WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Bogdan Tsisar/privat person

Case No. D2017-2589

1. The Parties

The Complainant is Andrey Ternovskiy dba Chatroulette of Moscow, Russian Federation, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Bogdan Tsisar/privat person of Lviv, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <vchatroulette.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 December 27, 2017. On December 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 10, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On January 10, 2018, the Center notified the Parties in both English and Russian that the language of the registration agreement for the Disputed Domain Name is Russian. On January 11, 2018, the Complainant requested for English to be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint and 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 of the Complaint, and the proceedings commenced on January 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2018.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on February 26, 2018. 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.

4. Factual Background

The Complainant is Andrey Ternovskiy dba Chatroulette, who created an online chat website at the address “www.chatroulette.com”, pairing random people from around the world together for real-time, webcam-based conversations. Since its launch in 2009, the Complainant has become increasingly popular, with a monthly average of around 260,000 unique visitors in the 13-month period from August 2015 to August 2016, earning a website popularity rank of 12,967, according to the statistics Compete.com. In the second half of 2017, total visits to the website were over 4 million.

The Complainant is the owner of the domain name <chatroulette.com>, which was registered on November 16, 2009. In addition, he also owns various trademark registrations for CHATROULETTE, including Russian Federation Registration No. 429957 dated February 10, 2011, the European Union Registration No. 008944076 dated December 4, 2018, German Registration No. 3020100037 dated February 21, 2013 and the US Registration No. 4445843 dated December 10, 2013.

The Disputed Domain Name <vchatroulette.com> was registered on March 23, 2015 and is used with a competing online chat website.

On May 26, 2017, the Complainant sent a Cease and Desist Letter to the Respondent, asking for the transfer of the Disputed Domain Name. In the response on November 16, 2017, the Respondent denied any wrongdoing and offered to sell the Disputed Domain Name for USD 1,500.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant argues that by virtue of its trademark registrations, the Complainant has the exclusive ownership and use of the CHATROULETTE trademarks.

The Complainant asserts that when comparing the Disputed Domain Name to the Complainant’s trademarks, it is a standard practice not to take the extension (“.com” in this case) into account.

Furthermore, the Disputed Domain Name is a purposeful misspelling of the Complainant’s CHATROULETTE trademark and must be considered confusingly similar to the Complainant’s trademark. The Disputed Domain Name varies from the Complainant’s trademark by only one letter “v” at the beginning of the Complainant’s CHATROULETTE trademark.

As the Disputed Domain Name differs from the Complainant’s trademark by just one letter, the Disputed Domain Name must be considered a prototypical example of typo squatting. The Disputed Domain Name must be considered confusingly similar to the Complainant’s CHATROULETTE trademark in that it is similar to such trademark in both sight and sound. Additionally, the Respondent is using the Disputed Domain Name to offer an online web chat service, which suggests that the Respondent intended the Disputed Domain Name to be confusingly similar to the Complainant’s trademark as a means of furthering consumer confusion.

Therefore, the Disputed Domain Name is confusingly similar to the trademarks in which the Complainant has rights.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled.

First, the granting of registrations by the Russian Federal Service for Intellectual Property (ROSPATENT), the European Union Intellectual Property Office (EUIPO), the German Patent and Trade Mark Office (DPMA) and the United States Patent and Trademark Office (USPTO) to the Complainant for the CHATROULETTE trademark is prima facie evidence of the validity of the term “chatroulette” as a trademark, of the Complainant’s ownership of this trademark, and of the Complainant’s exclusive right to use the CHATROULETTE trademark in commerce on or in connection with the goods and/or services specified in the registration certificates.

Second, the Complainant asserts that the Respondent has not been authorized by the Complainant to register the Disputed Domain Name or to use its trademark within the Disputed Domain Name, nor is the Respondent commonly known by the Disputed Domain Name.

Third, the Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial fair use of the Disputed Domain Name. On the website available at the Disputed Domain Name, the Respondent offers an online web chat service, which directly competes with the Complainant’s own offerings.

Finally, The Respondent registered the Disputed Domain Name on March 23, 2015, which is significantly after the Complainant filed for registration of its CHATROULETTE trademark, and also after the Complainant’s first use in commerce of its trademark in 2009 and the Complainant’s registration of its <chatroulette.com> domain name on November 16, 2009.

Under these circumstances, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant and its CHATROULETTE trademark are known internationally, with trademark registrations for CHATROULETTE across numerous countries. The Complainant registered its <chatroulette.com> domain name on November 16, 2009 and established its service and website very shortly thereafter, well before the Respondent’s registration of the Disputed Domain Name on March 23, 2015.

At the time of registration of the Disputed Domain name, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks and that registration of the Disputed Domain Name containing well-known trademark constitutes bad faith per se.

The Complainant argues that by registering the Disputed Domain Name that captures, in its entirety, Complainant’s CHATROULETTE trademark and simply adds the letter “v” to the beginning of the trademark, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark, as well as its <chatroulette.com> domain name. As such, the Respondent intents 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 Respondent’s own pecuniary gain.

The Complainant further states that the Respondent’s use of the Disputed Domain Name for online web chat service constitutes a disruption of the Complainant’s business and therefore qualifies as bad faith registration and use.

Also, the Respondent failure to positively respond to the Complainant’s cease and desist letter is an indication of bad faith registration and use.

These factors establish that the Respondent registered and is using the Disputed Domain Name in bad faith.

