WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Gomiz Barbera Luis
Case No. D2017-0273
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 Gomiz Barbera Luis of Artana, Spain.
2. The Domain Name and Registrar
The disputed domain name <chatroulette-mobile.com> is registered with OVH (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 13, 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 24, 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.
On February 24, 2017, the Center transmitted an email to the parties in English and Spanish regarding the language of the proceedings. On February 27, 2017, the Complainant submitted its amended Complaint, requesting that English be the language of the proceedings. The Respondent did not submit any comments on the language of the proceedings.
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, in English and Spanish, and the proceedings commenced on March 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 24, 2017.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on April 7, 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 is the owner of the trademark CHATROULETTE, used since 2009 in connection with an online chat website that pairs together random people from around the world for real-time, webcam-based conversations.
The Complainant receives a substantial web traffic at the Chatroulette website, which regularly counts with hundreds of thousands of visitors.
The CHATROULETTE trademark is registered in multiple jurisdictions throughout the world, including in the United States Patent and Trademark Office (USPTO) (registration no. 4445843 on December 10, 2013), the European Union Intellectual Property Office (EUIPO) (registration no. 008946352 on August 19, 2012), and the German Patent and Trade Mark Office (DPMA) (registration no. 302010003706 on February 21, 2013), since 2012.
The Complainant also owns and operates other domain names incorporating its CHATROULETTE mark, such as <chatroulette.com>, registered in 2009.
The disputed domain name was registered by the Respondent on April 9, 2014.
The Panel accessed the disputed domain name on April 17, 2017, when it was not linked to any active website. The Complainant's evidence shows that the website at the disputed domain name has previously been used to host the Respondent's own online, webcam chat site.
5. Parties' Contentions
The Complainant makes the following contentions:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. By virtue of its federal trademark and service mark registrations as shown in Annex 2, the Complainant is the owner of the CHATROULETTE trademark. The relevant point of comparison to be made is between the second-level portion of the disputed domain name and the Complainant's trademarks. The disputed domain name can be considered as capturing, in its entirety, the Complainant's CHATROULETTE trademark and simply adding the generic term "mobile" to the end of the trademark. The mere addition of this generic term to the Complainant's trademark does not negate the confusing similarity between the disputed domain name and the Complainant's trademark under Policy, paragraph 4(a)(i), and the disputed domain name must be considered confusingly similar to the Complainant's trademark. The fact that such term is closely linked and associated with the Complainant's brand and trademark only serves to underscore and increase the confusing similarity between the disputed domain name and the Complainant's trademark. Furthermore, the Respondent's addition of a hyphen between the Complainant's CHATROULETTE trademark and the term "mobile" does nothing to distinguish the disputed domain name from the Complainant's trademarks. In other words, the use of such hyphen does not diminish the confusing similarity between the disputed domain name and the Complainant's trademark and should be disregarded for purposes of making this determination. Finally, the Respondent's use of the disputed domain name contributes to the confusion. The Respondent is using the disputed domain name to host a webcam chat site, which suggests that the Respondent intended the disputed domain name to be confusingly similar to the Complainant's trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The granting of registrations by the USPTO, the EUIPO, and the DPMA to the Complainant for the CHATROULETTE trademark is a prima facie evidence of the validity of the term "chatroulette" as a trademark, of the Complainant's ownership of this trademark, and of the Complainant's exclusive right to use the CHATROULETTE trademark in commerce on or in connection with the goods and/or services specified in the registration certificates. The Respondent is not sponsored by or in any way affiliated with the Complainant. The Complainant has not given the Respondent permission to use the Complainant's trademarks in any manner, including in domain names. The Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests. The Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. The website available at the disputed domain name is being used to host the Respondent's own online, webcam chat site which directly competes with the Complainant's own offerings. Past UDRP panels have consistently held that selling competing goods, coupled with the unauthorized use of a complainant's trademarks in a confusingly similar domain name, does not qualify as a bona fide offering of goods or services under Policy, paragraph 4(c)(iii). As such, the Respondent here should be held to possess no rights or legitimate interests in the disputed domain name. The Respondent registered the disputed domain name on April 9, 2014, which is significantly after the Complainant filed for registration of its CHATROULETTE trademark with the USPTO, EUIPO, and DPMA, and also significantly after the Complainant's first use in commerce of the CHATROULETTE mark in 2009.
