WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Proceeding
Case No. DSE2018-0047
The Petitioner is A. T. dba Chatrouletteof Malta, 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 <chatrouletteens.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 July 31, 2018. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder's default on August 31, 2018.
The Center appointed Bengt Eliasson as the sole Arbitrator in this matter on September 17, 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, A. T. dba Chatroulette, is an online chat website that pairs random people from around the world together for real-time, webcam-based conversations. The Petitioner filed an application for Alternative Dispute Resolution for the disputed domain name <chatrouletteens.se> on July 25, 2018. The Domain Holder has been given an opportunity to submit a reply, but no reply has been filed by the Domain Holder within the given deadline.
The Petitioner created the Chatroulette service and website in 2009 when he was a high school student in Moscow, Russian Federation. Chatroulette very quickly established incredible popularity and a high-profile reputation. Shortly after its launch in November 2009, the Chatroulette website began to receive 500 visitors per day.
While continuing to experience consistent growth, and by January 2010, this figure had increased to 50,000 visitors per day (approximately 1.5 million users per month).
The Petitioner has invoked European Union trademark CHATROULETTE No 008944076 that was registered on December 4, 2012. The Petitioner is also the owner of the domain name <chatroulette.com>, registered on November 16, 2009.
The disputed domain name <chatrouletteens.se> was registered by the Domain Holder on March 15, 2018 and is today linked to a website featuring services similar to the Petitioner's business.
The Petitioner claims that the disputed domain name shall be transferred to the Petitioner.
6. Parties' Contentions
The Petitioner owns among other registrations the European trademark (EUTM) for CHATROULETTE, No. 008944076, which covers Sweden and contends that it is identical or confusingly similar to the disputed domain name <chatroulletteens.se>. Furthermore, the disputed domain name can be considered as capturing, in its entirety, Petitioner's CHATROULETTE trademark and simply adding the generic term "(te)ens" to the end of the trademark. The Domain Holder simply removed the repeating letters "t" and "e" when combining the two words "Chatroulette" and "teens". 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. The addition of the country code Top-Level Domain (ccTLD) ".se" does not change the overall impression of the designation as being connected to the trademark CHATROULETTE of the Petitioner.
In the instant case, the Domain Holder has been acting in bad faith based on the following reasons:
The Domain Holder registered the disputed domain name on March 15, 2018. This date falls significantly after the Petitioner first registered the CHATROULETTE trademark with the EUIPO and also just after Petitioner sent a cease and desist letter to the Domain Holder regarding a similar and related domain name <chatrouletteteen.se>. Obviously, it is the fame of the trademark that motivated the Domain Holder to register the disputed domain name. By registering a domain name that incorporates Petitioners' CHATROULETTE trademark along with the generic term "(te)ens", the Domain Holder has created a domain name that is confusingly similar to Petitioners' trademark. As such, the Domain Holder has demonstrated a knowledge of and familiarity with the Petitioners' brand and business.
Further, the disputed domain name resolves to a website which claims to be a "Swedish chatroulette alternative for teenagers". The Domain Holder's use of the disputed domain name constitutes a disruption of Petitioner's business and qualifies as bad faith registration and use, as the Domain Holder's domain name is confusingly similar to the Petitioner's trademark. In addition the website connected to the disputed domain name also 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's failure to provide an explanation of his choice of disputed domain name is also a strong indication of bad faith registration.
The Domain Holder is not sponsored by or affiliated with the Petitioner in any way. Petitioner has not given the Domain Holder permission to use the Petitioners' trademarks in any manner, including domain names. The Petitioner has not found that the Domain Holder has any registered trademarks or trade names corresponding to the disputed domain name. Further, the Petitioner has not found anything that would suggest that the Domain Holder has been using Chatroulette in any other way that would provide legitimate rights in either of the names. Consequently, the Domain Holder may not claim any rights established by common usage.
On the website connected to the disputed domain name, the Domain Holder offers and attempts to sell services, which directly compete with the Petitioner's own offerings. Past Panels have consistently held that selling competing goods or services, coupled with the unauthorized use of Petitioner's trademark in a confusingly similar domain name, does not qualify as a bona fide offering of goods or services. As such, the Domain Holder here should be held to possess no legitimate rights or interests in the disputed domain name.
B. Domain Holder
The Domain Holder has not filed any reply or comments to the Petition.
7. Discussion and Findings
A domain name may, in accordance with the .se Policy paragraph 7.2, be deregistered or transferred to the party requesting dispute resolution proceedings if all of the following three conditions are fulfilled:
1. The Domain Name is identical or similar to a name which is legally binding in Sweden and to which the party requesting dispute resolution can prove its rights, and
2. The Domain Name has been registered or used in bad faith, and
3. The Domain Holder has no rights or justified interest in the Domain Name.
All three conditions must be met in order for a petitioner to succeed in its action.
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 the owner of the EUTM No 008944076 CHATROULETTE (word), which is confusingly similar to the disputed domain name.
B. The Domain Name has been registered or used in bad faith
The Arbitrator concludes that the disputed domain name has been registered long after the registration of the Petitioner's trademark. The Petitioner has contended that the disputed domain name was registered for the purposes of preventing the Petitioner to register its trademark as a domain name and to increase his income. In the absence of any facts or comments in the case contradicting the claims presented by the Petitioner, it may be considered that the Domain Holder has registered and used the disputed domain name in bad faith.
C. The Domain Holder has no rights or justified interest in the Domain Name
The Domain Holder has not submitted any reply to the Petition and there is nothing else in the case stating that the Domain Holder has a right or justified interest in the disputed domain name. Linking of the disputed domain name to a website featuring services similar to Petitioner's services without presenting any consent or motives for such use is not sufficient for the Arbitrator to consider the Domain Holder to have any right or justified interest in the disputed domain name. The Arbitrator therefore concludes that the Domain Holder has no right or justified interest in the disputed domain name.
The disputed domain name <chatrouletteens.se> shall be transferred to the Petitioner.
The disputed domain name is confusingly similar to the Petitioner's registered trademark. The disputed domain name was registered shortly after the Petitioner sent a cease and desist letter to the Domain Holder regarding a similar and related domain name. Based on the record, the Arbitrator finds that the disputed domain name has been registered and used in bad faith. Furthermore, the Arbitrator concludes that the Domain Holder has no right or justified interest in the disputed domain name.
Date: October 7, 2018