WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Liu Li Jie
Case No. D2018-0265
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Liu Li Jie of Qing Dao, Shang Dong, China.
2. The Domain Name and Registrar
The disputed domain name <www-chatroulette-com.info> is registered with West263 International Limited (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on February 7, 2018. On February 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 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 February 9, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On February 12, 2018, the Complainant submitted an amended Complaint including a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with 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 Chinese, of the Complaint, and the proceedings commenced on February 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 12, 2018.
The Center appointed Francine Tan as the sole panelist in this matter on March 15, 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 the owner of trade mark registrations for the word CHATROULETTE in various jurisdictions including in China (Trade Mark Registration Nos. 8126890, registered on May 7, 2011; and 8126891, registered on July 28, 2011), the European Union (Trade Mark Registration No. 008944076, registered on December 4, 2012), and the United States of America (Trade Mark Registration No. 4445843, registered on December 10, 2013).
The Complainant's CHATROULETTE mark is used in relation to an online video chat service that pairs random people from around the world together for real-time, webcam-based conversations for social introduction and networking purposes. The Complainant's business started in 2009 when he was a highschool student in Moscow, Russian Federation. According to the Complainant, the Chatroulette website very quickly gained popularity after it was launched; within a month, it had a visitor traffic increase of 10,000 percent.
The Complainant has been featured in and highlighted by numerous publications and media outlets including The New York Times and The New Yorker, as well as on television shows including Good Morning America and The Daily Show with John Stewart.
The Complainant's website at "www.chatroulette.com" averaged over 260,000 unique visitors in the 13‑month period of August 2015 - August 2016. In January 2018, the website had about 421,000 unique visitors.
The disputed domain name was registered on April 28, 2017. It resolves to a website which features adult content.
5. Parties' Contentions
The disputed domain name is confusingly similar to the Complainant's CHATROULETTE trade mark as it captures the said trade mark in its entirety. The only difference lies in the addition of the terms "www" and "com" which does not negate the confusing similarity with the Complainant's CHATROULETTE trade mark.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. Neither has the Respondent been licensed, authorised or permitted by the Complainant to register a domain name incorporating the Complainant's CHATROULETTE trade mark. The Respondent's use of the disputed domain name for a website featuring pornographic content does not constitute a bona fide offering of goods or services. Furthermore, the disputed domain name was registered long after the Complainant first used the CHATROULETTE trade mark in 2009 and long after the Complainant registered its <chatroulette.com> domain name in November 16, 2009.
The disputed domain name was registered and is being used in bad faith. At the time the Respondent registered the disputed domain name, it knew, or at least should have known, of the existence of the Complainant's well-known trade mark CHATROULETTE. The CHATROULETTE term is so closely linked to and associated with the Complainant that the Respondent's use of the word "chatroulette" in the disputed domain name strongly implies bad faith. The Respondent's use of the disputed domain name containing the Complainant's trade mark to direct unsuspecting Internet users to adult content is evidence of bad faith registration and use thereof. It is more likely than not that the Respondent targeted the Complainant's CHATROULETTE trade mark.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
The Complainant requested, notwithstanding that the Registration Agreement is in Chinese, for the language of the proceeding to be English. He argued that (i) he was unable to communicate in Chinese and a translation of the Complaint into Chinese would delay the proceeding and be a burden on him; (ii) the disputed domain name comprises Latin characters; (iii) the term "chatroulette", which is the dominant part of the disputed domain name, does not carry any specific meaning in the Chinese language; and (iv) the Respondent never responded to the Complainant's cease and desist letters by way of asking that communications be made in Chinese.
The Respondent did not respond on the issue of the language of the proceeding.
Paragraph 11(a) of the Rules provides that "[u]nless otherwise agreed by the Parties, or specified otherwise 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". Paragraph 10(c) of the Rules stipulates that "[t]he Panel shall ensure that the administrative proceeding takes place with due expedition."
