WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. HolzLand Greve GmbH & Co.KG
Case No. D2018-2505
1. The Parties
Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
Respondent is HolzLand Greve GmbH & Co.KG of Neumuenster, Germany.
2. The Domain Name and Registrar
The disputed domain name <chatroulette.hamburg> (“Disputed Domain Name”) is registered with united-domains AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2018. On November 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 5, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 6, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On the same date the Center sent an email in German and English in regard to the language of the proceedings. Complainant filed an amended Complaint on November 8, 2018 and requested English to be the language of the proceedings. Respondent did not comment on 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 Respondent in English and German of the Complaint, and the proceedings commenced on November 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2018. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2018.
The Center appointed Peter Wild as the sole panelist in this matter on December 14, 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.
Language of the Proceeding
The language of the Registration Agreement for the Disputed Domain Names is German. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Complainant has requested that English be the language of the proceeding for the following reasons: Complainant is unable to communicate in German and translation of the Complaint would unfairly disadvantage and burden Complainant and delay the proceedings and adjudication of this matter; The Disputed Domain Name is comprised of Latin characters; The term “chatroulette”, which is the dominant portion of the Disputed Domain Name, does not carry any specific meaning in the German language; and Complainant previously sent cease-and-desist letters to Respondent via the Registrar and Respondent had ample time and opportunity to respond to such letters and request that communications continue in German. Respondent neither issued such a request nor responded to Complainant in any matter whatsoever.
While these reasons standing alone may not be sufficient to deviate from the default language of procedure, namely the language of the Registration Agreement (in this case German), further procedural history must be taken into consideration. First, Respondent was contacted by the Center by email on November 6, 2018 in English and German to comment on the language of the procedure. Respondent did not reply. Second, after commencement of the procedures, Respondent did not file a response to the Complaint. From this passive behavior it appears that Respondent, who had two opportunities to request German as a procedural language, has no interest in the procedure as such and certainly not in the question of the procedural language.
Pursuant to paragraph 11(a) of the Rules, the Panel may determine the language of the proceedings having regard to all circumstances, and to help ensure fairness, and maintain an inexpensive and expeditious avenue for resolving domain disputes.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, the opportunity for Respondent to request German as the procedural language and time and costs. Under all these aspects, the Panel exercises its discretion, according to paragraph 11(a) of the Rules and allows the proceedings to be conducted in English.
4. Factual Background
Complainant Andrey Ternovskiy dba Chatroulette (“Chatroulette”) owns trademark registrations for CHATROULETTE in a number of countries, e.g. Germany, the United States of America, the Russian Federation and the European Union with filing dates of 2010 and registration dates of 2011-2013.
Complainant runs an online chat website under the domain name <chatroulette.com> that pairs random people from around the world together for real-time, webcam-based conversations; it was developed in 2009 and enjoys significant user numbers of more than 4.5 million visitors per month and media attention. The domain name <chatroulette.com> was registered on November 16, 2009.
The original registration date for the Disputed Domain Name is August 27, 2014, five years later than the trademark applications of Complainant.
5. Parties’ Contentions
According to Complainant, and supported with evidence, the trademark CHATROULETTE has been filed in the year 2009 in a number of countries, including Germany, the seat of Respondent and the relevant second level of the Disputed Domain Name is identical to this trademark. There is no indication that Respondent is known under the name Chatroulette and Complainant states that it never authorized Respondent to use or register this name.
Finally, Complainant alleges that Respondent registered the Disputed Domain Name in bad faith, as it knew or should have known about the prior rights of Complainant. In addition, Complainant claims that Respondent registered and is using the Disputed Domain Name in bad faith by offering it for sale for a price higher than the out of pocket costs.
The Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant owns CHATROULETTE trademarks in a number of countries including Germany. This element is identical to the second level of the Disputed Domain Name. It is standard practice when comparing the Disputed Domain Name to Complainant’s trademarks, not to take the generic Top-Level Domain (“gTLD”) element into consideration.
The second Level Domain of the Disputed Domain Name consists solely of Complainant’s CHATROULETTE trademark, resulting in a domain name that is identical to Complainant’s CHATROULETTE trademark.
The Panel therefore holds the first element of the Policy is fulfilled.
