WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Dimitri Do Bairro

Case No. D2017-2245

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 Dimitri Do Bairro of Champigny sur Marne, France.

2. The Domain Name and Registrar

The disputed domain name <ze-chatroulette.com> is registered with OVH (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2017. On November 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 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 stating that the language of the Registration Agreement is French.

On November 29, 2017, the Center sent a communication to the Parties, inviting the Complainant to either submit satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English, or to submit the Complaint translated into French, or to submit a request for English to be the language of the administrative proceedings. The Respondent was also invited to submit comments. On December 1, 2017, the Complainant submitted a request for English to be the language of the proceedings. The Respondent did not reply to this request.

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 French and English, and the proceedings commenced on December 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2018.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on January 12, 2018. 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, Andrey Ternovskiy, is the owner and creator of Chatroulette, an online chat website that pairs random people from around the world together for real-time, webcam-based conversations. Chatroulette is known for providing online video chat services and online video social introduction and networking services. In 2017, the Complainant’s website was ranked as the 15,291st most popular site in the United States, and 14,908th globally by the website ranking system “www.alexa.com”.

The Complainant submitted evidence that it holds trademark rights for CHATROULETTE in the European Union for classes 35, 38 and 42 registered under number 008944076 since December 4, 2012. The Complainant further submitted evidence that it holds trademark rights for CHATROULETTE in the Russian Federation for classes 35, 38 and 42 registered under number 429957 since February 10, 2011. The Complainant also submitted evidence that it owns a trademark in the United States for CHATROULETTE for classes 28 and 45 under number 4445843 since December 10, 2013. Furthermore, the Complainant submitted evidence that it is the owner of the trademark rights for CHATROULETTE.TO for classes 35, 38 and 42 registered under number 008946352 since August 19, 2010. All four trademarks will be referred to as “the Trademarks”.

The disputed domain name <ze-chatroulette.com> was registered on September 12, 2013, well after the Complainant secured rights to the Trademarks. The disputed domain name resolves to a website that offers chat and online dating services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends, relying on Rollerblade, Inc. v McCrady, WIPO Case No. D2000-0429, that the generic Top-Level Domain (“gTLD”) “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.

The Complainant asserts that the disputed domain name can be considered as capturing, in its entirety, Complainant’s CHATROULETTE trademark and simply adding the generic term “ze” (French expression meaning “the” – it is meant to portray the manner in which a person with a strong French accent would pronounce the English word “the”) to the beginning of the trademark. Moreover, relying on Pfizer Inc. v. Intermeds, LTD/ John Velasquez, WIPO Case No. D2005-0153, the Complainant contends that the mere addition of the term “ze” does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark under paragraph 4(a)(i) of the Policy. Furthermore, the Complainant submits that the addition of a hyphen between the term “ze” and Complainant’s trademark CHATROULETTE does not diminish the confusing similarity between the disputed domain name and the Complainant’s Trademarks (Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119).

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that it is the owner of the Trademarks CHATROULETTE and CHATROULETTE.TO and therefore has the exclusive right to use these Trademarks. The Complainant states that the Respondent has not been commonly known by the disputed domain name.

The Complainant affirms that it has not granted permission to the Respondent’s use of the disputed domain name in any manner. It has not licensed authorized, or permitted the Respondent to register domain names incorporating the Complainant’s Trademarks. The Complainant stated that the Respondent is not sponsored by or affiliated with the Complainant in any way.

The Complainant further submits that the pertinent WhoIs information identifies the Registrant as “Do Bairro Dimitri” suggesting that the Respondent has not been commonly known by the disputed domain name, and has therefore acquired no rights or legitimate interests in the disputed domain name.

The Complainant contends that the Respondent makes neither a bona fide offering of goods or services under paragraph 4(c)(ii) of the Policy nor a legitimate noncommercial or fair use of the disputed domain name. The Complainant moreover contends that the Respondent offers and attempts to sell services, which directly compete with the Complainant’s own offerings. Relying on America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374, the Complainantsubmits that the Respondent should be held to possess no rights or legitimate interests in the disputed domain name.

Furthermore, the Complainant asserts that the metadata associated with the disputed domain name specifically refers to the Complainant and its trademark. The Complainant submits that this confirms that the Respondent is using this metadata to increase the likelihood that an Internet user searching for the Complainant through a search engine would come across the disputed domain name and subsequently become confused as to its source. The metadata associated with the disputed domain name is as follows:

The Complainant further submits that the Respondent registered the disputed domain name on September 12, 2013, which is after the Complainant filed for registration of its CHATROULETTE Trademark in 2010 and also after the Complainant’s first use in commerce of the CHATROULETTE mark in 2009.

(c) The disputed domain name was registered and is being used in bad faith.

The Complainant submits that the disputed domain name was registered and used in bad faith by the Respondent.

