WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. WhoisGuard, Inc. / Daniel Linden, Appchatten GmbH
Case No. D2019-0783
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is WhoisGuard, Inc. of Panama / Daniel Linden, Appchatten GmbH of North Rhine-Westphalia, Germany.
2. The Domain Name and Registrar
The disputed domain name <chatroulette-app.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2019. On April 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 5, 2019, 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 the Complainant on April 8, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 11, 2019.
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 of the Complaint, and the proceedings commenced on April 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2019.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on May 10, 2019. 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 since 2009 operates an online chat website under the name “Chatroulette” that pairs random people from around the world together for real-time, webcam-based conversations.
The website under the Complainant’s domain name <chatroulette.com> grew to over 500,000 daily visitors in early 2010 and received 3.9 million visits in February 2010.
The Complainant is the owner of, inter alia, the following trade marks (the “Trade Marks”):
- German trade mark CHATROULETTE no. 302010003706, registered on February 21, 2013
- European Union trade mark CHATROULETTE no. 008944076 registered on December 4, 2012
- United States trade mark CHATROULETTE no. 4445843 registered on December 10, 2013
The Domain Name has been registered on December 20, 2015.
The Domain Name resolves to a website featuring links to a third-party website offering webcam based online interaction, and a link which bears the name of the Complainant.
By email of November 19, 2018, the Complainant has sent a cease-and-desist letter to the Respondent, with a reminder by email of November 26, 2018, to which no response was received.
5. Parties’ Contentions
According to the Complainant, the Domain Name incorporates the Trade Marks in their entirety while adding the generic, descriptive term “app”, thus rendering the Domain Name confusingly similar to the Trade Marks. The Complainant further submits that the addition of a this generic term to does not change the confusing similarity between the Domain Name and the Trade Marks.
The Complainant states that the Respondent is not commonly known by the Domain Name, which would demonstrate a lack of rights or legitimate interests. In addition, the Complainant contends, at the time of filing of the Complaint, the Respondent was using a privacy WhoIs service, which would equate to a lack of legitimate interest. Furthermore, the Complainant points out that the Respondent is not sponsored by or affiliated with the Complainant in any way and the Complainant has not licensed, authorized, or permitted the Respondent to register a domain name incorporating the Trade Marks.
According to the Complainant, historical screenshots of the website to which the Domain Name resolves show that since 2015, the Respondent has been using the Domain Name to redirect Internet users to a website featuring links to third party websites, some of which directly compete with the Complainant's business. The Complainant assumes that the Respondent receives pay-per-click (“PPC”) fees from the linked websites that are listed at the website and such use of the Domain Name in its view does not qualify as a bona fide offering of goods or services.
The Complainant points out that the Domain Name was registered well after the Complainant registered the domain name <chatroulette.com> on November 16, 2009 and the registration date of the Trade Marks. Therefore, the Complainant submits, at the time of registration of the Domain Name in the Respondent’s name, the Respondent knew, or at least should have known, of the existence of the Trade Marks.
The Complainant contends that the Respondent creates a likelihood of confusion with the Complainant and the Trade Marks by registering the Domain Name, which incorporates the Trade Marks in their entirety with only the addition of a generic word, thereby seeking to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the Domain Name and the website to which it resolves. The presence of multiple PPC links posted to the website, some of which directly reference the Complainant and/or its competitors, demonstrates, the Complainant submits, that the Respondent is using the Domain Name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the Domain Name and the website. Furthermore, the Complainant states, the Respondent failed to respond to a cease-and-desist letter from the Complainant, while employing at the time of initial filing of the Complaint a privacy service to hide its identity.
Together, these circumstances in the view of the Complainant constitute bad faith registration and use of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the term “Chatroulette”, of which the Trade Marks consist, in its entirety. The addition of the term or word “app” does not avoid a finding of confusing similarity between the Domain Name and the Trade Marks (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see also, inter alia, TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361, and F. Hoffmann-La Roche AG v. John Mercier, WIPO Case No. D2018-0980). The generic Top-Level Domain (“gTLD”) “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This 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. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. If the Complainant succeeds in doing so, 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 (See WIPO Overview 3.0, section 2.1).
Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name and has not acquired trade mark rights in the Domain Name. The Respondent’s use of the Domain Name in the present case does not amount to a bona fide offering of goods or services, since the website to which the Domain Name resolves, inter alia contains a hyperlinks named ‘Chatroulette’, ‘Omegle’ (a website offering chat services similar to those of the Complainant), ‘Omegle Chat’and ‘Omegle App’, with no disclaimer as to the non-existing relationship between the Respondent (or the website) and the Complainant. It is known that such websites generate PPC income and such use therefore does not constitute legitimate noncommercial or fair use.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks, since:
- the Respondent’s acquisition of the Domain Name occurred three years after the registration of the earliest of the Trade Marks;
- the trade mark CHATROULETTE, which is incorporated in its entirety in the Domain Name, does not appear to be a dictionary word, nor a name of which it is likely that a registrant would spontaneously or accidentally think of in relation to online chat services;
- the website to which the Domain Name resolves, contains a hyperlink named ‘Chatroulette’;
- a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name in its name would have informed the Respondent of the existence of the Trade Marks.
Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.
The Panel finds that the following circumstances taken together warrant a finding of bad faith use of the Domain Name:
- the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks;
- the non-dictionary nature of the mark CHATROULETTE incorporated in its entirety in the Domain Name, such that the Respondent cannot claim to have “accidentally” registered a domain name
that happens to correspond to the Trade Marks;
- the use in its registration of a privacy service to hide its identity;
- the fact that, while the Trade Marks are used on the website to which the Domain Name resolves, there is no disclaimer on the website with respect to the non-existing relationship with the Complainant;
- the lack of a response to the cease-and-desist letters sent by the Complainant and the absence of a formal Response of the Respondent.
Therefore, the Panel concludes that the Domain Name has been registered and is being used in bad faith.
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-app.com> be transferred to the Complainant.
Wolter Wefers Bettink
Date: May 21, 2019