WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Li Hong Bo

Case No. D2017-2352

1. The Parties

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

Respondent is Li Hong Bo of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <sexychatroulette.com> is registered with eName Technology Co., Ltd. (the "Registrar").

3. Procedural History

Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 27, 2017. On November 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On December 8, 2017, the Center transmitted an email regarding the language of the proceeding to the Parties. On December 11, 2017, Complainant filed an amended Complaint to request that English be the language of the proceeding. Respondent did not reply by the specified due date.

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 Respondent of the Complaint, and the proceedings commenced on December 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 5, 2018.

The Center appointed Yijun Tian as the sole panelist in this matter on January 16, 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

A. Complainant

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. In January 2010, this figure of visitors had increased to 50,000 visitors per day (approximately 1.5 million users per month). 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. In the period from May 2017 to October 2017, the website totaled visits around 4.23 million (see Annex 8 to the Complaint).

Complainant has registered numerous national and International trademarks reflecting the term CHATROULETTE, including trademark registrations in European Union (since December 4, 2012, EU trademark registration number 8944076), trademark registrations in the United States of America ("US") (since December 10, 2013, US trademark registration number 4445843), and Germany trademark registrations (since February 21, 2013, German trademark registration number 302010003706) (Annex 2 to the Complaint)

B. Respondent

Respondent is Li Hong Bo of Beijing, China. Respondent registered the disputed domain name <sexychatroulette.com> on February 18, 2010. The disputed domain name resolves to a website with links to adult dating websites.

5. Parties' Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to the CHATROULETTE marks. The disputed domain name contains the CHATROULETTE mark in its entirety, and simply adding the generic term "sexy" as a prefix does not negate the confusion. Respondent's use of the disputed domain name, which is to forward Internet users to another online video chat service, further adds to the confusion.

Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant contends that the disputed domain name was registered and is being used in bad faith.

Complainant requests that the disputed domain name <sexychatroulette.com> be transferred to it.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

a) Complainant is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden Complainant and delay the proceedings and adjudication of this matter;

b) The disputed domain name is comprised of Latin characters;

c) The website resolved by the disputed domain name featured at some point in time to an English online video chat service (as evidenced by the Complainant) and currently features a pay-per-click site where all posted text is in English;

d) The terms "sexy" and "chatroulette", which form the disputed domain name, do not carry any specific meaning in the Chinese language. CHATROULETTE is a brand name and the term "sexy" carries a very specific meaning in English;

e) Complainant previously sent a cease-and-desist letter to Respondent, as provided in the Complaint, and Respondent had ample time and opportunity to respond to such letter and request that communications continue in Chinese. Respondent neither issued such a request nor responded to Complainant in any matter whatsoever. To allow Respondent to dictate the course of this matter and further burden Complainant at this juncture would contravene the spirit of the UDRP and disadvantage Complainant; and

f) It would unduly burden Complainant to have to arrange and pay for translation where Respondent has demonstrated behavior that disrupts Complainant's business and has already required Complainant to devote significant time and resources to addressing this instance of abuse.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding 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 proceeding. 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. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") further states:

"Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant's mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement." (WIPO Overview 3.0, section 4.5.1; see also, L'Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is an individual from Russian Federation, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name includes Latin characters ("chatroulette") and English word ("sexy"), and is registered in the generic Top-Level Domain ("gTLD") space comprising of the Latin characters ".com" (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name includes Latin characters ("chatroulette") and English word ("sexy"), rather than Chinese script; (b) the gTLD of the disputed domain name is ".com" is in Latin characters; (c) the disputed domain name <sexychatroulette.com> currently resolves to a website which is in English-language; (d) the Center has notified Respondent of the proceeding in both Chinese and English; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Substantive Issues

Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the disputed domain name should be transferred:

(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy (paragraphs 4(a)-(c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the CHATROULETTE mark acquired through registration. The CHATROULETTE mark has been registered in jurisdictions throughout the world including in US and Germany (see Annex 2 to the Complaint), and Complainant has a widespread reputation and public attension. The website resolved by the disputed domain name totaled visits around 4.23 million from May 2017 to October 2017 (See Annex 8 to the Complaint).

