WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Sergey Kurguzenkov, Kurguzenkov S.V.
Case No. D2018-0061
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 Sergey Kurguzenkov, Kurguzenkov S.V. of Uman, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <ru-chatroulette.online> (the “Domain Name”) is registered with REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2018. On January 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 12, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 12, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center sent an email communication to the Parties in English and Russian on the same day regarding the language of the proceeding, and invited the Complainant to respond by January 15, 2018 and the Respondent to respond by January 17, 2018. On January 17, 2018, the Complainant filed an amended Complaint that included in section IV its request for the language of proceedings to be in English. 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 of the Complaint, and the proceedings commenced on January 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2018. Due to an administrative oversight regarding the notification of the Complaint, the due date for submission of a Response was extended to February 23, 2018. The Respondent did not submit any communications to the Center.
The Center appointed Olga Zalomiy as the sole panelist in this matter on March 7, 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 creator of an online chat website that pairs random people from around the world together for real-time, webcam-based conversations. Since 2009 the Complainant has owned the domain name <chatroulette.com>, which directs to the website “www.chatroulette.com”.
The Complainant owns multiple trademark registrations for the CHATROULETTE trademark, including the following:
- Russian Trademark Registration, No. 429957, registered on February 10, 2011;
- European Union Trade mark Registration, No. 8944076, registered on December 4, 2012;
- German Trademark Registration, No. 302010003706, registered on February 21, 2013;
- United States of America Trademark Registration, No. 4445843, registered on December 10, 2013.
The Respondent is a Ukrainian national, who registered the Domain Name on August 24, 2017. The Domain Name currently resolves to a website in Russian, which contains English capability, offering a webcam-based interactive user services.
The Complainant sent cease and desist letters to the Respondent on October 19, 2017 and October 30, 2017.
The Complainant and the Respondent were parties to a prior WIPO UDRP case decided on October 25, 2017; Andrey Ternovskiy dba Chatroulette v. Sergey Kurguzenkov, WIPO Case No. D2017-1468.
5. Parties’ Contentions
A. Complainant
The Complainant claims that he is the owner of the CHATROULETTE trademark registrations across various jurisdictions. The Complainant alleges that “Chatroulette”, which he created and owns, is an online chat website that pairs random people from around the world together for real-time, webcam-based conversations. The Complainant claims that he created “Chatoulette” in 2009 and has been using it consistently ever since. According to the Complainant, “Chatroulette” very quickly established incredible popularity and a high-profile reputation. By February 2010, the website enjoyed a 26,000 percent increase in traffic over the December 2009 figures. The Complainant contends that his website popularity has also been boosted by its appearance in the news and media, which confirms “Chatroulette’s” status and fame.
The Complainant alleges that the Domain Name is identical or confusingly similar to its CHATROULETTE trademark, which he owns by virtue of multiple trademark and service mark registrations across various jurisdictions. The Complainant claims that the Domain Name incorporates, in its entirety, the Complainant’s CHATROULETTE trademark. The Complainant argues that the mere addition of the geographically descriptive term “ru” and a hyphen to the Complainant’s trademark does not negate the confusing similarity between the Domain Name and the Complainant’s trademark. The Complainant contends that the Respondent’s use of the Domain Name contributes to the confusion because the Respondent is using the Domain Name to direct users to a website offering webcam based video interaction between users, which suggests that the Respondent intended the Domain Name to be confusingly similar to the Complainant’s mark. The Complainant claims that it is well established that the addition of generic or descriptive terms is not sufficient to overcome a finding of confusing similarity pursuant to the UDRP.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant alleges that the granting of registrations by the Russian Agency for Patents and Trademarks (“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 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 or in connection with the goods and/or services specified in the trademark registration certificates.
The Complainant alleges that the Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant claims that he has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. The Complainant further alleges that the Respondent is not commonly known by the Domain Name because the Respondent used privacy service to hide his identity at the registration of the Domain Name. In the Complainant’s view, this evinces a lack of rights or legitimate interests. The Complainant states that the Respondent is neither using the Domain Name in connection with a bona fide offering of goods or services, nor is making a legitimate noncommercial use of the Domain Name because the website connected to the Domain Name offers a service, which directly competes with the Complainant’s services. The Complainant contends that selling competing services, coupled with the unauthorized of use the Complainant’s trademarks in the confusingly similar Domain Name, does not qualify as a bona fide offering of goods of services under the UDRP. Further, the Complainant claims that the metadata associated with the Domain Name specifically refers to the Complainant, his trademark and his primary domain name <chatroulette.com>. The Complainant argues that the Respondent is using the metadata to increase the likelihood that Internet users searching for the Complainant via search engines would come across the Domain Name and will be confused as to its source.
