WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. A Anoniem
Case No. D2017-0940
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 A Anoniem, Anoniemlaan of Lopig, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <peoplechatroulette.com> (the "Domain Name") is registered with Key-Systems GmbH dba domaindiscount24.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 10, 2017. On May 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 11, 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.
The Complaint was submitted in the English language. The language of the Registration Agreement for the Domain Name is Dutch. On May 11, 2017, the Center sent a language of proceeding communication in both Dutch and English to the Parties. On May 12, 2017, the Complainant submitted a request for English to be the language of proceeding and an amended Complaint. The Respondent failed to comply with the deadline for the submission of its comments on the Complainant's request and the amended Complaint (hereinafter referred altogether as the "Complaint").
The Center verified that the Complaint together with the request for English to be the language of proceeding 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 May 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 12, 2017.
The Center appointed Geert Glas as the sole panelist in this matter on June 20, 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
Based on the Complainant's assertions, supported by the documents enclosed as annexes to the Complaint, and undisputed by the Respondent because of its default, the Panel finds the following:
The Complainant is Andrey Ternovskiy dba Chatroulette, a website providing online video chat services and online video social introduction and networking services. Chatroulette appears to be a well-known video chat site, which has generated significant interest among fans, media and competitors.
To this end, the Complainant registered the <chatroulette.com> domain name on November 16, 2009 and established its Chatroulette service and website shortly thereafter.
The Complainant is also the owner of trademark registrations across various jurisdictions that consist or include the term "chatroulette". In particular, the Complainant is the registered proprietor of the European Union trademarks CHATROULETTE (registered on December 4, 2012 with number 008944076 for goods and services in classes 35, 38 and 42) and CHATROULETTE.TO (registered on August 19, 2012 with number 008946352 for goods and services in classes 35, 38 and 42), the German trademark "CHATROULETTE" (registered on February 21, 2013 with number 3020100037067 for goods and services in classes 35, 38 and 42) and the United States of America ("United States") trademark CHATROULETTE (registered on December 10, 2013 with number 4445843 for goods and services in classes 38 and 45).
According to the Registrar's WhoIs database, the Respondent has registered the Domain Name on June 13, 2013 and updated on July 5, 2016. In addition to the term "people" and the ".com" generic Top-Level Domain ('gTLD'), the Domain Name contains the entire CHATROULETTE trademark. From the Complainant's annexes to the Complaint, it is apparent that the Domain Name directs to a website for "video cam chat with people".
According to the Complainant, the Respondent has not answered the Complainant's cease-and-desist letters dated March 21, 2017, March 31, 2017 and April 10, 2017, nor has the Respondent provided any response to the Complaint.
5. Parties' Contentions
The Complainant requests that the Domain Name be transferred to it on the following grounds:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant contends to be the owner of several registered trademarks for the name CHATROULETTE in numerous jurisdictions, including the European Union, Germany and the United States.
The Complainant states that the Domain Name is confusingly similar to the Complainant's trademarks.
The Complainant contends that the Domain Name captures, in its entirety, the Complainant's trademark. The Complainant also contends that the mere addition of the generic term "people" to its trademark does not negate the confusing similarity between the Domain Name and the Complainant's trademarks.
In addition, the Complainant argues that the Respondent's use of the Domain Name, namely to host a webcam chat site, contributes to the confusion. According to the Complainant, such use moreover includes evidence that the Domain Name is confusingly similar to its trademarks.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant first contends that the Respondent is not sponsored by or affiliated with the Complainant in any way and the Complainant has not given the Respondent permission to use the Complainant's trademarks in any manner, including in domain names.
The Complainant also states that the Respondent is not commonly known by the Domain Name.
The Complainant further contends that the Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial fair use of the Domain Name because it uses the Domain Name to host an online video cam chat site which directly competes with the Complainant's own offerings.
The Complainant finally contends that the registrations of its CHATROULETTE trademarks as well as the registration of its domain name <chatroulette.com> predate the Respondent's registration of the Domain Name.
(iii) The Domain Name was registered and used in bad faith
The Complainant holds that the Complainant and its CHATROULETTE trademarks are known internationally, with trademark registrations across numerous jurisdictions. The Complainant registered its <chatroulette.com> domain name on November 16, 2009 and established its Chatroulette service and website shortly thereafter, before the Respondent's registration of the Domain Name.
The Complainant further contends that the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks and that registration of a domain name containing such well-known trademark constitutes bad faith. To this end, the Complainant states that numerous UDPR panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant's trademarks, and thus having registered the domain name in bad faith, where the complainant's trademark is well-known and the circumstances support such a finding. In this regard, the Complainant refers to the impressive web traffic the Complainant has retained since its inception.
The Complainant further states that the Respondent's use of the Domain Name constitutes a disruption of the Complainant's business and therefore qualifies as bad faith and the website to which the Domain Name directs also offers video cam chat services which are very similar to the services offered by the Complainant.
Lastly, the Complainant contends that the Respondent's failure to respond to cease-and-desist letters may properly be considered a factor in finding bad faith registration and use of a domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant proves each and all of the following three elements in order to be successful in these proceedings:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Language of Proceedings
Under paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. In the present case, the language of the Registration Agreement is Dutch.
