WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Wu Rui Jun
Case No. D2018-0695
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Wu Rui Jun of Jilin, Jilin, China.
2. The Domain Name and Registrar
The disputed domain name <www-chatroulette-com.club> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2018. On March 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 2018, 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. On April 3, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding and filed an amended Complaint on April 6, 2018. The Respondent did not comment on the language of the proceeding 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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on April 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2018.
The Center appointed Douglas Clark as the sole panelist in this matter on May 8, 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 is the owner of an online chat-room platform that connects interested individuals randomly over the world for real-time webcam based conversations. The online chat-room created and owned by the Complainant provides online networking services, video chat services and online video social interaction services.
The online chat-room platform was created in 2009 when the Complainant was a 17 year old high school student in Moscow, the Russia Federation.
The Complainant is also the owner of various CHATROULETTE trademarks in different jurisdictions, including European Union Trademark (“EUTM”) registration no. 008944076, registered on December 4, 2012; German trademark registration no. 3020100037067, registered on February 21, 2013 and United States of America trademark no. 4445843, registered on December 10, 2013. The Complainant also owns the EUTM CHATROULETTE.TO under registration no. 008946352, registered on August 19, 2012. (The Complainant also relied on Russian Federal Trademark registration no. 429957, registered on April 6, 2015 but which is in the name of Chatroulette, Inc. No explanation is given of the Complainant’s connections with Chatroulette, Inc. For the purposes of this decision, the Panel will not take into account this mark).
The Respondent appears to be an individual based in Jilin, China.
The disputed domain name was registered on June 30, 2017 and originally resolved to a page with pictures of Asian pornographic actresses which appeared to offer dating services. It now resolves to a webpage that appears to be selling cars.
5. Parties’ Contentions
The Complainant contends as follows:
Identical or Confusingly Similar
The disputed domain name <www-chatroulette-com.club> and the trademark CHATROULETTE are confusingly similar. The disputed domain name contains CHATROULETTE in its entirety as the distinctive part of the disputed domain name. The additional English words “www” and “com” are included which increase the confusing similarity between the disputed domain name and the Complainant’s trademark as they are commonly used in web addresses. The generic Top-Level Domain (“gTLD”) “.club” is generally disregarded when making a comparison.
No rights or legitimate Interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for CHATROULETTE. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the CHATROULETTE trademark given its worldwide reputation and the Respondent acquired the disputed domain name to disrupt the business of the Complainant and to prevent the Complainant from reflecting its mark in a corresponding domain name and/or to disrupt the Complainant’s business. The use of pornographic images could tarnish the Complainant’s reputation.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceedings
The language of the Registration Agreement is in Chinese.
The Complainant requests that the language of proceedings be English on the grounds that the Complainant does not understand or speak Chinese language. The obligation to translate all case relevant documents would be an unfair disadvantage to the Complainant.
The Respondent did not respond to this request.
Paragraph 11(a) of the Rules provides that:
“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 Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceedings lies with this Panel.
The Respondent did not respond to the Center’s preliminary determination. This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceedings “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. This factor leads the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
A. Substantive Issues
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is 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 name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The disputed domain name <www-chatroulette-com.club>, other than the gTLD “.club”, is confusingly similar to the Complainant’s trademark CHATROULETTE. The disputed domain name incorporates the Complainant’s CHATROULETTE mark in full with the addition of “www” and “com” which is identical to the Complainant’s domain name <chatroulette.com>.
The Panel notes that the Complainant does not have a registered trademark for CHATROULLETTE in China. However, the ownership of a trademark is generally considered to be a threshold standing issue. (See sections 1.7 and 1.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The disputed domain name is therefore confusingly similar to the Complainant’s registered trademark.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
C. Rights or Legitimate Interests
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant is internationally well-known and owns several CHATROULETTE trademarks in the world. The Respondent has no business or any kind of relationships (licensor, distributor) with the Complainant.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Considering the absence of a response by the Respondent and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
D. Registered and Used in Bad Faith
The Panel finds that the disputed domain name <www-chatroulette-com.club> was registered in bad faith and is being used in bad faith.
Based on the evidence, the Panel has no hesitation in finding that the disputed domain name <www-chatroulette-com.club> was registered in bad faith and is being used in bad faith. The Respondent clearly knew of the Complainant when it registered the disputed domain name, as it comprises of not only the Complainant’s mark but also the entirety of the Complainant’s current domain name <chatroulette.com>, which serves as strong evidence of the Respondent’s knowledge.
The current advertisements for cars on the site suggest the Respondent is making a commercial gain from the site. Further, the previous links to pornographic or semi-pornographic materials tarnish the CHATROULETTE trademark. This has been found in previous UDRP cases to constitute evidence of registration and use of a domain name in bad faith. (See WIPO Overview 3.0, section 3.12)
Having examined all the circumstances of the case the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. (See WIPO Overivew 3.0, section 3.2).
The third part of the paragraph 4(a) of the Policy is therefore satisfied.
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 <www-chatroulette-com.club> be transferred to the Complainant.
Date: May 22, 2018