WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Maria Di Blasi
Case No. DEU2018-0031
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Maria Di Blasi of Salzburg, Austria.
2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name <chatroulette-gay.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is webagentur.at Internet services gmbh.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2018. On the same day, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On December 6, 2018, the Registry 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 .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 7, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was January 18, 2018. The Respondent did not submit a Response. Accordingly, the Center notified the Respondent’s default on January 22, 2019.
The Center appointed Peter Kružliak as the sole panelist in this matter on January 28, 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 ADR Rules, Paragraph B(5).
The language of the ADR proceeding is English as decided by the Administrative Panel Decision related to the Request to Change the Language of the ADR Proceeding, Case No. DEUL2018-0004 of November 14, 2018.
4. Factual Background
The Complainant, Andrey Ternovskiy dba Chatroulette, who is a citizen and resident of Malta according to the provided information, is the exclusive owner of several registered trademarks consisting of the word “Chatroulette” in various jurisdictions throughout the world, with the key registrations relevant for this case being the following:
- the European Union Trade Mark (“EUTM”) for the word CHATROULETTE with registration number 008944076, date of application: March 10, 2010, date of registration: December 4, 2012, for the goods and services in classes 35, 38, and 42 of the Nice Classification of Goods and Services;
- the German Trademark for the word CHATROULETTE with registration number 302010003706, date of application: March 10, 2010, date of registration: February 21, 2013 for the goods and services in classes 35, 38, and 42 of the Nice Classification of Goods and Services.
Chatroulette, created and owned by the Complainant, is an online chat website that pairs random users for webcam-based conversations, as a result visitors to the website can begin an online chat (text, audio, and video) with another visitor.
According to the Complainant, Chatroulette very quickly after its launch in 2009 established popularity and high-profile reputation worldwide as proven by exponential growth of visitors to the Complainant’s website after the launch, as well as by extensive coverage of Chatroulette in news and media, including internationally well-known newspapers and magazines, and television shows. The Complainant’s website receives several million visitors per month.
The disputed domain name was registered on January 28, 2018, and at the date of the decision resolves to a website that redirects visitors to third party links for inter alia “adult chat online”, “adult cams and chat” and “online chat”. The website at the disputed domain name also displays a banner that offers the domain for sale and that redirects to a website allowing prospective buyers to request a price for the domain.
5. Parties’ Contentions
A. Complainant
The Complainant argues that based on the relevant trademark registrations, the Complainant has the exclusive rights to the CHATROULETE trademark. The Complainant further argues that the disputed domain name fully incorporates the Complainant’s CHATROULETTE trademark and simply adds the descriptive term “gay” to the trademark, which does not negate the confusing similarity of the disputed domain name to the Complainant’s CHATROULETTE trademarks. Similarly, the Complainant argues based on the precedent established in Crystal Lagoon B.V. v. Edward Cook, WIPO Case No. DEU2018-0004, that the addition of the hyphen does not prevent a finding of confusing similarity to the Complainant’s trademarks.
The Complainant further claims that the Respondent is not commonly known by the disputed domain name and that the Complainant has not licensed, authorized, or permitted the Respondent to register a domain name incorporating the Complainant’s trademarks. Based on the precedent cited by the Complainant (Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875) the absence of a license or permission to use the Complainant’s trademark shall prevent any actual or contemplated bona fide or legitimate use of the disputed domain name to be claimed by the Respondent.
The Complainant argues that the Respondent is using the disputed 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 Respondent presumably receives pay-per-click revenue from the links at the disputed domain name. According to the Complainant previous decisions consistently held that respondents that monetize domains using pay-per-click schemes did not make a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name. The Complainant argues that further evidence of the Respondent’s lack of rights and legitimate interests comprises in the fact that the disputed domain name is being offered for sale at two different domain marketplaces, Sedo and domainname.de. Finally, the Respondent registered the disputed domain name on January 28, 2018, which is significantly after the Complainant filed the trademark applications for the CHATROULETTE, as well as significantly after the Complainant’s registration of his <chatroulette.com> domain name on November 16, 2009.
The Complainant argues that the Complainant and its CHATROULETTE trademark are known internationally with trademark registrations in numerous jurisdictions. The Complainant asserts that he marketed and sold goods and services using trademarks since 2009, which is well before the Respondent’s registration of the disputed domain name. As a result, at the time of the registration of the disputed domain name the Respondent knew or at least should have known of the existence of the Complainant’s trademarks and the registration of domain names containing its well-known trademarks constitutes according to the Complainant bad faith per se.