The Complainant contends that the Respondent registered the Domain Name on August 24, 2017, which is significantly after the Complainant’s registration of its <chatroulette.com> domain name on November 16, 2009. The Complainant contends that the Respondent demonstrated his knowledge of the Complainant’s trademark by registering the Domain name, which is confusingly similar to the Complainant’s CHATROULETTE trademark. The Complainant contends that because the Respondent is using the Domain Name to direct to a website offering webcam-based video interaction services and used the Complainant’s primary domain name in the title header of the Respondent’s website, as well as in the metadata of the website to attempt to attract Internet users searching for Complainant’s primary domain website, it is impossible that the Respondent would be unaware of the Complainant’s trademark at the time of the Domain Name registration.
The Complainant alleges that the Respondent’s use of the Domain Name constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under paragraph 4(b)(iii) of the UDRP because the Respondent registered the Domain Name to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark. The Complainant contends that the Domain Name is confusingly similar to Complainant’s trademarks and the website at the Domain Name features a webcam based interactive user experience similar to that offered by the Complainant. The Complainant claims that the Respondent has engaged in a bad faith pattern of cybersquatting because the Respondent has been a party to a UDRP case where the Respondent registered a domain name <ru-chatroulette.com>, which was similar to the Complainant’s trademark. The Complainant alleges that the Respondent registered the Domain Name one day after he had communicated via email with the Complainant and the Center in the previous UDRP case seeking settlement for the domain name <ru-chatroulette.com>. The Complainant contends that the Respondent in fact did not intend to settle the previous UDRP case amiably and took the delay in the previous proceeding to register the Domain Name and to set up a website connected to the Domain Name to continue to disrupt the Complainant’s business. The Complainant claims that the Respondent used a privacy service to hide his identity, which serves as additional evidence of bad faith registration and use. Finally, the Complainant claims that the Respondent’s failure to respond to the Complainant’s cease and desist letters may properly be considered a factor in finding bad faith registration and use of the Domain Name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Paragraph 11(a) of the Rules provides that: “Unless 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.”
Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. However, the Complainant requested that the language of the proceeding be English because the Complainant’s representative was unable to communicate in Russian. The Complainant claims that the translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceeding and the adjudication of this matter. The Complainant alleges that because of the abusive nature of the Domain Name and the website, the delay poses continuing risk to the Complainant and unsuspecting consumers seeking the Complainant or its products. The Complainant also points out that the Domain Name comprises only Latin characters and the website associated with the Domain Name is presented in English and Russian. The Complainant points out that the Respondent had an ample opportunity to respond to its cease and desist letters and request that communications continue in Russian. The Respondent, however, chose not to respond.
Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include … (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint...”1
The Panel finds that under the circumstances of this case English is an appropriate the language of this proceeding. Specifically, the Panel finds that it is likely that the Respondent understands English. The evidence on file shows that the Respondent registered the Domain Name in the Latin characters to direct to a website, which displays text in both Russian and English. In addition, the Center notified the Parties in both Russian and English of the potential language issue, providing the Respondent with an opportunity to comment on or object to any such language request that may be made by the Complainant. However, the Respondent did not object to the Complainant’s request for English to be the language of this administrative proceeding. Lastly, the Complainant and the Respondent were parties to a previous UDRP proceeding in English. See, Andrey Ternovskiy dba Chatroulette v. Sergey Kurguzenkov, supra. Therefore, the Panel finds that it will not be unfair to the Respondent if the proceeding is conducted in English. Instead, forcing the Complainant to translate the Complaint and supporting documents into Russian will impose undue financial burden on the Complainant and delay resolution of the dispute.
6.2. Substantive Matters
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under the first UDRP element, the Complainant is required to prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has established his rights in the CHATROULETTE trademark by submitting copies of various trademark registrations. Pursuant to section 1.2.1 of the WIPO Overview 3.0, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”
It is well established that the test for confusing similarity under the first UDRP element “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”2 “Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”3 “Where trademark is recognizable within the disputed domain name, the addition of other terms … would not prevent finding of confusing similarity.”4
Here, the Domain Name consists of the letters “ru”, a hyphen, the Complainant’s CHATROULETTE trademark, and the generic Top-Level Domain (“gTLD”) suffix “.online”. A side-by-side comparison of the Complainant’s trademark and Domain Name shows that the Domain Name incorporates the Complainant’s trademark in its entirety and the CHATROULETTE trademark is easily recognizable in the Domain Name. As a result, the addition of the letters “ru”, which commonly stand for “Russian Federation” and the hyphen, do not prevent finding of confusing similarity. The addition of the gTLD “.online” is disregarded under the confusing similarity test.5
Thus, the Domain Name is identical or confusingly similar to the Complainant’s CHATROULETTE mark and the first element of the UDRP has been satisfied.
