WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Proceeding
Case No. DSE2018-0030
The Petitioner is A. T. dba Chatroulette ofMalta, represented by CSC Digital Brand Services AB, Sweden.
2. Domain Holder
The Domain Holder is M. S. of Denmark.
3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to the domain name <chatrouletteen.se>.
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 May 24, 2018. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder’s default on June 25, 2018.
The Center appointed Peter Hedberg as the sole Arbitrator in this matter on July 11, 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 holder of inter alia the European Union (EU) trademark No. 008944076 CHATROULETTE, registered on December 4, 2012, for services in international classes 35, 38 and 42.
The Domain Holder is the holder of the domain name <chatrouletteen.se> registered on March 22, 2014.
The Petitioner has requested that the domain name <chatrouletteen.se> shall be transferred to the Petitioner.
The Domain Holder has been invited to respond to the Petition, but has not filed any answer.
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 EU, United States of America and Germany.
The disputed domain name contains the Petitioner’s CHATROULETTE trademark in its entirety and simply adding the generic term “(te)en” to the end of the trademark. Thus, the mere addition of this generic term to the Petitioner´s trademark does not negate the confusing similarity between the disputed domain name and the Petitioner´s 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.
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 disputed 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, which were unanswered by the Domain Holder.
The Domain Holder has no rights or legitimate interests in the disputed domain name <chatrouletteen.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 has not submitted any contentions.
7. Discussion and Findings
A. The Domain Name is identical or similar to a name 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 <chatrouletteen.se> is highly similar the Petitioner’s EU trademarks CHATROULETTE.
B. The Domain Name has been registered or used in bad faith
The Domain Holder has not responded to the Petitioner’s contentions and the Arbitrator will decide in the matter based on what has been put forward in the case by the Petitioner.
The term “chatroulette” is not a generic term. It is a registered trademark by the Petitioner and the Domain Holder is not the known owner of any trademarks or tradenames that correspond to the said term. It is a fact that the Petitioner launched a very successful online chat service in 2009. The Arbitrator finds it unlikely that the Domain Holder registered a very similar name, for a very similar service, five years later with no knowledge of the website <chatroulette.com>. The service of the Domain Holder is stated to be a “Swedish chatroulette alternative for teenagers” and this statement is actually implying that the service linked to <chatrouletteen.se> will be an alternative to the Petitioner’s chat service.
The Domain Holder has been given the opportunity to file his explanations and arguments in the matter, but has failed to do so. In absence of any plausible arguments in favor of the Domain Holder, the Arbitrator finds that the Domain Holder has registered and used the Domain Name for utilizing the good reputation, market position and characteristic feature of the Petitioner to attract traffic to his own website and to increase revenue in this manner.
C. The Domain Holder has no rights or justified interest in the Domain Name.
The Domain Holder has been given the opportunity to file his contentions in the matter, but has failed to do so. In absence of any plausible arguments in favor of the Domain Holder, the Arbitrator finds that the Domain Holder has no rights or justified interests in the Domain Name.
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 <chatrouletteen.se> shall be transferred to the Petitioner.
Based on the record, the Arbitrator has found
- a similarity between the disputed domain name and the Petitioner’s trademarks CHATROULETTE
- the Domain Holder to have registered and 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: August 7, 2018