The Complainant further contends that bad faith of the Respondent is proven because the Respondent creates a likelihood of confusion with the Complainant and its trademarks by registering a domain name that incorporates the Complainant’s CHATROULETTE trademark and adds a hyphen, as well as the descriptive term “gay”. Such use demonstrates that the Respondent is using the disputed domain name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source, sponsorship, affiliation, or endorsement of the of the website at the disputed domain name.
By creating said likelihood of confusion between the disputed domain name and the Complainant’s CHATROULETTE trademarks, the Respondent has, according to the Complainant, demonstrated nefarious intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the disputed domain name’s website for commercial gain (Papa John’s (GB) Limited Papa John’s International, Inc. v. Irma Norberg, WIPO Case No.DEU2018-0013).
The Complainant also points out prior panel decisions in UDRP cases, finding that the Respondent has engaged in a bad faith pattern of “cybersquatting”, and asserts that such pattern is also present in this case, since the Respondent was involved in Carrefour v. Manager Limited Domain /Maria Di Blasi, WIPO Case No. DEU2018-0014. The Complainant also claims that bad faith of the Respondent is evidenced by the fact that the Respondent is offering the disputed domain name for sale, as well as by the fact that the Respondent ignored the Complainant’s attempts to resolve this dispute outside of the administrative proceeding and failed to respond to a cease-and-desist letter.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under Article 21(1) of Regulation (EC) No. 874/2004 and Paragraph B(11)(d)(1) of the ADR Rules, the Panel shall issue a decision granting the remedies under the Procedural Rules if the Complainant proves:
(i) that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; either
(ii) that the disputed domain name has been registered by the Respondent without rights or legitimate interests in the name; or
(iii) that the disputed domain name has been registered or is being used in bad faith.
Furthermore Article 22(10) of Regulation (EC) No. 874/2004 provides that “[f]ailure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty.”
Similarly in accordance with Paragraph B(10)(a) of the ADR Rules: “In the event that a Party does not comply with any of the time periods established by these ADR Rules or the Panel, the Panel shall proceed to a decision on the Complaint and may consider this failure to comply as grounds to accept the claims of the other Party.”
A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law
The Complainant has submitted evidence of its registered trademarks rights for CHATROULETTE in the European Union and in various other jurisdictions. The Panel therefore holds that the trademark registrations submitted by the Complainant satisfy the requirement of having a right recognized by the Community law by virtue of the EUTM CHATROULETTE, as well as a right recognized by the national law of a Member State (Germany) in case of the Geman trademark CHATROULETTE.
For purpose of comparing the Complainant’s CHATROULETTE trademarks with the disputed domain name, it must be first noted that the country code Top-Level Domain (“ccTLD”) “.eu” is typically disregarded, as ccTLDs are merely required for technical reasons (see for instance Lidl Stiftung & Co. KG v. Name Redacted, WIPO Case No. DEU2018-0012).
The disputed domain name incorporates the Complainant’s CHATROULETTE trademark in its entirety and adds the dictionary term “gay”. The addition of a dictionary term to the disputed domain name is generally insufficient to avoid the finding of confusing similarity (for a similar finding see the aforementioned decision in Lidl Stiftung & Co. KG v. Name Redacted, WIPO Case No. DEU2018-0012).
Also the insertion of a hyphen between the words “chatroulette” and “gay” is insufficient to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s CHATROULETTE trademarks. See inter alia Pet Plan Ltd v. Corner Store BV, WIPOCase No. DEU2018-0027.
In the given case, since the Complainant’s trademark is included in its entirety and thus clearly recognizable in the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s CHATROULETTE trademarks under Paragraph B(11)(d)(1)(i) of the ADR Rules.
B. Rights or Legitimate Interests
Paragraph B(11)(e) of the ADR Rules provides that the following circumstances may demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of Paragraph B11(d)(1)(ii):
(1) prior to any notice of the dispute, the Respondent has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so;
(2) the Respondent, being an undertaking, organization or natural person, has been commonly known by the domain name, even in the absence of a right recognized or established by national and/or Community law;
(3) the Respondent is making a legitimate and noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law.
In accordance with section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) 1 , as well as previous panel decisions (inter alia see Pet Plan Ltd v. Corner Store BV, WIPOCase No. DEU2018-0027 or Banque Delubac et Cie v. Pierre Dieudonne, WIPO Case No. DEU2018-0030), where the Complainant presents a prima facie case that the Respondent lacks rights or legitimate interests to the disputed domain name, the burden of production on this element shifts to the Respondent.