The Panel determines in this case that it would be appropriate for English to apply as the language of the proceeding, taking into account the nature and composition of the words making up the disputed domain name. The words "chat" and "roulette" are English terms, and the generic Top-Level Domain ("gTLD") ".info" is from the English-language sphere. The Panel is persuaded that the Respondent is sufficiently familiar with the English language, which affected its choice of registering the disputed domain name. If the Respondent had any genuine concern or valid objection in this regard, it could have brought this up to the Center. However, it did not and neither did it respond to the proceeding in Chinese. Requiring the Complainant to have the Complaint and annexes translated into Chinese would undoubtedly lead to a delay in the proceeding, and the Panel finds no merit for such a burden to be placed on the Complainant in this case.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Complainant has met the requirement of showing he has rights in the trade mark CHATROULETTE. The trade mark is identifiable and has been incorporated in its entirety within the disputed domain name. The addition of the elements "www-" and "-com" do not serve to remove the confusing similarity with the Complainant's CHATROULETTE trade mark. The gTLD ".info" is a necessary technical feature of domain names and is not a point of consideration when evaluating whether the disputed domain name is identical or confusingly similar to the Complainant's trade mark.
The Panel therefore finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant did not authorize the Respondent to use the CHATROULETTE trade mark or to register the disputed domain name. There is no evidence that the Respondent has been known by the name "Chatroulette", or that there have been demonstrable preparations by the Respondent to use the disputed domain name in connection with a bona fide offering of goods or services. In the Panel's view, it would be rather difficult for the Respondent to be able to assert any right or legitimate interest in the disputed domain name when one considers the fame of the Complainant's CHATROULETTE website and the fact that it is rather inconceivable that the Respondent, being on the face of it Chinese and located in China, would have been able, by pure coincidence, to devise the term "chatroulette" without reference to the Complainant. The Respondent's webpage to which the disputed domain name resolves does not provide any basis for believing that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
In the absence of any evidence to the contrary by the Respondent, the Panel finds that the Respondent was well aware of the Complainant and/or his CHATROULETTE trade mark at the time it registered the disputed domain name. In fact, the Complainant's trade mark appears to have been specifically targeted by the Respondent. There is no conceivable reason why the Respondent had chosen the disputed domain name but for bad faith reasons, namely to capture Internet traffic and to redirect Internet users looking for the Complainant's website to the Respondent's website.
Such use of the disputed domain name constitutes bad faith registration and use. The Panel notes the panel's words in Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860, that:
"such conduct of the Respondent, given that the Domain Name itself has no pornographic or erotic connotations, evinces an intention to either attract the attention of the Complainant, disrupt the Complainant's business, or to damage the Complainant's reputation. The Panel does not have enough evidence before it to determine which of these motivations was held by the Respondent. However, the Panel is satisfied that whatever the motivation of the Respondent, the diversion of the Domain Name to a pornographic site and the subsequent random diversions to sites unrelated to the Respondent, are certainly consistent with the finding in the previous paragraph that the Domain Name was registered and is being used in bad faith."
Further, in V&S Vin & Sprit AB v. VCN – Whois Protection Service Panama, WIPO Case No. D2010-0715, the panel stated that:
"by fully incorporating the ABSOLUT-Marks into the disputed domain name and by using the website at such domain name in connection with a commercial website providing pornographic content, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for commercial gain, which constitutes bad faith under paragraph 4(b)(iv) of the Policy. Furthermore, the fact that a respondent has used a well-known trade mark in connection with a pornographic website has been held to amount to registration and use in bad faith by previous panels (cf. National Spiritual Assembly of the Bahá'ís v. Buy This Name, WIPO Case No. D2001-1302; America Online, Inc v. East Coast Exotics, WIPO Case No. D2001-0661; America Online, Inc v. Viper, WIPO Case No. D2000-1198)."
The Panel finds that the same can be said about the Respondent's actions in this case.
The Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.
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 <www-chatroulette-com.info> be transferred to the Complainant.
Date: March 16, 2018