WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Robert Stewart, Hush IP LLC
Case No. D2018-1680
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Robert Stewart, Hush IP LLC of Phoenix, Arizona, United States of America (“USA”).
2. The Domain Name and Registrar
The disputed domain name <joychatroulette.com> is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2018. On July 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 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 August 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2018.
The Center appointed Martin Michaus-Romero as the sole panelist in this matter on August 28, 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 several trademark registrations across various jurisdictions. The trademark CHATROULETTE has continuously been used by the Complainant since 2010, including in such jurisdictions, as Russian Federation, European Union, Germany and the USA.
Chatroulette is an online chat website that pairs random people from around the world together for real time, webcam-based conversation. It also provides online video chat services and online social introduction and networking services.
The Complainant created the Chatroulette service and website in 2009 when he was 17 years old, high school student in Moscow, Russian Federation.
The Complainant owns the following CHATROULETTE trademark registrations:
a. Russian Federation:
Registration Number 429957, filed in 2010 and registered in 2011 in International Classes 35, 38 and 42.
b. European Union
Registration Number 008944076, filed in 2010 and registered in 2012 in International Classes 35, 38 and 42;
Registration Number 008946352, filed in 2010 and registered in 2012 in International Classes 35, 38 and 42.
3020100037067 filed on 2010 and granted on 2013 in International Classes 35, 38 and 42.
Registration Number 4445843, filed in 2011 and registered in 2013 in International Classes 38 and 45.
The Complainant and its online webchat are well-known, including in the Russian Federation and the European Union, especially in Germany.
The disputed domain name was registered on April 22, 2015; long after the CHATROULETTE trademark and website have been used in commerce and registered in different jurisdictions. The disputed domain name resolves to a website title “Sedo By. Park. Sell. Domains”, on which it is offered for sale.
5. Parties’ Contentions
The Complainant states in the Complaint that the Respondent:
a) Registered the disputed domain name incorporating the well-known CHATROULETTE trademark without the Complainant’s knowledge or authorization.
b) The Respondnet uses the disputed domain name to redirect Internet users to a website featuring links to a third-party website, some of which directly compete with the Complainant business.
c) The disputed domain name is being offered for sale in an amount that exceeds the Respondent’s out-of-pocket expenses in registering the disputed domain name.
In the Complaint, the Complainant asserts that the disputed domain name is confusingly similar to the CHATROULETTE trademark. The Respondent has no rights or legitimate interests in the disputed domain name, and the disputed domain name was registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, “a Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Considering that the Respondent did not reply to the Complainant’s contentions, in order to determine whether the Complainant has met its burden as stated in paragraph 4(a) of the Policy, the Panel bases its Decision on the statements and documents submitted and in accordance with the Policy and the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted unequivocal evidence of its rights in the CHATROULETTE trademark. The disputed domain name is confusingly similar to the Complainant’s CHATROULETTE trademark. The disputed domain name reproduces the Complainant’s trademark CHATROULETTE in its entirety, with the addition of the term “joy”, which does not prevent a finding of confusing similarity, and the generic Top-Level Domain (“gTLD”) “.com”, which can be disregarded for the assessment of the first element of the Policy.
The Panel finds that the Complainant satisfies paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent has not received permission or authorization to use the Complainant’s trademark or service mark. The Respondent did not reply to the Complainant’s contentions, and therefore has not provided any evidence or arguments to demonstrate anything to the contrary. In addition, the Complainant’s use of its trademark and service mark precedes the registration of the disputed domain name. It should be pointed out that the Respondent is not an individual, business or corporation known by the name “Chatroulette” or by the disputed domain name. Furthermore, the Respondent is using the disputed domain name to redirect Internet users to a website featuring links to a third-party websites, some of which directly compete with the Complainant’s business, which obviously does not give rise to any rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant satisfies paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to the statements and documents submitted, it is clear to the Panel that the registration and the use of the disputed domain name has been in bad faith, by including the well-known Chatroulette trademark, to intentionally attract for commercial gain Internet users; it creates a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s website. The Respondent should have been aware of the existence of the Complainant’s trademark. Thus, the registration of the disputed domain name including the well-known CHATROULETTE trademark, constitutes bath faith.
The Panel finds that the Complainant satisfies 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 <joychatroulette.com> be transferred to the Complainant.
Martin Michaus Romero
Date: August 28, 2018