B. Rights or Legitimate Interests
Under the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent.6 Once the complainant has made out the prima facie case, the respondent carries the burden of producing evidence demonstrating it has rights or legitimate interests in the domain name.7 Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.8
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Complainant has not authorized the Respondent to use and register the Complainant’s CHATROULETTE trademark or to register any domain names incorporating the CHATROULETTE mark. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use a complainant’s trademarks, generally no bona fide or legitimate use of the domain name could reasonably be claimed. See, LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.
The Complainant claims that the Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests. See UDRP, paragraph 4(c)(ii). The Respondent’s name, “Sergey Kurguzenkov”, does not resemble the Domain Name in any manner – thus, there is no evidence that suggests that the Respondent is commonly known by the Domain Name. In addition, because the Respondent used a privacy shield to conceal his identity, the Respondent cannot have been commonly known by the Domain Name. See, L’Oréal SA v.PrivacyProtect.org/ WangShanShan, WIPO Case No. D2014-0295 (“there is no evidence that the Respondent, who is moreover hiding behind a privacy shield, has been commonly known by the Domain Name.”)
Furthermore, the Respondent is using the Domain Name to direct to a website, which offers competing webcam interaction services. The evidence on file shows that the Respondent used the Complainant’s domain name <chatroulette.com> as meta tag making it more likely that Internet users looking for the Complainant’s website will end up on the Respondent’s website. While the heading on the Respondent’s website states “Видеочат рулетка, русский аналог chatroulette.com”, which means “video chat roulette, Russian analogy of chatroulette.com”, the heading alone in absence of any information about the real owner of the website or his business, does not dissipate the confusion between the Complainant’s and the Respondent’s services. Such use does not qualify as bona fide offering of services. See, America Online, Inc. v. Xianfeng Fu, WIPO Case D2000-1374 (“[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of [a] website using a domain name which is confusingly similar to the Complainant’s mark and for the same business”).
The Panel therefore finds that the Complainant has made out a prima facie case in respect to the Respondent’s lack of rights or legitimate interests in the Domain Name. Since the Respondent has failed to rebut the Complainant’s case, the Panel holds that the second element of the UDRP has been satisfied.
C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
Pursuant to paragraph 4(b) of the UDRP, any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel finds that it is more likely than not that the Respondent engaged in a pattern conduct whereby the Respondent registered domain names in order to prevent the Complainant from reflecting the CHATROULETTE mark in a corresponding domain name. Prior UDRP panels held that “establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration.”9 Here, the Respondent registered the present Domain Name and a similar domain name
<ru-chatroulette.com>, which was a subject of a prior UDRP proceeding.
Andrey Ternovskiy dba Chatroulette v. Sergey Kurguzenkov, supra. The Respondent registered the Domain Name on August 24, 2017, one day after he sent an email expressing his willingness to suspend the operations of the website connected with the <ru-chatroulette.com> domain name, which supports finding of the Domain Name bad faith registration. Id.
The Panel also finds that it is more likely than not that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the Domain Name by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, or endorsement of or affiliation with the website, pursuant to paragraph 4(b)(iv) of the UDRP. The Respondent registered and is using the Domain Name, which is confusingly similar to Complainant’s trademarks, to direct to the website featuring a webcam- based interactive user services similar to those offered by the Complainant. The website contains no information about its real owner. Evidence on file shows that the Respondent used the Complainant’s primary domain name as meta tags apparently to attract Internet users to his website “www.ru-chatroulette.online”. The website offers potential partners to enter into a partnership agreement whereby prospective partners will have to display on their websites video chat belonging to the Respondent. The prospective partners will have to attract Internet users to the video chat and they receive a percentage of the sum that users will spend on the video chat10, which shows that it is likely that the Respondent is deriving monetary gain from his use of the Domain Name.
In addition, the Respondent’s ignoring of cease and desist letters is considered an indication of bad faith.
All these factors cumulatively produce an overwhelming inference of bad faith registration and use and therefore the third element of the UDRP has been proven.
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, <ru-chatroulette.online> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: March 20, 2018
1 Section 4.5.1, Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
2 Section 1.7, WIPO Overview 3.0.
3 Id.
4 Section 1.8, WIPO Overview 3.0.
5 Section 1.11.1, WIPO Overview 3.0.
6 Section 2.1, WIPO Overview 3.0.
7 Id.
8 Id.
9 Section 3.1.2, WIPO Overview 3.0.
10 http://ru-chatroulette.online/ru/affiliate.html