The disputed domain name <sexychatroulette.com> comprises the CHATROULETTE mark in its entirety. The disputed domain name only differs from Complainant's trademark by the addition of "sexy" to the mark CHATROULETTE as a prefix. This does not seem to eliminate the identity or at least the confusing similarity between Complainant's registered trademark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy "when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent may not avoid confusing similarity by appropriating another's entire mark and adding descriptive or non-distinctive matter to it. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087).

Mere addition of the prefix "sexy" to Complainant's mark fails to distinguish. Consumers may falsely believe that <sexychatroulette.com> is operated or authorized by Complainant (see, ABB Asea Brown Boveri Ltd. v. A.B.B Transmission Engineering Co., Ltd., WIPO Case No. D2007-1466; Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768; see also, Jurlique International Pty Ltd v. Domains by Proxy, Inc. / troy ho, WIPO Case No. D2011-1237). In relation to the gTLD suffix, WIPO Overview 3.0 further states:

"The applicable Top Level Domain ('TLD') in a domain name (e.g., '.com', '.club', '.nyc') is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test." (WIPO Overview 3.0, section 1.11).

Thus, the Panel finds that disregarding the prefix "sexy" as well as the gTLD suffix ".com", the disputed domain name is identical to the CHATROULETTE marks, and is confusingly similar to Complainant's marks when viewed in its entirety.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

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

(ii) Respondent has been commonly known by the disputed domain names, even if Respondent has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant's trademarks.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).

According to the Complaint, Complainant launched the website <chatroulette.com> in 2009 and quickly grew in popularity. In January 2010, this figure of visitors had increased to 50,000 visitors per day (approximately 1.5 million users per month). 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. In the period from May 2017 to October 2017, the website totaled visits around 4.23 million (see Annex 8 to the Complaint).

Moreover, Respondent is not an authorized dealer of CHATROULETTE-branded products or services. The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term "chatroulette" in the disputed domain name and in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the CHATROULETTE marks or to apply for or use any domain name incorporating the CHATROULETTE mark;

b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2010, after Complainant launched the website <chatroulette.com> (in 2009), which contains CHATROULETTE marks and has quickly grew in popularity. The disputed domain name is identical or confusingly similar to Complainant's CHATROULETTE marks;

c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, the website, currently resolved by the disputed domain name, is a website a website with links to adult dating websites (see Annex 4 to the Complaint). It seems that Respondent is making profits through the Internet traffic attracted to the website under the disputed domain name. (See, BKS Bank AG v. Jianwei Guo, WIPO Case No. D2017-1041)

The Panel finds that Respondent has failed to produce any evidence to rebut Complainant's prima facie showing on Respondent lack of rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on the website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

(i) Registered in Bad Faith:

The Panel finds that Complainant has a widespread reputation in the CHATROULETTE mark with regard to its online website. Complainant has registered its CHATROULETTE mark internationally, including registration in US, EU and Germany. Complainant's website was launched in 2009. In January 2010, this figure of visitors had increased to 50,000 visitors per day (approximately 1.5 million users per month). 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. It is not conceivable that Respondent would not have had actual notice of Complainant's trademark rights at the time of the registration of the disputed domain name. The Panel therefore finds that the CHATROULETTE mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. The Argento Wine Company Limited v. Argento Beijing Trading Company, supra.

Moreover, Respondent has chosen not to respond to Complainant's allegations as well as Cease and Desist Letters. According to the panel's decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, "the failure of the Respondent to respond to the Complaint further supports an inference of bad faith". See also, Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Thus, the Panel concludes that the disputed domain name was registered in bad faith.

(ii) Used in Bad Faith:

Respondent is using the website resolved by the disputed domain name to provide links to adult dating websites. Thus, the Panel concludes that Respondent is currently using the confusingly similar disputed domain name with the intention to attract, for commercial gain, Internet users to Respondent's website.

To establish an "intention for commercial gain" for the purpose of this Policy, evidence is required to indicate that it is "more likely than not" that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Given the reputation of the CHATROULETTE Marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of a confusingly similar disputed domain name created a likelihood of confusion with the CHATROULETTE Marks. Moreover, as mentioned above, Respondent offered the links to adult dating websites via the website to which the disputed domain name resolves, presumably for commercial gain. The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith. Such use of the disputed domain name is also disruptive in relation to the interests of Complainant.

In summary, Respondent, by choosing to register and use domain name which is confusingly similar to Complainant's trademark, intended to ride on the goodwill of Complainant's trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <sexychatroulette.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: January 23, 2017