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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Domain Admin, Whois Privacy Corp.

Case No. D2018-1109

1. The Parties

The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <chatroulettebrasil.com> (the "Disputed Domain Name") is registered with Internet Domain Service BS Corp (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 17, 2018. On May 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 18, 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.

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, and the proceedings commenced on May 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 14, 2018.

The Center appointed John Swinson as the sole panelist in this matter on June 20, 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 Andrey Ternovskiy doing business as Chatroulette. Chatroulette is an online chat website at "www.chatroulette.com" that pairs random people from around the world together for real-time, webcam-based conversations. The Complainant created the Chatroulette service and website in 2009. Chatroulette experienced strong growth after its launch in November 2009, receiving 50,000 visitors per day by January 2010. By February 2010, Chatroulette was receiving approximately 130,000 visitors per day, representing a 26,000 percent increase in traffic over the December 2009 figures.

The Complainant owns a number of registered trade marks for CHATROULETTE across various jurisdictions including the European Union, Germany and the United States of America ("United States"). See, for example, registration number 4445843 filed on January 10, 2011, registered on December 10, 2013 in the United States, and registration number 008944076 filed on March 10, 2010, registered on December 4, 2012 in the European Union ("the Trade Mark").

The Respondent is Domain Admin, Whois Privacy Corp, a privacy service based in the Bahamas. The underlying registrant of the Disputed Domain Name is unknown. No response was received, therefore little information is known about the Respondent. The Disputed Domain Name was registered on April 9, 2010 but due to the privacy services employed by the registrant from time to time it is unclear whether the Respondent is the true owner of the Disputed Domain Name. At the time the Complaint was filed, the Complainant states that the Disputed Domain Name resolved to a random video online chat site. At the time of the decision, the website at the Disputed Domain Name resolves to an error page which states "Access Denied" and also features pay-per-click ("PPC") links.

5. Parties' Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or Confusingly Similar

The Complainant has registered trade marks for CHATROULETTE in various jurisdictions. The Disputed Domain Name contains the entirety of the Trade Mark, only adding the geographical term "Brasil", making it confusingly similar to the Trade Mark. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at section 1.8 "where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element". The content of the Disputed Domain Name is a random video chat site, which reinforces the confusing similarity to the Complainant's own activity and Trade Mark.

Rights or Legitimate Interests

The Complainant has registered trade marks and therefore has exclusive rights to use the Trade Mark in commerce. The Complainant has not licensed, authorized or permitted the Respondent to use the Trade Mark or register the Disputed Domain Name.

Due to privacy services employed by the registrant of the Disputed Domain Name, it is unclear whether the Respondent is the original owner or has acquired the Disputed Domain name from a third party. Regardless, there is no bona fide offering of goods and services as the Respondent is using the Disputed Domain Name to offer video online chat services that directly compete with the Complainant's business.

The Respondent is not commonly known by the Disputed Domain Name, therefore it cannot be regarded as having acquired rights to or legitimate interests in the Disputed Domain Name. At the time of filing the Complaint the Respondent was using a privacy service, which past UDRP panels have found to equate to a lack of legitimate interests.

Registered and Used in Bad Faith

The Respondent has registered the Disputed Domain Name to include the entirety of the Complainant's well established Trade Mark and consequently offer services that directly compete with the Complainant's business. The Respondent registered the Disputed Domain Name in 2010, after the Complainant's website had gained strong growth and popularity.

At the time of the registration of the Disputed Domain Name, the Respondent knew, or at least should have known, of the existence of the Complainant's "www.chatroulette.com" website. The traffic at "www.chatroulette.com" had increased by 10,000 percent between its launch in November 2009 and January 2010. The Respondent's registration of the Disputed Domain Name after the Complainant registered the Trade Mark and after strong growth, strongly suggests that the Respondent knew of the Complainant. Previous UDRP panels have held that the registration of a domain name relating to and shortly after an announcement or event by the Complainant constitutes opportunistic bad faith registration.

According to the WIPO Overview 3.0 at section 3.1.1, "if on the other hand circumstances indicate that the respondent's intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant's trademark, panels will find bad faith on the part of the respondent." In this case, the Disputed Domain Name has been used to profit from the Complainant's Trade Mark and mislead Internet users into using a competing video online chat service, which is evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(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.

The onus of proving these elements remains on the Complainant even though Respondent has not filed a Response.

The Respondent's failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent's default.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Complainant has registered trade marks for CHATROULETTE in various jurisdictions. The Disputed Domain Name incorporates the entirety of the Trade Mark, with the geographical term "Brasil" as the only additional term. A domain name which incorporates a registered trade mark only with the addition of a geographical term is often considered by UDRP panels to be confusingly similar to the relevant trade mark for the purposes of the first element (see WIPO Overview 3.0 at section 1.8).

The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:

- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. At the time the Complaint was filed, the Complainant submits that the website at the Disputed Domain Name featured a video online chat service that directly competed with the Complainant's business. At the time of this decision, the website resolves to what appears to be an error page with PPC links. While these PPC links do not appear to relate to online chat or other social media services, in the circumstances, this is not a bona fide use of the Disputed Domain Name under the Policy.

- The Panel accepts the Complainant's submission that the Complainant has not authorised or otherwise given the Respondent permission to use the Disputed Domain Name.

- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.

- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. It is open to the Panel to infer that the Respondent is likely receiving click-through revenue from the PPC links on the website at the Disputed Domain Name.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Disputed Domain Name was registered on April 9, 2010, after the Complainant's website gained strong popularity. By February 2010, the Complainant's website and chat service had already attracted significant media attention and nearly 4 million monthly users. In addition, the Complainant had already filed the Trade Mark for registration in some jurisdictions in March 2010.

The Panel accepts the Complainant's submission that it is highly likely the Respondent registered the Disputed Domain Name with the Complainant in mind. This is evident based on the fact that the Disputed Domain Name incorporates the entirety of the Trade Mark only with the additional geographic term "Brasil". Further, the Complainant has provided evidence that at the time the Complaint was filed the website at the Disputed Domain Name offered a video online chat service which directly competed with the services offered by the Complainant. The Panel can reasonably infer that the Respondent sought to make use of the Complainant's reputation in the Trade Mark and registered and used the Disputed Domain Name in bad faith.

This conclusion is supported by the content of the website at the Disputed Domain Name at the time of this decision, which is an error page with PPC links. The Panel considers that the Respondent is intentionally attempting to attract, for commercial gain users to its website by creating a likelihood of confusion with the Trade Mark, which is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.

In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third element of 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 <chatroulettebrasil.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: July 4, 2018

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