed Domain Name resolves to expressly refers to the Complainant and its “Chatroulette” offering, thus establishing that the Respondent knew of the Complainant’s mark and services. Also the use of a privacy service to hide its identity is an indication of registration in bad faith. Therefore, the Panel finds that the Respondent registered Disputed Domain Name in bad faith.
The evidence submitted by the Complainant shows that the Respondent has used the Disputed Domain Name to offer web chat service that directly competes with the Complainant’s offering. In the Panel’s opinion this constitutes use in bad faith under paragraph 4(b)(iv) of the Policy.
Therefore, this Panel finds that the Respondent registered and used the Disputed Domain Name in bad faith.
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, <topchatroulette.com>, be transferred to the Complainant.
Date: April 7, 2017