WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Polina Butenina
Case No. D2018-1499
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Polina Butenina of Sankt-Peterburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <unbanchatroulette.net> is registered with Regtime Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2018. On July 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 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 July 17, 2018 the Center sent an email communication to the Parties in English and Russian in regard to the language of the proceedings. On July 19, 2018 the Complainant sent a request for English to be the language of the proceedings on which the Respondent did not reply.
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 July 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2018.
The Center appointed Taras Kyslyy as the sole panelist in this matter on August 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 Mr. Andrey Tarnovskiy doing business as Chatroulette, 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 owns CHATROULETTE trademark registrations in various jurisdictions as follows:
- European Union, trademark registration No. 008944076, registered in 2012,
- Switzerland, trademark registration No. 600401, registered in 2010,
- United States of America, trademark registration No. 4445843, registered in 2013,
- Germany, trademark registration No. 302010003706, registered in 2013.
The disputed domain name <unbanchatroulette.net> was registered on March 13, 2015 and is used for a website containing instructions in English on how to remove bans for using the Complainant’s and its competitors’ websites.
5. Parties’ Contentions
The disputed domain name is identical or at least confusingly similar to the Complainant’s trademark. The Top-Level Domain (“TLD”) “.net” shall be disregarded for the similarity test. The disputed domain name captures the Complainant’s trademark in its entirety, adding only the term “unban”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not commonly known by the disputed domain name. The Complainant has not licensed, authorized, or permitted the Respondent to register the disputed domain name. The Respondent is trying to benefit from the Complainant’s trademark. It is the fame of the Respondent’s trademark that has motivated the Respondent to register the disputed domain name. Respondent primarily chose the disputed domain name as a pretext for commercial advantage and, as such, cannot constitute bona fide offering of goods or services or legitimate noncommercial fair use. Metadata associated with the disputed domain name and used by search engines specifically refer to the Complainant and its trademark.
The disputed domain name was registered and is being used in bad faith. The Complainant’s trademark is so closely linked and associated with the Complainant that the Respondent’s use of the trademark or any minor variation of it strongly implies bad faith. While registering the disputed domain name 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. The Respondent’s use of the disputed domain name creates confusion as to its source in an attempt to trade on the goodwill associated with the Complainant’s trademark. Respondent failed to respond to the Complainant’s cease and desist letters. It is more likely than not that the Respondent knew of and targeted the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceedings
The language of the Registration Agreement for the disputed domain name is Russian. 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 Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances”. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the parties.
The Complainant has submitted in its Complaint a request that the language of the proceedings be English. The Complainant contends that the Respondent is familiar with the English language, since the disputed domain name consists of English words without any specific meaning in Russian, the Respondent’s website is in English, when receiving cease and desist letters from the Complainant the Respondent failed to request that communication continues in Russian. The Panel is prepared to infer that the Respondent is able to understand and communicate in English based on the above arguments provided by the Complainant in its entirety.
The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference but did not do so.
The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.
Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
B. Identical or Confusingly Similar
The TLD “.net” in the disputed domain name is viewed as a standard registration requirement and is disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
According to section 1.8 of the WIPO Overview 3.0 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 disputed domain name <undancharoulette.net> includes the Complainant’s trademark CHATROULETTE, adding descriptive “unban” explaining purpose of the content of the associated website, which does not preclude a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.
Considering the above the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.
The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its priory registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong,WIPOCase No. D2014-1875).
The Panel also finds that the nature of the services provided on the website at the disputed domain name, in particular, instructions on how to overcome ban for services at the Complainant’s respective website precluding indecent exposure of its users, cannot constitute a bona fide offering of goods or services or legitimate noncommercial fair use.
Considering the above the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
There is bad faith pursuant to the Policy when Respondent “knew or should have known” of Complainant’s trademark rights at the time he registered the disputed domain name (see Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763; ALSTOM v. Domain Investments LLC, WIPO Case No. D2008-0287).
According to section 3.1 of the WIPO Overview 3.0 given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden. In this regard, the Panel finds that the nature of the services provided on the website at the disputed domain name, in particular, instructions on how to overcome ban for services at the Complainant’s respective website precluding indecent exposure of its users, constitutes bad faith.
Moreover, the Respondent failed to respond to the Complainant’s cease and desist letters, and did not provide any good reason to justify this, which further suggests the bad faith (see, e.g., Compagnie Generale des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022).
Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
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, <unbanchatroulette.net> be transferred to the Complainant.
Date: September 3, 2018