WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Proceeding
Case No. DSE2018-0018
The Petitioner is A. T. dba Chatroulette of Malta, represented by CSC Digital Brand Services AB, Sweden.
2. Domain Holder
The Domain Holder is M. K. of Sweden.
3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to the domain name <chatroulette.se> (the “disputed domain name”).
This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”).
The WIPO Arbitration and Mediation Center (“the Center”) verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on April 13, 2018. The Domain Holder submitted a response on May 13, 2018.
The Center appointed Jan Rosén as the sole Arbitrator in this matter on May 23, 2018. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules.
4. Factual Background
The Petitioner is the owner of trademark registrations for CHATROULETTE across various jurisdictions in relation to an online chat website. In particular, what is of specific interest here, the Petitioner owns the European Union trademark registration numbers 0089440076 (filed on March 10, 2010, and registered on December 4, 2012), and 008946352 (filed on March 11, 2010, and registered on August 19, 2012), both for services in classes 35, 38 and 42. In addition, the Petitioner owns trademarks in the United States of America (“United States”) by its Patent and Trademark Office (USPTO), and in Germany as registered by the German Patent and Trademark Office (DPMA).
The Petitioner’s domain name <chatroulette.com> was registered on November 16, 2009, and the website, at the domain name was launched the same month. “Chatroulette” is an online chat website that pairs random people from around the world together for real-time, webcam-based conversations.
The disputed domain name <chatroulette.se> was registered on December 3, 2009, which is shortly after the filing date of the Petitioner’s trademarks as well as the registration date for the Petitioner’s domain name <chatroulette.com>. The disputed domain name resolves to a website offering online chat services.
The Petitioner claims that the disputed domain name <chatroulette.se> shall be transferred to the Petitioner.
6. Parties’ Contentions
Chatroulette is an online chat website that pairs random people from around the world together for real-time, webcam-based conversations. Based on this stated purpose, as well as the goods and services descriptions associated with the Petitioner’s trademark registrations, Chatroulette is associated with online video chat services and online video social introduction and networking services. The website received some 500 visitors per day very shortly after its launch, raising to 50.000 visitors per day by January 2010 and has for the past six months an estimated traffic of 4.06 million visitors.
As concerns the issue if the disputed domain name is identical or confusingly similar to the Petitioner’s trademarks, the Petitioner notes its extensive and continuous use of the CHATROULETTE trademarks, and observes the fact that the Petitioner has made significant investments over the years to promote and protect these trademarks and the Chatroulette business across the Internet and the world. All this demonstrates that the Petitioner enjoys a substantial degree of public recognition in CHATROULETTE and has seen this mark become uniquely and distinctly associated with the Petitioner. As shown, the Petitioner is the owner of the said trademarks in the European Union, United States and Germany.
The disputed domain name contains the Petitioner’s CHATROULETTE trademark in its entirety, thus resulting in a domain name that is identical to the Petitioner’s CHATROULETTE trademark when excluding the “.se” Top-Level Domain (“TLD”). The disputed domain name should then be considered identical or at least confusingly similar to the Petitioner’s CHATROULETTE trademark.
As for registration and use of the disputed domain name in bad faith, it is claimed that it is not possible to conceive of a plausible situation in which the Domain Holder would have been unaware of the Petitioner’s brand at the time the disputed domain name was registered. This is due also to the immediate success of the Petitioner’s website “www.chatroulette.com” and its services. CHATROULETTE is so closely linked to and associated with the Petitioner that the Domain Holder’s use of this mark, or any minor variation of it, strongly implies bad faith, as the disputed domain name is so obviously connected with such a well-known name and its products. Its very use by someone with no connection with the products or services suggests opportunistic bad faith.
Also, the disputed domain name was registered shortly after the website “www.chatroulette.com” and its services were launched. Further, the Domain Holder’s use of the disputed domain name constitutes a disruption of the Petitioner’s business and qualifies as bad faith registration and use because the Domain Holder’s domain name is confusingly similar to the Petitioner’s trademark and the website at the disputed domain name features services similar to the Petitioner’s own services.
The Petitioner also tried to contact the Domain Holder through cease and desist letters sent by emails, whereby the Petitioner advised the Domain Holder that the unauthorized use of theCHATROULETTE trademark within the disputed domain name violated the Petitioner’s rights in the said trademark and requested voluntary transfer of the same. The Domain Holder replied and refused to transfer the disputed domain name to the Petitioner. The efforts of trying to solve the matter amicably were unsuccessful.
The Domain Holder has no rights or legitimate interests in the disputed domain name <chatroulette.se>. The CHATROULETTE trademark has no meaning in either Swedish or English – the term “chatroulette” is not a dictionary term, nor an idiomatic expression, and therefore as such has no linguistic meaning as it is understood by the .se Policy. This strongly implies that the Domain Holder’s registration was opportunistic and predatory in nature. The Domain Holder obviously registered and used the disputed domain name misleadingly to attract Internet users to its own website by misrepresenting an association with the Petitioner’s trademark. Indeed, misleading use of this nature does not give rise to any rights or legitimate interests on the part of the Domain Holder.
