WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Artem Kravcov / Protection of Private Person
Case No. D2017-0416
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Moscow, Russian Federation, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Artem Kravcov of Cherkasy, Ukraine / Protection of Private Person of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <chatroulette-worldwide.com> is registered with Registrar of Domain Names REG.RU LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 1, 2017. On March 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2017, 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, and informed the Center that the language of the registration agreement for the disputed domain name was Russian. The Center sent an email communication to the Complainant on March 13, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center invited the Parties to submit their comments on the language of the proceeding. The Complainant filed an amended Complaint on March 14, 2017 and requested the language of the proceeding to be English. The Respondent did not submit any comments on the language of the proceeding.
The Center verified that 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 Russian of the Complaint, and the proceedings commenced on March 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 12, 2017.
The Center appointed Assen Alexiev as the sole panelist in this matter on April 25, 2017. 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.
In respect of the language of the proceeding, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or otherwise specified in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant has submitted its Complaint in the English language, and requests that the proceeding be held in English on the grounds of fairness and the expeditious resolution of the dispute. The Complainant notes that it is unable to communicate in Russian and that the translation of the Complaint would unfairly disadvantage and burden the Complainant and will delay the proceedings. The Complainant further points out that the website at the disputed domain name is presented in English. The Center has invited the Respondent, in both English and Russian, to state its position on the language of the proceeding, but the Respondent has not submitted any comments on this issue.
In view of the above, the Panel is prepared to accept that using the English language in this proceeding will be fair and efficient and will not put either of the Parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding be English. At the same time, the Panel will review and take into account all relevant evidence that is available in this case in either Russian or English.
4. Factual Background
In 2009, the Complainant Andrey Ternovskiy created the online chat website Chatroulette, which pairs random people from around the world together for real time, webcam based conversations, and provides online video chat services and online video social introduction and networking services. The Complainant created the name "Chatroulette" by combining the term "chat" (one of the core services offered by the Complainant's website), with the word "roulette", which is associated with the thrill of unpredictability. Very shortly after its launch, the Chatroulette website began to receive 500 visitors per day while continuing to experience consistent growth, and only one month later in January 2010, this figure had increased to 50,000 visitors per day (approximately 1.5 million users per month). In February 2010, the traffic increased to approximately 130,000 visitors per day (3.9 million monthly visitors).
The Complainant owns a number of trademark registrations for the sign CHATROULETTE around the world, including the following registrations (the "CHATROULETTE trademark"):
- The European Union trademark CHATROULETTE with registration No. 008944076, registered on December 4, 2012, covering services in International Classes 35, 38 and 42;
- The German trademark CHATROULETTE with registration No. 3020100037067, registered on February 21, 2013, covering services in International Classes 35, 38 and 42;
- The United States trademark CHATROULETTE with registration No. 4,445,843, registered on December 10, 2013, covering services in International Classes 38 and 45.
The Complainant operates its official website at the domain name <chatroulette.com>, which was registered on November 16, 2009.
The disputed domain name was registered on June 24, 2015. At the time of filing of the Complaint, the disputed domain name resolved to a website with competing services – webcam chatting.
5. Parties' Contentions
The Complainant submits that the disputed domain name is confusingly similar to the CHATROULETTE trademark in which the Complainant has rights. The disputed domain name captures the CHATROULETTE trademark in its entirety with the addition of the generic term "worldwide". The addition of this generic term to the CHATROULETTE trademark does not negate the confusing similarity between the disputed domain name and the trademark. The Respondent is using the disputed domain name to direct users to a website which offers live online video and chat services, which increases the risk of consumer confusion.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant, and the Complainant has not given the Respondent permission to use the Complainant's trademarks in any manner, including in domain name. The Respondent is not commonly known by the disputed domain name, as the Internic WhoIs database information identifies him as Artem Kravcov. The Respondent is not making a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed domain name. The website at the disputed domain name offers online video chat services and online video social interaction and networking services, which directly competes with the Complainant's own offerings. The selling of competing goods, coupled with the unauthorized use of a complainant's trademark in a confusingly similar domain name, does not qualify as a bona fide offering of goods or services under the Policy.