In the present case the Complainant has established that it holds rights to the CHATROULETTE trademarks and claims that he has not licensed, authorized or permitted the Respondent to register a domain name incorporating the Complainant’s trademark. Furthermore the Respondent does not appear to be commonly known by the disputed domain name and there is no evidence that might support such finding. Thus the Complainant presented a prima facie case that the Respondent lacks rights or legitimate interests. See for a similar finding Pet Plan Ltd v. Corner Store BV, WIPOCase No. DEU2018-0027.
By not filing a response, the Respondent did not challenge the arguments of the Complainant included in the Complaint nor did it provide any evidence that might prove the Respondent’s rights or legitimate interests to the disputed domain name. The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the second element of Paragraph B(11)(d)(1) of the ADR Rules is therefore satisfied.
C. Registered or Used in Bad Faith
For purposes of Paragraph B11(d)(1)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, may be evidence of the registration or use of a domain name in bad faith:
(1) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name to the holder of a name, in respect of which a right is recognized or established by national and/or Community law, or to a public body; or
(2) the domain name has been registered in order to prevent the holder of such a name in respect of which a right is recognized or established by national and/or Community law, or a public body, from reflecting this name in a corresponding domain name, provided that:
(i) the Respondent has engaged in a pattern of such conduct; or
(ii) the domain name has not been used in a relevant way for at least two years from the date of registration; or
(iii) there are circumstances where, at the time the ADR Proceeding was initiated, the Respondent has declared its intention to use the domain name, in respect of which a right is recognized or established by national and/or Community law or which corresponds to the name of a public body, in a relevant way but failed to do so within six months of the day on which the ADR Proceeding was initiated;
(3) the domain name was registered primarily for the purpose of disrupting the professional activities of a competitor; or
(4) the domain name was intentionally used to attract Internet users, for commercial gain to the Respondent’s website or other on-line location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and/or Community law, or it is a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent; or
(5) the domain name is a personal name for which no demonstrable link exists between the Respondent and the domain name registered.
Although the second element of Paragraph B(11)(d)(1) of the ADR Rules is satisfied, the Panel will make the following findings regarding the third element, i.e. registration and/or use of the disputed domain name in bad faith.
The Complainant started to use the name “Chatroulette” for its business and registered the corresponding trademarks well before the registration of the disputed domain name. Furthermore, the Panel considers the innovative and distinctive nature of the Complainant’s trademark, the fact that the disputed domain contains the entire trademark only with an addition of a hyphen and a dictionary term, as well as the extensive use of the Chatroulette website and services by the Internet users and its worldwide exposure. Therefore, it seems likely that the Respondent knew or should have known about the existence of the Complainant’s trademarks when registering the disputed domain name. When considering all these circumstances, it seems more likely than not that the registration of the disputed domain name was done with full knowledge of the Complainant.
Furthermore, bad faith is indicated also by the fact that the disputed domain name was used for commercial purposes and to create potential revenue for the Respondent, as the website published under the disputed domain name contains pay-per-click links, some of them directing to websites that are clearly competing with the Complainant’s business. Similarly, an indicator of bad faith is the fact that the Respondent clearly offers the disputed domain name for sale (see also, Papa John’s International, Inc. and Papa John’s (GB) Limited v. Irma Norberg, WIPO Case No. DEU2018-0013.)
In accordance with section 3.1.2. of the WIPO Overview 3.0, “UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner.” It is clear from the presented evidence that the Respondent has already been ordered to transfer a trademark abusive domain name by a decision issued in the case of Carrefour v. Manager Limited Domain /Maria Di Blasi, WIPO Case No. DEU2018-0014, which represents another indicator of bad faith on the part of the Respondent.
When considering all the facts and evidence presented by the Complainant and also the failure of the Respondent to challenge the Complainant’s submissions by not filing a response, the Panel finds that the disputed domain name has been registered and is being used in bad faith and accordingly also the third element of Paragraph B(11)(d)(1) of the ADR Rules is satisfied.
7. Decision
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name, <chatroulette-gay.eu> be transferred to the Complainant 2 .
Mgr. Peter Kružliak
Sole Panelist
Date: March 5, 2019
1 Given the similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) the Panel will, where applicable, refer to UDRP jurisprudence.