WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Stefan Wiegard, Atop Capital GmbH
Case No. D2018-0634
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Stefan Wiegard, Atop Capital GmbH of Munich, Germany.
2. The Domain Names and Registrars
The disputed domain name <gaychat-roulette.com> is registered with PSI-USA, Inc. dba Domain Robot
and the disputed domain name <maghrebchatroulette.com> is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrars”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2018. On March 22, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 23, 2018, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication in English and German to the Parties on March 26, 2018 in regard to the language of the proceedings. The Complainant filed an amended Complaint on the same date and requested English to be the language of the proceedings.
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 in English and German, and the proceedings commenced on April 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2018.
The Center appointed Lorenz Ehrler as the sole panelist in this matter on May 4, 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 created and owns Chatroulette, an online chat website that pairs random people from around the world together for real-time, webcam-based conversations.
The Complainant owns several trademarks CHATROULETTE, in particular in the European Union, in the United States of America, in the Russian Federation and in Germany, claiming in particular online chat video services.
The Complainant’s domain name <chatroulette.com> was registered in 2009 and the trademarks CHATROULETTE were filed between 2010 and 2011, while according to the Registrar, the Respondent registered <gaychat-roulette.com> on July 7, 2014 and <maghrebchatroulette.com> in November 2012 (“2012-11-03”).
The disputed domain name <maghrebchatroulette.com> resolves to a parking site which contains advertising links and the disputed domain name <gaychat-roulette.com> resolves to an adult-oriented website.
5. Parties’ Contentions
The Complainant contends that its website “www.chatroulette.com” became popular very quickly upon being created in 2009 and that the website is still very popular today. As evidence, the Compliant includes press articles and Google interest data as well as traffic statistics showing about 500,000 visits of the website over a 30-day period between December 2017 and January 2018. The Complainant therefore submits that its website enjoys a substantial degree of public recognition and distinctiveness.
The Complainant contends that the disputed domain names, <magrebchatroulette.com> and
<gaychat-roulette.com> are confusingly similar to its CHATROULETTE trademarks and that CHATROULETTE is a well-known trademark in the field of online chat video services.
Furthermore, the Complainant states that the Respondent has not at any time been commonly known by the disputed domain names and that is not making any legitimate use of it.
Lastly, the Complainant contends that the Respondent registered and uses the disputed domain names in bad faith. The disputed domain name <maghrebchatroulette.com> resolves to a website with advertising links to competitive websites and the disputed domain name <gaychat-roulette.com> occasionally redirects Internet users to third party websites featuring sexually explicit content. Moreover, the Complainant contends that the Respondent is offering to sell the disputed domain name on “sedo.com”.
The Respondent did not reply to the Complainant’s contentions.
6. Procedural Issues: Language of the Proceedings
The language of the registration agreement for one of the disputed domain names, namely for
<gaychat-roulette.com>, is English. As the registration agreement for <maghrebchatroulette.com> is in another language, the question arises which should be the language for the current proceedings.
Pursuant to paragraph 11 of the UDRP Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise. In the case at hand, the registration agreements of the two disputed domain names are in different languages, which is why the Panel needs to address the issue of the language of the proceedings in this case.
Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement, including in particular in cases involving more than one disputed domain name.
In light of the above, the mere fact that the registration agreement for one of the two disputed agreements is in English justifies declaring English as the applicable language, all the more that this shows that the Respondent speaks English or at least accepts to deal in this language. It should also be taken into account that the disputed domain names themselves are composed of English words. Besides the words “gay” and “chat” which are English, “roulette” is also part of the English vocabulary and is contained in dictionaries of the English language, even though the word originates from the French language. The same is also the case for the geographic term “Maghreb”, which originates from the Arab language. Lastly, the contents of the websites to which the disputed domain names resolves were also in English, which confirms that the Respondent is familiar with the English language.
The Panel therefore finds that it is appropriate to proceed in English.
7. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The trademarks put forward by the Complainant demonstrate that the Complainant has rights in relevant trademarks.
Under the UDRP, the requirement under paragraph 4(a) of the Policy requires the disputed domain name to be identical or confusingly similar to the Complainant’s trademarks. There is no requirement of similarity of goods and/or services.
The existence of confusing similarity within the meaning of paragraph 4(a) of the Policy is not in doubt in the present case, given that the main elements in the disputed domain names, i.e. “chatroulette” and “chat-roulette”, are identical or quasi-identical with the Complainant’s distinctive trademark CHATROULETTE. The incorporation of a trademark in its entirety is typically sufficient to establish that a disputed domain name is identical or confusingly similar to a trademark. The other elements of the disputed domain names, i.e. the elements “maghreb” and “gay” are descriptive and not sufficient to avoid confusing similarity.
As far as the generic Top-Level-Domain (“gTLD”) “.com” is concerned, this element has a technical function and therefore is typically not taken into account when assessing the issue of identity or confusing similarity.
The Panel thus finds that the disputed domain names are confusingly similar with the Complainant’s trademark CHATROULETTE.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent does not have any rights or legitimate interest in the disputed domain names, in particular that the Respondent has not at any time been commonly known by the disputed domain names and that the Respondent is not making legitimate use of said domain names. The Complainant has contested having granted the Respondent any rights to use its trademarks.
Furthermore, by not submitting any response to the Complaint, the Respondent failed to invoke any circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds any rights or legitimate interests in the disputed domain names (Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323; see also, Nintendo of America, Inc., v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (finding that respondent’s default was sufficient to conclude that it had no rights or legitimate interests in the disputed domain names).
Regarding the Respondent’s use of the disputed domain names for websites displaying links to third party websites which are in part competitive to the Complainant’s and in part related to pornographic websites, it should be noted that such use of the disputed domain names does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark (Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
The Panel finds that the Complainant has made an unrebutted prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain names have been registered and are being used in bad faith.
The undisputed prima facie evidence establishes that the Respondent is not affiliated with the Complainant and has no license or other authorisation to use the Complainant’s trademark or name.
The Respondent acquired the disputed domain names well after the Complainant’s trademark was in use and became known. The Panel finds that the Respondent should have known about the Complainant’s trademark and business when acquiring the disputed domain names. It is highly improbable to the Panel that given the notoriety of the CHATROULETTE trademark, the Respondent was unaware of it at the time it became the holder of the disputed domain names.
This Panel further considers that the disputed domain names for themselves are a strong indication that the Respondent was aware of the Complainant’s trademark CHATROULETTE, as it seems more than unlikely that the Respondent would have created – randomly – a distinctive sign combining the words “chat” and “roulette”, which combination is quite imaginative (cf. Motul v. Contact Privacy Inc. Customer 0138693539 / Konstantin Speranskii, WIPO Case No. D2016-2632). Furthermore, based on the record, the Panel finds that the use to which the disputed domain names have been put to, evidences the Respondent’s bad faith.
Based on the above, the Panel finds that the Respondent both registered and is using the disputed domain names in bad faith.
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 names <gaychat-roulette.com> and <maghrebchatroulette.com> be transferred to the Complainant.
Date: May 9, 2018