On this basis, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Procedural Issues

Language of the Proceeding

The Complaint was filed in English on December 27, 2017. On January 10, 2018, the Registrar informed that the language of the Registration Agreement is Russian, and the Center invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) a translation of the Complaint in Russian, or (iii) a substantiated request for English to be the language of the proceeding; and invited the Respondent to comment on the language of the proceeding.

On January 11, 2018, the Complainant sent the Center an email enclosing the amended UDRP Complaint, in the section “Language of Proceedings” of which, the Complainant requested for English to be the language of the proceeding. The Respondent did not give any comments on this issue.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the 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.

Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, .g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).

In the present case, in consideration of the circumstances of the proceeding, including, but not limited to:

(i) the representative of the Complainant is a Swedish firm, who does not appear to be able to communicate in Russian, and therefore, if the Complainant was required to have the documents translated into Russian, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; and

(ii) The Disputed Domain Name is comprised of Latin characters and the content of the website under the Disputed Domain Name is partially in English; further, the Respondent did reply to the cease and desist letter and other correspondences, which were issued by the representative of the Complainant in English; all of these suggest the Respondent have ample knowledge and be familiar with the English language; For the purpose of easy comprehension of the Complainant (the only party actively taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.

The Respondent’s Failure to Respond

The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inference from the Respondent’s default.

In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each of the following three elements are present:

(i) the Disputed Domain Name registered by the Respondent 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 Disputed Domain Name has been registered and is being used in bad faith.

B. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.

Firstly, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to CHATROULETTE. Also, the Complainant has sufficiently demonstrated and evidenced that it had extensively used its trademark for its commercial activities, particularly for providing online video chat services and online and video social introduction and networking services on a worldwide basis. The trademark CHATROULETTE and its associated online chat platform at “www.chatroulette.com” is widely-known around the world.

Secondly, the Disputed Domain Name comprises the Complainant’s distinctive and widely-known CHATROULETTE mark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the letter “v” at the beginning of the word.

Previous UDRP panels have held that minor alterations cannot prevent a finding of confusing similarity between the trademark and the domain name (see, e.g., Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035). In the subject case, since the letter “v” itself has no inherent distinctiveness, the Panel finds that “chatroulette” remains the dominant element in the Disputed Domain Name. It is well established that the addition of an indistinctive element to a trademark does not prevent confusing similarity. Thus, in the Panel’s view, the addition of the said letter “v” at the beginning of the word does nothing to distinguish the Disputed Domain Name from the trademark, nor to dispel confusing similarity.

Thirdly, the Panel finds, similarly to other prior UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for the first element purpose (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008).

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s CHATROULETTE trademark, and the first element under paragraph 4(a)(i) of the Policy is established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent and there is no evidence that the Respondent holds such rights. Thus, the Respondent has no rights in the trademark CHATROULETTE.

The Panel further finds that the Respondent was using the Disputed Domain Name for an online web chat service, which directly competes against the Complainant. Similar to other panels, the Panel is of the view that providing services in the same business, using a domain name confusingly similar to the trademark and domain name of others, cannot be considered a bona fide offering (see, e.g., America Online, Inc. v.Xianfeng Fu, WIPO Case No. D2000-1374).

Moreover, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name.

The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the trademark and had an intention to gain profit by riding on the good reputation of the Complainant.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The second element under paragraph 4(a)(ii) of the Policy is established.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(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 website 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.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.

The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.

The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s CHATROULETTE trademark has been registered in a variety of countries.

Besides functioning as the home mark of the Complainant, “Chatroulette” is being used in the Complainant’s trade name, and domain name <chatroulette.com>, which all well predate the registration of the Disputed Domain Name. In the Panel’s view, CHATROULETTE is inherently distinctive, and devoid of meaning other than the services of the Complainant.

The Disputed Domain Name comprises the CHATROULETTE trademark in its entirety, adding only the indistinctive character “v” at the beginning of the word. The Disputed Domain Name is also used for an online chat platform, which is the same business as that of the Complainant.

These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. Given the use of the Disputed Domain Name, the Respondent obviously knew of the Complainant and its CHATROULETTE trademark when he registered the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.

It is well proved and evidenced by the Complainant that by the date, on which the Complaint was filed, the website under the Disputed Domain Name had been used for providing the online chat service, which directly competed against that of the Complainant. On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it is redirected to another webpage, but the business of providing an online chat platform remains unchanged. As such, the Respondent’s subsequent re-direction of the Disputed Domain Name does not alter the Panel’s finding.

With the said facts, the Panel finds that the Respondent intentionally registered and used the Disputed Domain Name for commercial gain and that the Respondent’s actual use of the Disputed Domain Name appears to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.
In addition, the Panel notes the fact that the Respondent, in response to the Complainant’s Cease and Desist letter on May 26, 2017, denied its wrong doings and offered for sale of the Disputed Domain Name for USD 1,500. Such a denial and offer for sale are indicative fact of bad faith in the Panel’s view.

Moreover, the Respondent is continuing the use of the Disputed Domain Name to resolve, directly or indirectly through another domain name, to an active online chat website until now. This is a further indication of the Respondent’s bad faith and its intention to capitalize on the reputation and goodwill of the Complainant’s trademark even after the Respondent was informed by the Complainant under the cease and desist letter and by the Center by its notifications and written notice.

Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established.

7. Decision

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, <vchatroulette.com>, be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: March 9, 2018