According to the Complainant, the disputed domain name was registered and is being used in bad faith. The Complainant registered its <chatroulette.com> domain name on November 16, 2009 and established its Chatroulette service and website shortly thereafter, while the Respondent registered the disputed domain name only in 2015.
The Complainant points out that at the time of registration of the disputed domain name, the Respondent is likely to have known of and to have targeted the Complainant's trademark, as the Complainant's website generates substantial web traffic. According to Compete.com statistics, the Chatroulette website averaged over 260,000 unique monthly visitors in the 13-month period August 2015 – August 2016.
In the Complainant's submission, the Respondent's use of the disputed domain name constitutes a disruption of Complainant's business and qualifies as bad faith registration and use, because the disputed domain name is confusingly similar to the CHATROULETTE trademark and the associated website features content which directly competes with the Complainant's business of providing online video chat services and online video social interaction and networking services.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(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 Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…" In the event of a default, under the Rules, paragraph (14)(b): "[…] the Panel shall draw such inferences therefrom as it considers appropriate."
As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004: "Here, the potential evidence of good faith registration and use was in respondent's control. Respondent's failure to present any such evidence or to deny complainant's allegations allows an inference that the evidence would not have been favorable to respondent."
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the CHATROULETTE trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain ("gTLD") section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the ".com" part of the disputed domain name.
Therefore, the relevant part of the disputed domain name that has to be examined is its "chatroulette-worldwide" section. This section of the disputed domain name is confusingly similar to the distinctive CHATROULETTE trademark, as the only difference is the addition in the disputed domain name of the non-distinctive word "worldwide", which does not eliminate the confusing similarity, but rather creates the appearance that the disputed domain name is related to the worldwide offering of services under the CHATROULETTE trademark.
Taking the above into account, the Panel finds that the disputed domain name is confusingly similar to the CHATROULETTE trademark, in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not affiliated to the Complainant and is not authorized to use the CHATROULETTE trademark or to seek registration of any domain name incorporating this trademark. The Complainant has further pointed out that the registration of CHATROULETTE trademark predates the registration of the disputed domain name for years, and that the Respondent does not use the disputed domain name in connection to a bona fide offering of goods or services as it resolves to a website that offers services that compete with those offered by the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not taken any position on the contentions of the Complainant or made any allegations relevant to the issue of rights and legitimate interests.
The disputed domain name incorporates the distinctive CHATROULETTE trademark, which was registered several years earlier. The website at the disputed domain name competes with the Complainant's website. These circumstances lead the Panel to reach a conclusion that the Respondent is likely to have been well aware of the business of the Complainant and to have intended to exploit the popularity of the CHATROULETTE website to attract the attention of Internet users when it chose to register the disputed domain name. In the Panel's view, such conduct cannot be regarded as giving rise to rights and legitimate interests of the Respondent. Therefore, the Panel finds that the Complainant's prima facie case has not been rebutted, and that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
The facts of this case show that the disputed domain name is likely to have been registered with knowledge of the reputation of the Complainant's services offered under the CHATROULETTE trademark, which at that point in time had been active for several years. In this situation, the Respondent is likely to have registered the disputed domain name in view of its attractiveness to consumers, while at the same time not having obtained an authorization from the Complainant for the registration. This conclusion supports a finding that the Respondent has registered the disputed domain name in bad faith.
The disputed domain name resolves to a website that directly competes with the Complainant by offering the same services to Internet users. This may confuse Internet users and attract them to the Respondent's website, thus affecting the Complainant's reputation and disrupting the Complainant's business, which supports a finding that the Respondent uses the disputed domain name is bad faith under Policy, paragraph 4(b) (iii) and (iv).
On the basis of all the above the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <chatroulette-worldwide.com> be transferred to the Complainant.
Date: May 16, 2017