WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba chatroulette v. Privacydotlink customer 2682902/DBF GROUP, Evelyn Vict
Case No. D2017-1344
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 Privacydotlink customer 2682902 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / DBF GROUP, Evelyn Vict of Watford, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <chatroulettefr.com> is registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2017. On July 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 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 18, 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 July 18, 2017.
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 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2017.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on August 15, 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 and owner of the online chat website “www.chatroulette.com”, the concept of which is to pair random Internet users from around the world for real-time video chats. The website was launched in 2009 and quickly grew in popularity, averaging over 260,000 monthly visitors in a period of 13 months between August 2015 and August 2016. Beginning with the year 2010, the website and its owner were featured in prominent publications such as The New York Times as well as in popular television shows, including Good Morning America and The Daily Show with Jon Stewart.
The Complainant is the owner of numerous registered trademarks for CHATROULETTE and CHATROULETTE.TO, including United States trademark number 4445843 registered on December 10, 2013, European Union Trademarks number 8946352 and 8944076 registered on August 19, 2012 and December 4, 2012, respectively, as well as Germany trademark number 302010003706 registered on February 21, 2013.
According to the WhoIs database, the disputed domain name <chatroulettefr.com> was registered on August 8, 2012. Currently, the disputed domain name redirects Internet users to the website “www.chatspin.fr”, which is used to promote the “Chatspin” video chat app, a mobile app for video chatting with random users on the Internet.
5. Parties’ Contentions
In summary, the Complainant contends the following:
The disputed domain name is confusingly similar to the Complainant’s CHATROULETTE trademark, as it incorporates the trademark in its entirety, while merely adding the geographically descriptive term “fr” – an abbreviation for France. The Respondent’s use of the disputed domain name to resolve to a website promoting a mobile app for video chatting also adds to the confusion.
The Respondent has no rights or legitimate interests in the disputed domain name, since the Complainant has an exclusive right to its CHATROULETTE trademark, the Respondent is in no way affiliated with the Complainant and the Complainant has not given the Respondent permission to use its trademark in any manner. The Respondent is not commonly known by the disputed domain name.
Furthermore, the Respondent’s use of the disputed domain name – linking to a website promoting a competing video chat service – does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The disputed domain name was registered and is being used in bad faith. The popularity of the Complainant’s brand and service, the fact that the disputed domain name incorporates the Complainant’s trademark and that it is being used to promote a competing video chat service, make it impossible to believe that the Respondent registered the disputed domain name without specifically targeting the Complainant. The Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business, since the website linked to the disputed domain name provides services which are in direct competition with the Complainant’s own offerings.
The Complainant sees a further indication of bad faith registration and use in the fact that, at the time of the initial filing of the Complaint, the Respondent used a privacy service to hide its identity.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name comprises the Complainant’s CHATROULETTE trademark with the addition of the geographical term “fr”, which is an abbreviation for France. It is well established by UDRP panels that the addition of a geographical term to a trademark in a domain name would not prevent a finding of confusing similarity under the first element of the Policy, where the relevant trademark is recognizable within the disputed domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). Such is the case here.
Accordingly, the Panel finds that the Complainant has fulfilled paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has used the disputed domain name not in connection with a bona fide offering of goods or services, but to redirect Internet users to a website which competes with the Complainant’s business and which is based on the same concept of pairing random Internet users for video chats. Furthermore, the Respondent has chosen not to respond to the Complaint or to take any steps to rebut the Complainant’s contentions.
Under these circumstances, the Panel is satisfied that the Claimant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given that the Complainant has quickly established a wide reputation soon after the launch of its website in 2009, it is most likely that the Respondent had the Complainant and its rights in the CHATROULETTE mark in mind when registering the disputed domain name. By using the disputed domain name, which incorporates the Complainant’s trademark, to promote a competing video chat service, the Respondent has demonstrated bad faith.
The Panel thus finds that the requirement of bad faith use and registration under paragraph 4(a)(iii) of the Policy is fulfilled.
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 <chatroulettefr.com> be transferred to the Complainant.
Date: August 29, 2017