The disputed domain name was registered and is being used in bad faith. The Complainant and its CHATROULETTE trademark are known internationally, with trademark registrations across numerous countries. The Complainant registered its <chatroulette.com> domain name on November 16, 2009 and established its Chatroulette service and website very shortly thereafter, before the Respondent's registration of the disputed domain name on April 9, 2014. At the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. In addition to the numerous trademarks filed in connection with the Complainant's business prior to the Respondent's registration of the disputed domain name, the Complainant has retained impressive web traffic since its inception. According to Compete.com statistics, the Chatroulette website, located at "www.chatroulette.com", averaged over 260,000 unique monthly visitors in the 13-month period August 2015 - August 2016, earning a website popularity rank of 12,967, which demonstrates the Complainant's fame. Further, while constructive notice may sometimes alone be regarded as insufficient to support a finding of bad faith, numerous past UDRP panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant's marks, and thus having registered the domain in bad faith, where the complainant's mark is well-known and the circumstances support such a finding, as is the case here. Past UDRP panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name. Finally, on balance of the facts set forth above, it is more likely than not that the Respondent knew of and targeted the Complainant's trademark, and the Respondent should be found to have registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or 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. Language of the Proceeding
The language of the Registration Agreement is Spanish.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement.
Paragraph 11(a) allows the Panel to determine the language of the proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceedings.
The Complainant has requested that English be the language of the proceedings, for, inter alia, the following reasons:
(i) The website available at the disputed domain name was in English
(ii) The Complainant is unable to communicate in Spanish and a translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings.
(iii) The Complainant sent a cease-and-desist letter in English to the Respondent, which provided the Respondent with an opportunity to request that communications be in Spanish. However, the Respondent did not reply.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties' ability to understand and use the proposed language, time and costs.
The Panel considers the facts the Respondent has not filed a Response and had a website in English connected to the disputed domain name are further elements in support of English as the language of the proceedings. Considering this and all the other matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceedings shall be English.
A. Identical or Confusingly Similar
The Panel has no doubt that "chatroulette" is a term directly connected with the Complainant's brand used to identify an online chat website.
Annex 2 to the Complaint shows several registrations of CHATROULETTE trademarks obtained by the Complainant, including in the European Union, since 2012.
The trademark CHATROULETTE is wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainant's trademark basically by the addition of the suffix "-mobile", as well as of the generic Top-Level Domain ("gTLD") ".com".
Previous UDRP panels have consistently found that descriptive additions (such as "mobile" for an online chat website) do not distinguish a domain name, so as to avoid confusing similarity. This has been held in many UDRP decisions (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927). It is also well established that the addition of the hyphen symbol or of the gTLD suffix such as ".com" are typically irrelevant when determining whether a domain name is confusingly similar to a complainant's trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent's default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
According to the evidence submitted by the Complainant, the disputed domain name has previously been used to host the Respondent's own chat service, which is in direct competition with the Complainant, and it is now inactive. The Panel finds that there is no evidence to demonstrate the Respondent's intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in 2014) the trademark CHATROULETTE was already registered and widely used in connection to the Complainant's activities.
"Chatroulette" is a coined term comprised of the words "chat" and "roulette", used to identfy the specific online random chat provided on the Complainant's website.
The disputed domain name encompasses the trademark CHATROULETTE together with the hyphen and with a descriptive word directly related to the Complainant's main product (an online chat website).
Therefore, the Panel concludes that it is very unlikely that the Respondent was not aware of the Complainant's trademark and that the adoption of the expression "chatroulette-mobile" was a mere coincidence.
Currently, there is no active website linked to the disputed domain name, but this is not enough to avoid the Panel's findings that the disputed domain name is also being used in bad faith.
In the Panel's view, the circumstances that the Respondent (a) has previously used the disputed domain name to offer competing services; (b) is not presently using the disputed domain name; and (c) is not providing any justification for the use of a third party trademark, certainly cannot be used in benefit of the Respondent in the present case.
Such circumstances, associated with (d) the lack of any plausible interpretation for the adoption of the term "chatroulette-mobile" by the Respondent, are enough in this Panel's view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy.
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-mobile.com> be transferred to the Complainant.
Date: April 24, 2017