WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Fengkun
Case No. D2019-1792
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Fengkun, China.
2. The Domain Name and Registrar
The disputed domain name <chatrouletteworld.com> is registered with Xin Net Technology Corp. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2019. On July 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 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 July 30, 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 in English on August 1, 2019.
On July 30, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on August 1, 2019. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on August 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2019. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 29, 2019.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on September 3, 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 operates an instant messaging platform that pairs random people located around the world together for real-time, webcam-based conversations. The Complainant started its business in 2009, with the registration of the domain name <chatroulette.com> (registered on November 16, 2009) and the launch of its official website. The Complainant provides evidence that its platform very quickly became popular, receiving an average of approximately 1.5 million users per month, one month after its creation. At present, the Complainant’s platform continues to be very popular among Internet users. According to third party statistics adduced by the Complainant, its official website averaged at 1.98 million monthly visitors in the period from January 2019 to July 2019. The Complainant also provides evidence that its business was featured in numerous media publications and television shows.
The Complainant owns trademark registrations for CHATROULETTE, for example Russian Federation trademark registration number 429957, registered on February 10, 2011; and European Union trademark registration number 008944076, registered on December 4, 2012. The disputed domain name was registered on December 1, 2018. The Complainant submits evidence that the disputed domain name directs to an active website, which contains adult content and sexually explicit images.
5. Parties’ Contentions
The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for CHATROULETTE, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.
The Complainant claims that its trademarks are distinctive and famous in the information technology industry, and provides a number of media articles about its business, as well as third party online visitor statistics. Moreover, the Complainant provides evidence that the disputed domain name is linked to an active website. The Complainant contends that the website linked to the disputed domain name is used to host pornographic materials. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes use in bad faith.
The Complainant also provides evidence that it sent a cease-and-desist letter to the Respondent on July 10, 2019, to which it received no answer.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Issue: Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant states that the language of the Registration Agreement for the disputed domain name is Chinese, which was confirmed by the Registrar on July 30, 2019. Nevertheless, the Complainant filed both its Complaint and amended Complaint in English, and requests that the language of the proceeding be English.
The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English and the lack of response by the Respondent on both the language of the proceeding and on the merits (the Panel notes that the Respondent had the opportunity to respond in either English or Chinese); the fact that the disputed domain name is exclusively in English, and the fact that the Complainant submits prior decisions in UDPR proceedings against the Respondent, in which the respective UDRP panels have accepted English as the language of the proceeding in spite of the registration agreement being drafted in Chinese (see Maggie Sottero Designs, L.L.C. v. Fengkun, WIPO Case No. D2019-0626 and ANDRITZ AG v. Kun Feng, Fengkun, WIPO Case No. D2019-0427); and the fact that Chinese as the language of the proceeding could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English.
6.2. Discussion and Findings on the Merits
The Policy requires the Complainant to prove three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Based on the evidence and arguments submitted, the Panel’s findings are as follows:
A. Identical or Confusingly Similar
The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in the sign CHATROULETTE based on its use and registration of the same as a trademark, incidentally commencing several years prior to the registration of the disputed domain name.
Moreover, as to confusing similarity of the disputed domain name with the Complainant’s trademarks, the disputed domain name consists of two elements, being the Complainant’s CHATROULETTE trademark combined with the descriptive word “world”. The Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v. Richard McLeod d/b/a For Sale, WIPO Case No. D2000-0662). The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark, as its only distinctive feature. The addition of the merely descriptive element “world” does not avert the confusing similarity between the disputed domain name and the Complainant’s trademark. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy.
B. Rights or Legitimate Interests
The Complainant has demonstrated that the Respondent is not an authorized reseller, service provider, licensee or distributor, and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. To the contrary, the website linked to the disputed domain name is currently used as a platform hosting pornographic content for commercial gain, which does not grant it any right or legitimate interest in such disputed domain name (see in this regard also MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205). The Panel therefore considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply. Furthermore, the Respondent is not commonly known by the disputed domain name. The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements for the second element under the Policy.
C. Registered and Used in Bad Faith
The Complainant has provided the Panel with ample materials evidencing the fame and popularity of its services and its trademarks protecting CHATROULETTE. Given the strong reputation and fame of such trademarks, the registration of the disputed domain name, which incorporates these trademarks in their entirety and which is very similar to the Complainant’s official domain name, was clearly intended to mislead and divert consumers to the disputed domain name. Even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant already owned trademarks in CHATROULETTE, and used these trademarks extensively. In the Panel’s view, these elements clearly indicate the bad faith of the Respondent in registering the disputed domain name, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.
As to use of the disputed domain name in bad faith, the website linked to the disputed domain name is currently used as a platform hosting pornographic materials and adult content. Publishing and promoting pornographic content at the website linked to the disputed domain name (and therefore by reference to the Complainant’s trademarks) is obvious bad faith use, and a blatant attempt to unlawfully profit from the registration of the disputed domain name. See in this regard also prior UDPR decisions such as Maggie Sottero Designs, L.L.C. v. Fengkun, supra, and Coolmath.com LLC v. weiwei, WIPO Case No. D2019-1517). Moreover, the Complainant also provides a number of recent UDPR decisions involving domain name squatting activities by the Respondent (see for instance Maggie Sottero Designs, L.L.C. v. Fengkun, supra), as well as a list of other domain names registered by the Respondent, which incorporate world-famous third party trademarks, from which the Panel deducts that the Respondent has clearly engaged in a pattern of trademark abusive domain name registrations. Finally, the Respondent also chose to ignore the Complainant’s cease-and-desist letter. On the basis of the preceding elements, the Panel rules that it has been demonstrated that the Respondent is using the disputed domain name in bad faith.
Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 <chatrouletteworld.com> be transferred to the Complainant.
Deanna Wong Wai Man
Date: September 12, 2019