The Complainant submitted its Complaint in English and requested the language of the proceeding to be English. The Respondent has not submitted any comments in this regard, despite having been given the opportunity to do so. Taking into account the Respondent's default and all of the other relevant circumstances of the case, the Panel concludes that, in accordance with paragraph 11(a) of the Rules, it is appropriate that the language of the proceeding is English.
Therefore, the Panel has decided to accept the Complainant's filing in English and issue a decision in English.
B. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of several registered trademarks for the name CHATROULETTE in numerous jurisdictions.
The Domain Name contains the entire Complainant's registered trademark CHATROULETTE. It differs from the registered trademark only in the descriptive term "people" and the addition of the ".com" gTLD.
Several UDRP panels have held that wholly incorporating a complainant's registered trademark in a domain name may be sufficient to establish confusing similarity for the purposes of the Policy, particularly where the trademark is highly recognizable and famous (see, e.g., AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
In addition, it is an established principle that the mere addition of a generic term such as "people" cannot be considered sufficient to preclude confusion between the domain name and the complainant's trademark (see Pfizer Inc v. Ian Herman, WIPO Case No. D2004-0597; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219; and Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464). On this issue, the Panel further notices that the word "people" can likely be associated with Complainant's online networking business. Therefore, its combination with CHATROULETTE is clearly confusing (see Yahoo! Inc. v. Jorge O. Kirovsky, WIPO Case No. D2000-0428).
With respect to the addition of the ".com" gTLD, it is an equally established principle that the addition of a top-level domain is irrelevant when assessing whether or not a trademark is identical or confusingly similar, since Top-Level Domains are a required element of every domain name (see Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
Lastly, the Panel is of the opinion that the Respondent's use of the Domain Name, namely to host a video cam chat site which directly competes with the Complainant's business of providing online webcam chat services, contributes to the confusion. In this context, previous UDPR panels have ruled that the use of a domain name to host a website that imitates the complainant's website should be taken into account as a factor for confusion (see The Gaming Board for Great Britain v. Gaming Board, WIPO Case No. D2004-0739).
Therefore, the Panel finds that the first element under paragraph 4(a)(i) of the Policy has been established.
C. Rights or Legitimate Interests
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent), WIPO Case No. D2000-0704; and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1). In this regard, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Based on the evidence submitted by the Complainant, the Panel finds that there are no indications that the Respondent has been commonly known by the Domain Name or has made any legitimate commercial or noncommercial use of the Domain Name (see, e.g., Fry's Electronics, Inc v. WhoIs ID Theft Protection, WIPO Case No. D2006-1435).
In addition, the Complainant has provided evidence that the Domain Name leads to a website offering video cam chat services, hereby directly competing with the Complainant's business. Several UDPR panels have held that a respondent cannot be considered as using the disputed domain name for the bona fide offering of goods or services, nor as making legitimate commercial or noncommercial or fair use of such domain name when using the domain name to attract nternet users to a website which offers competing services (see America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374).
Lastly, it should be noted that the Respondent has failed to respond to the Complaint, and has therefore not submitted any evidence of its rights or legitimate interests in the Domain Name (see, e.g., The Great Eastern Life Assurance Company Limited v. Unasi Inc., WIPO Case No. D2005-1218; and Stanworth Development Limited v. Mike Morgan (290436), WIPO Case No. D2006-0230).
Based on the evidence provided by the Complainant, the Panel finds that the second element under paragraph 4(a)(ii) of the Policy has been established.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy describes some circumstances which, if found to exist, will be evidence of the registration and use of a domain name in bad faith. They are presented in the alternative and consist of a non-exhaustive list of indicia of bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Previous UDRP panels have ruled that in appropriate circumstances, bad faith is established where a complainant's trademark has been shown to be well-known or in wide use at the time of registering a domain name (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517; and Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435). Given that the CHATROULETTE trademarks are well-known and have been widely used for several years, the Panel is of the opinion that it is highly unlikely that the Respondent did not know of the Complainant's trademarks at the time the Domain Name was registered.
In addition, the Domain Name is used by the Respondent to host a website offering competing services. The Panel finds that this use of the Domain Name does indeed constitute a disruption of Complainant's business and therefore qualifies as bad faith registration and use under Policy 4 (b)(iii).
The Respondent's failure to respond to the Complainants' contentions and, as a result, to provide any evidence whatsoever of any good faith use of the Domain Name is an additional indication of bad faith (News Group Newspapers Limited and News Network Limited v. Momm Amed la, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460).
In light of the above, the Panel concludes that the Domain Name was registered and is being used in bad faith. As a consequence, the Panel finds that the third element under Paragraph 4(a)(iii) of the Policy has been established.
The Panel cannot help but notice that the Domain Name was registered under the name "A Anoniem", which is Dutch for "A Anonymous", with a postal address at "Anoniemlaan", which is Dutch for "Anonymous Avenue" and under the email address "firstname.lastname@example.org", which is Dutch for email@example.com". This deliberate mention of what seems to mount to a fake name, a fake postal address and a fake email address will have contributed to the default nature of these proceedings.
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 <peoplechatroulette.com> be transferred to the Complainant.
Date: June 30, 2017