The Complainant asserts that, at the time of registration of the disputed domain name, given the global ranking and international well-known popularity of the website, 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. (see, Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517). Furthermore, relying on Clearwater Systems, Inc. v. Glenn Johnson / Clear Water Systems of Remington Inc., WIPO Case No. D2014-0878, the Complainant also submits that the Respondent should be considered as possessing actual notice and knowledge of the Complainant’s mark.

The Complainant further contends that the Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use because the Respondent's domain name is confusingly similar to the Complainant’s Trademarks and the website attempts to offer similar services to those of the Complainant. The Complainant further asserts that in doing so, the Respondent’s use of the disputed domain name intentionally attracts Internet users looking for the Complainant to a competitive website for the Respondent’s commercial gain (see, Ebel International Limited v. Alan Brashear, WIPO Case No. D2017-0001).

The Complainant further submits that where the disputed domain name consists of the CHATROULETTE trademark while merely adding a descriptive term to the beginning of the mark, there is no plausible good faith reason or logic for the Respondent to have registered the disputed domain name and can therefore only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name. Therefore, the Complainant asserts that the disputed domain name must be considered as having been registered and used in bad faith.

The Complainant moreover asserts that the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Relying on Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 and RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242, the Complainant asserts that failure to respond to a cease-and-desist letter may be considered a factor in finding bad faith registration and use of a domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the proceeding

In accordance with the Rules, paragraph 11(a), “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, having regard to the circumstances of the administrative proceeding”.

The Complainant requested in the Complaint for English to be the language of the proceeding. The Respondent did not object to the Complainant’s request. On the basis of the finding that the website found at the disputed domain name is written entirely in the English language this Panel decides that it will accept the Complaint as filed in English and issue a decision in English.

B. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to CHATROULETTE and CHATROULETTE.TO.

Secondly, the disputed domain name fully incorporates the Complainant’s CHATROULETTE trademark in which the Complainant has exclusive rights.

Thirdly, this Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the disputed domain name is viewed as a standard registration requirement and as such is disregarded (see, SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services, WIPO Case No. D2015-0565; G4S Plc v. Noman Burki, WIPO Case No. D2016-1383; Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).

Fourthly, this Panel finds that the addition of the generic term “ze” does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see F. Hoffmann-La Roche AG v. P. Martin, WIPO Case No. D2009-0323; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307; Hoffman-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923).

Finally, this Panel finds that the addition of a hyphen between the term “ze” and the Complainant’s Trademark CHATROULETTE does not diminish the confusing similarity between the disputed domain name and the Complainant’s Trademarks and should be disregarded (see Chernow Commc’ns, Inc. v. Kimball, WIPO Case No. D2000-0119).

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s Trademarks.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 or service mark at issue.”

This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.

It is the consensus view of the UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016-1338).

In the present case, taking into consideration the default of the Respondent, this Panel finds that the Complainant has submitted a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the combined following factors:

- there is no evidence that the Respondent has been authorized or licensed to use the Trademarks or the disputed domain name by the Complainant;

- there is no evidence that the Respondent has commonly been known by the disputed domain name;

- there is no evidence that the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services. There is also no evidence that the Respondent would have made a legitimate noncommercial or fair use of the disputed domain name. In fact, as set out in more detail below, this Panel believes, after having examined the evidence submitted by the Complainant, that the Respondent registered the disputed domain name and used metadata associated with the disputed domain name referring to the Complainant’s Trademarks with the intention of attracting visitors looking for the Complainant’s website to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s Trademarks.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in 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.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith.”

The Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith (see Riches, McKenzie & Herbert LLP v. Musa, Hector, WIPO Case No. D2017-0318; Mills Brothers B.V., The Sting B.V. v. Private Proxy Registration, WIPO Case No. D2012-1142; Control Techniques Limited v. Lektronix Ltd., WIPO Case No. D2006-1052).

In appropriate circumstances, the finding that a respondent has no rights or legitimate interests in a disputed domain name may lead to a finding of registration in bad faith (AGUAS DE CABREIROA, S.A.U. v. Hello Domain, supra). This Panel regards the circumstances of the present case as sufficient for a finding of registration in bad faith, in particular in light of the following elements:

- given that the Complainant’s Trademarks are internationally well-known, the Respondent knew, or at least should have known, of the existence of the Complainant’s Trademarks;

- the disputed domain name is confusingly similar to the Complainant’s Trademarks; and

- the disputed domain name was registered well after the Complainant obtained its first rights to the Trademarks.

Moreover, after examination of the evidence presented by the Complainant, this Panel finds that the Respondent intended to attract visitors to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s Trademarks. Pursuant to the Policy, this constitutes compelling evidence of registration and use in bad faith (see also Federated Western Properties, Inc. v. Top Bell, WIPO Case No. D2002-0469; Irotama S.A. v. Richard Bonn, WIPO Case No. D2010-1784; Adamovske Strojirny v. Tatu Rautiainen, WIPO Case No. D2000-1394).

In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under the Policy.

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 <ze-chatroulette.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: January 26, 2017