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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Host Master, Transure Enterprise Ltd / Above.com Domain Privacy

Case No. D2017-1282

1. The Parties

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

The Respondent is Host Master, Transure Enterprise Ltd of Wilmington, Delaware, United States of America (“United States”) / Above.com Domain Privacy of Beaumaris, Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name <chatroulettedeutschland.net> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2017. On July 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 2017, 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 July 6, 2017, 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 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 July 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2017.

The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on August 3, 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 creator of “Chatroulette”, an online chat website that connects random users around the world and enables them to chat with one another via their webcams. The Complainant registered the <chatroulette.com> domain name on November 16, 2009, for this service, which attracted millions of users in a very short period of time. More recent statistics show that the Complainant’s “Chatroulette”-website attracted an average of over 200,000 monthly visitors in the period from August 2015 to August 2016.

The Complainant owns a number of trade mark registrations for the CHATROULETTE in various jurisdictions, including:

i. United States trade mark number 4445843 registered on December 10, 2013;

ii. European Union Trade Mark (“EUTM”) number 8944076 registered on December 4, 2012; and

iii. German trade mark number 302010003706 registered on February 21, 2013.

The Complainant is also the registered proprietor of the EUTM 8946352 for CHATROULETTE.TO, registered on August 19, 2012.

The disputed domain name was registered on April 22, 2013, and directs users to a website which features adult content. At the point of which the Complaint was filed with the Center, WhoIs records indicated that the registrant of the disputed domain name was “Above.com Domain Privacy”; the Registrar subsequently disclosed the underlying registrant to be the Respondent “Host Master, Transure Enterprise Ltd”.

5. Parties’ Contentions

A. Complainant

The Complainant asserts, inter alia, as follows:

i. that the disputed domain name is identical or confusingly similar to the Complainant’s CHATROULETTE mark in which the Complainant has rights, in particular:

- the disputed domain name comprises the Complainant’s CHATROULETTE mark in its entirety; and

- the term “deutschland” in the disputed domain name and the generic Top-level Domain (“gTLD”) “.com” are generic, neither of which are sufficient to overcome the similarity with the Complainant’s CHATROULETTE mark.

ii. that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in particular:

- the Respondent is not sponsored by or affiliated with the Complainant, nor is it authorised by the Complainant to use the CHATROULETTE mark in any way;

- the Respondent is not commonly known by the disputed domain name; and

- the Respondent uses the disputed domain name to redirect visitors to a website featuring pornographic or adult content, which does not constitute a legitimate use of the disputed domain name, even if the Respondent does not derive commercial benefit from such use.

iii. that the disputed domain name was registered and is being used in bad faith, in particular:

the Complainant’s CHATROULETTE mark has been well known internationally since before the registration of the disputed domain name;

the Respondent chose to adopt the Complainant’s CHATROULETTE mark in its entirety in the disputed domain name with the intention of associating itself with the Complainant;

the use of the disputed domain name to direct unsuspecting Internet users to pornographic content amounts to bad faith registration and use of the disputed domain name;

the disputed domain name has been registered using a domain privacy service to conceal the identity of the true owner; and

the Respondent has ignored the Complainant’s cease-and-desist letters which resulted in the issuance of the Complaint.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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 the transfer of a domain name, a complainant shall prove the following three elements:

i. the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

ii. the respondent has no rights or legitimate interests in respect of the domain name; and

iii. the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided sufficient evidence showing that it has rights in the CHATROULETTE mark.

The disputed domain name fully incorporates the Complainant’s CHATROULETTE mark. The addition of the gTLD “.com” does not serve to distinguish the disputed domain name from the CHATROULETTE mark, and should generally be disregarded for the purpose of the assessment of similarity. The addition of the geographical term “deutschland” does not eliminate the similarity between the disputed domain name and the Complainant’s CHATROULETTE mark, but rather suggests that the disputed domain name relates to the offering of the Complainant’s Chatroulette service, targeted at Germans, the German-speaking public, or users looking to pair up with Germans or German-speakers.

The Panel finds that the Complainant has therefore established that the disputed domain name is confusingly similar to a trade mark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant’s contention is that the disputed domain name redirects users to a website offering online chat services with adult content. Such use is neither a bona fide use nor a legitimate noncommercial or fair use of the disputed domain name in accordance with paragraphs 4(c)(i) and 4(c)(iii) of the Policy. The Respondent is not commonly known by the disputed domain name. As the term “chatroulette” does not have an ordinary meaning, and refers only to the Complainant’s Chatroulette service, it is likely that the Respondent was aware of the Complainant’s Chatroulette service and chose to register the disputed domain name to exploit the popularity of the Complainant’s Chatroulette website. The Panel notes that the Complainant has not authorised the Respondent to use its trade marks or domain names incorporating the CHATROULETTE mark.

Therefore, the Panel finds that the Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. The Respondent has not responded to the Complaint and therefore the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive lists of circumstances which indicate that the Respondent may have registered and used the disputed domain name in bad faith.

The Panel considers that the following circumstances indicate that the Respondent has registered and used the disputed domain name in bad faith:

i. it is likely that the disputed domain name was registered with the knowledge of the reputation of the Complainant’s Chatroulette service, and the Respondent intended to take advantage of the reputation of the Complainant’s service by including the CHATROULETTE mark in the disputed domain name to attract users to its website;

ii. the disputed domain name redirects users to a website which features chat services with adult content, which suggests that the Respondent is likely to have been aware of the Complainant’s Chatroulette service and intends to exploit the popularity of the Chatroulette website to attract Internet users to its adult website; and

iii. the Respondent has taken active steps to conceal its true identity, by using a privacy registration service (in this case, “Above.com Domain Privacy”). Although the use of a privacy registration service is not in itself an indication of bad faith, the Panel finds that, when coupled with the use of the disputed domain name as described at (ii), it is further evidence of bad faith.

On the basis of the above reasons, the Panel finds that the disputed domain name has been registered and 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, <chatroulettedeutschland.net> be transferred to the Complainant.

Charters Macdonald-Brown
Sole Panelist
Date: August 9, 2017

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