B. Rights or Legitimate Interests
The registered company name of Respondent, “HolzLand Greve GmbH & Co.KG”, has no indication of the Disputed Domain Name. There is no other indication that Respondent is otherwise commonly known by the Disputed Domain Name.
According to Complainant, Respondent is not sponsored by or affiliated with Complainant in any way and Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names.
Respondent is using the Disputed Domain Name to resolve to a page offering the Disputed Domain Name for sale, without any other content on the website. There is no indication on file that Respondent made use of the Disputed Domain Name’s website with proper content and Respondent has not demonstrated any attempt to make legitimate use of the domain name and website.
For these reasons, the Panel decides that there is no legitimate interest of Respondent evident from the file and that the second element of the Policy is met.
C. Registered and Used in Bad Faith
Complainant and its CHATROULETTE trademark are known internationally, with international trademark registrations, including in Germany where Respondent is based. The Complainant registered its <chatroulette.com> domain name on November 16, 2009 and established its Chatroulette service and website in the same year, clearly before the original registration of the Disputed Domain Name on August 27, 2014.
By registering the Disputed Domain Name that contains solely of Complainant’s CHATROULETTE trademark, Respondent has created the Disputed Domain Name that is identical to Complainant’s trademark which is not a dictionary term. It is an unusual word and therefore it is rather likely that Respondent was, at the time of filing the Disputed Domain Name, familiar with Complainant’s brand and business which had obtained significant press coverage before 2014. It would also have been easy to identify Complainant’s trademark as a prior right with a simple Internet search. The significant press and media reports about Complainant’s business make it unlikely that Respondent did not know of Complainant’s business and prior rights. The Panel therefore holds it much more likely than not that Respondent knew or should have known Complainant’s earlier trademark at the time when it registered the Disputed Domain Name, which is a strong indication of bad faith, see Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 where the Panel states “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks”. Therefore, the Panel holds that the registration of the Disputed Domain Name was effected in bad faith.
This is supported by at least one further domain name which Respondent appears to own and which is shown as the result of a reverse domain name search, namely <livejasmin.hamburg>, using a well-know adult website “www.livejasmin.com” with the gTLD “.hamburg” which had just become available a few months before. This seems to indicate some sort of pattern on the side of Respondent, registering domain names consisting of well-known trademarks with newly available gTLDs and then offering them for sale.
The Disputed Domain Name currently resolves to an inactive site. It is an established practice of previous panels that bad faith “use” in the context of paragraph 4(a)(iii) does not require a positive act on the part of Respondent. Passive holding of a domain name can constitute a factor in finding bad faith registration and use. In this case, the Disputed Domain Name is identical to Complainant’s CHATROULETTE trademark, and Respondent has made no use of the Disputed Domain Name other than to offer it for sale, and shows a pattern of such conduct with the domain name <lievjasmin.hamburg>. These factors must be considered in assessing bad faith use.
Complainant has sent several cease-and-desist letters to Respondent via the Registrar. Respondent has ignored Complainant’s attempts to resolve this dispute outside of this administrative proceeding and ignored all communication of the Center to participate in the present procedure. Such failure to respond to cease-and-desist letters and passivity in the proceedings are further elements to be considered a factor in finding bad faith registration and use of a domain name. See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330.
Respondent is currently offering to sell the Disputed Domain Name, which is an indication of bad faith under paragraph 4(b)(i). Respondent has demonstrated an intent to sell, rent, or otherwise transfer the Disputed Domain Name for valuable consideration. While there is no price reserve or indication on the offer, it may be presumed that Respondent is likely seeking a price in excess of his out-of-pocket expenses. It is well established that seeking to profit from the sale of a confusingly similar domain name that incorporates a third party’s trademark demonstrates bad faith. See Caldsoft Way3D Sistemas Eireli EPP v. JInsoo Yoon, WIPO Case No. D2016-2514 (finding bad faith where the registrant is “simply offers the Disputed Domain Name for sale”). For all these reasons, the Panel holds that Respondent is using the Disputed Domain Name in bad faith.
On balance of all available information, the Panel decides that the third element of the Policy is met.
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 <chatroulette.hamburg> be transferred to Complainant.
Date: December 20, 2018