B. Domain Holder
The Domain Holder was notified of the Petitioner’s trademark CHATROULETTE via a letter from the Petitioner in February 2018, more than eight years after his registration of the disputed domain name. At the time of that registration he was not aware of any trademark called CHATROULETTE, and he later noticed that the Petitioner registered those trademarks after his registration of the disputed domain name. Therefore, he could not be in bad faith when registering <chatroulette.se>.
Both words “chat” and “roulette” are common words and existed long before the Petitioner started to use a combination of the words. Inspired already since 2008 by the random chat website “www.omegle.com”, he came to the idea of starting his own website of the same nature, and did so as of December 2009, under the disputed domain name. As he wanted mostly Nordic users to visit the website he had a barrier towards non−Nordic IP numbers. The word “chat” is used worldwide for online website services that pairs random people to talk on the Internet.
The Domain Holder says he has spent a lot of time and money on the website under the disputed domain name, and claims that for technical reasons the website now used under the disputed domain name is a temporary one and is about to be developed by use of other technologies.
7. Discussion and Findings
Section 7 of the .se Policy states that a domain name may be deregistered or transferred to the party requesting dispute resolution proceedings if the following three conditions are fulfilled:
(i) the domain name is identical or similar to:
a. a distinguishing product feature,
b. a distinguishing business feature,
c. a family name,
d. an artist’s name (if the name is not associated with someone who deceased a long time ago),
e. a title of another party’s copyrighted literary or artistic work,
f. a name that is protected by the Regulation concerning Certain Official Designations (1976:100),
g. a geographic designation or a designation of origin that is protected by the European Council’s Regulation (EU) 510/2006,
h. a geographic designation that is protected by the European Council’s Regulation (EU) 110/2008,
i. a geographic designation that is protected by the European Council’s Regulation (EU) 1234/2007, or
j. the name of a government authority that is listed in the registry that Statistics Sweden must maintain under the Swedish Code of Statutes SFS 2007:755 (Government Agencies Register Ordinance), or its generally accepted abbreviation, which is legally binding in Sweden and to which the party requesting dispute resolution can prove its rights; and
(ii) the domain name has been registered or used in bad faith; and
(iii) the domain holder has no rights or justified interest in the domain name.
A. The Domain Name is identical or similar to a trademark which is legally binding in Sweden and to which the Petitioner can prove its rights
The Petitioner is required to establish that the disputed domain name is identical or similar to, inter alia, a trademark in which the Petitioner has rights. The Arbitrator finds that the disputed domain name <chatroulette.se> is identical to the Petitioner’s European Union trademarks CHATROULETTE, which are legally binding in Sweden and to which the Petitioner can prove its rights (see Section 7.2.1 of the .se Policy).
B. The Domain Name has been registered or used in bad faith
Probably, the Domain Holder knew of the almost immediately famed website, ran by the Petitioner under the domain name <chatroulette.com>, already at the point of time of the registration of the disputed domain name. In particular as the Domain Holder has emphasized that he was interested in starting such a chat website of his own before the Petitioner’s website became active. However, it has not been demonstrated that the Petitioner already by then had a legally binding right in Sweden to the trademarks CHATROULETTE. However, pretty soon after the launch of the “www.chatroulette.com” website, relevant trademarks were filed in 2010 by the Petitioner and they probably very quickly became highly recognized in interested groupings worldwide. By the continuous use of the Petitioner’s website, the Domain Holder must have known of the CHATROULETTE trademarks and the website running the chat service under “www.chatroulette.com”, what does, according to the Arbitrator, demonstrate bad faith of the holder of the disputed domain name by that use. The Petitioner further finds that the use of the disputed domain name, identical to the Petitioner’s CHATROULETTE trademark, to offer services competing with those of the Petitioner, is additional evidence of bad faith.
C. The Domain Holder has no rights or justified interest in the Domain Name
Based on the record it seems that the Domain Holder’s main purpose with the disputed domain name has been to create a likelihood of confusion between it and “www.chatroulette.com” for financial gain by offering competing and identical services to those of the Petitioner. The Arbitrator thus finds that the Domain Holder has no right or justified interest in the disputed domain name (see Section 7.2.3 of the .se Policy).
For the foregoing reasons, in accordance with Section 21 of the .se Rules and Section 7.2 of the .se Policy, the Arbitrator orders that the disputed domain name <chatroulette.se> be transferred to the Petitioner.
Based on the record, the Arbitrator has found
- an identity between the disputed domain name and the Petitioner’s trademarks CHATROULETTE
- the Domain Holder to have used the disputed domain name in bad faith
- the Domain Holder not to have any right or justified interest in the disputed domain name
Date: June 19, 2018