WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Privacy Protection, Hosting Ukraine LLC / Раев-Масленников Петр/ Raev-Maslennikov Petr
Case No. D2017-1477
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 Privacy Protection, Hosting Ukraine LLC of Kiev, Ukraine / Раев-Масленников Петр/ Raev-Maslennikov Petr, of Kerch, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <chatroulettell.com> (the "Domain Name") is registered with Hosting Ukraine LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 28, 2017. On July 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 31, 2017, 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 August 3, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 7, 2017.
The Complaint was submitted in the English language. The language of the Registration Agreement for the Domain Name is Russian. On August 3, 2017, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The Complainant requested in the amended Complaint filed with the Center on August 7, 2017, that English be the language of the proceeding. The Respondent did not reply to the Center's notification or the Complainant's submission.
The Center verified that the Complaint 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 August 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 4, 2017.
The Center appointed Olga Zalomiy as the sole panelist in this matter on September 15, 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.
4. Factual Background
The Complainant is a Russian national, who created an online chat website that pairs random people from around the world together for real-time, webcam-based conversations in the end of 2009. The Complainant owns the website "www.chatroulette.com" and has used it continuously since its creation.
The Complainant owns multiple trademark registrations for the CHATROULETTE trademark. For instance, the Complainant is the owner of the European Union Trademark Registration No. 008944076 CHATROULETTE (word mark), registered on December 4, 2012, the German Trademark Registration No. 302010003706 CHATROULETTE (word mark), registered on February 21, 2013, and the United States of America ("United States") Trademark Registration No. 4445843, registered on December 10, 2013.
The Respondent registered the Domain Name on July 17, 2013. According to the evidence submitted with the Complaint, the Domain Name resolves to a website displaying adult-oriented content.
5. Parties' Contentions
A. Complainant
The Complainant claims that he is the owner of trademark registrations CHATROULETTE 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 the Chatroulette 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% 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 trademark and service mark registrations in several 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 two letters "ll" is considered to be a prototypical example of typosquatting, thus creating the Domain Name that is confusingly similar to the Complainant's trademark. The Complainant alleges that the addition of a Top-Level Domain ("gTLD") is irrelevant when establishing whether or not a mark is identical or confusingly similar to a Domain Name because top-level domains are required elements of every domain name. The Complainant also argues that the Respondent's use of the Domain Name to resolve to a website which advertises and promotes other web-based chat services, some of which features sexually explicit content is further evidence that the Disputed Domain Name is confusingly similar to Complainant's trademark.
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 European Union Intellectual Property Office (EUIPO), the German Patent and Trade Mark Office (DPMA) and the United States Patent and Trademark Office (USPTO) to Complainant for the CHATROULETTE trademark is prima facie evidence of the validity of the term "Chatroulette" as a trademark, of Complainant's ownership of this trademark, and of 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. 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, which evinces lack of rights or legitimate interests. The Complainant argues that the Respondent is using the Domain Name to direct Internet users to a website that advertises and promotes other web-based chat services, some of which features adult content. The Complainant claims that use of a disputed domain name that is confusingly similar to a complainant's trademarks to link to a website featuring pornographic or adult content evinces lack of legitimate rights or interests. The Complainant contends that the Respondent assumed control over the Domain Name on or about July 12, 2016, which is significantly after the Complainant's registration of its <chatroulette.com> domain name on November 16, 2009, as well as significantly after the Complainant filed for registration of its CHATROULETTE trademark with EUIPO, DPMA and USPTO, and after Complainant's first use of the CHATROULETTE mark in 2009.
The Complainant claims that the Respondent registered and is using the Domain Name in bad faith. The Complainant argues and he and his CHATROULETTE trademark are known internationally. The Complainant contends that he registered his <chatroulette.com> domain name and established its Chatroulette service and website before the registration of the Domain Name on July 14, 2013. The Complainant argues that by registering a domain name that is a two-letter typo of Complainant's CHATROULETTE 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, Respondent has demonstrated knowledge of and familiarity with Complainant's brand and business. Further, the composition of the domain, coupled with the fact that the Respondent is using the Domain Name to host a website which also advertises and promotes other web-based chat services, makes it illogical to believe that the Respondent registered the Domain Name without specifically targeting Complainant. The Complainant claims that at the time of registration of the Domain Name, the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks and that registration of the Domain Name containing his well-known trademarks constitutes bad faith per se. According to the Complainant, the website at the Domain Name features sexually-explicit, pornographic content, which provides evidence of Respondent's bad faith registration and use of the Domain Name. 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 language of the administrative proceeding would be Russian. However, the Complainant requested that the language of the proceeding be English because the Complainant was unable to communicate in Russian and 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 features various phrases in English, such as "Chatrandom", "Free videochat", "Online chat", "Russian Chatroulette", "WebCam Talk". The Complainant further claims that the website displays its "Chatroulette" mark, which does not have a meaning in the Russian language. The Complainant points out that the Respondent had ample opportunity to respond to its cease-and-desist letter 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 […] the language/script of the domain name particularly where the same as that of the complainant's mark, […] (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint [...]"1
Here, the Panel finds the Complainant's statement that he cannot communicate in Russian utterly unpersuasive. The Complainant is a Russian national, who resides in Moscow and who, according to its contention, created the Chatroulette service in 2009, when he was a high school student in Moscow, Russian Federation. The Panel finds it highly unlikely, that a Russian national, residing in Russian Federation lost his ability to communicate in his native language eight years after he was a high school student.
However, the Panel finds that it is possible to grant the Complainant's request for English to be the language of this proceeding for other reasons. First, it is likely that the Respondent understands English. The evidence on file shows that the Respondent registered the Domain Name in Latin characters to direct to a website, which displays information in both Russian and English. Also, the Center notified the parties in both Russian and English of the potential language issue, inviting the Complainant to either translate the Complaint or to submit a supported request that the Complaint be accepted in language filed, and that such be the language of proceedings, and similarly providing the Respondent with an opportunity to comment on or object to any such language request that may be made by the Complainant. In response, the Complainant submitted the amended Complaint with a request that the present proceedings be conducted in English and the Respondent did not object to the Complainant's request. The panel finds that in the circumstances 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 delay resolution of the dispute.
Based on the circumstances of the case, and considering that the Respondent was given the opportunity to comment on the language of Proceeding which it did not do, the Panel grants the Complainant's request that English be the language of this proceeding.
6.2. General discussion
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 (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
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 its rights in the CHATROULETTE trademark by submitting a copy of some of its trademark registrations, referenced above. Pursuant to Paragraph 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 "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 Complainant's CHATROULETTE trademark, the letters "ll" and the gTLD suffix ".com". A side-by-side comparison of the 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. It is well-established that "A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element"5. Here, the addition of letters "ll" does not detract from the confusing similarity between the Domain Name and the Complainant's trademark. The addition of the gTLD ".com" is disregarded under the confusing similarity test 6.
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 respondent7. Once the Complainant has made out the prima facie case, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name8. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.9
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 complainant's trademarks, 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 lack of rights or legitimate interests. See UDRP, 4(c)(ii). The Respondent's name, "Раев-Масленников Петр/ Raev-Maslennikov Petr", does not resemble the Domain Name in any manner – thus, there is no evidence that suggests that Respondent is commonly known by the Domain Name.
Furthermore, the Respondent is not using the Domain Name for bona fide offering or goods or services or a legitimate, noncommercial fair use. The evidence shows that the Respondent is using the Domain Name to direct Internet users to a website that attempts to promote services or products of the Complainant's competitors. Such use does not qualify as bona fide offering of goods or services.
In addition, the Respondent's website features adult content. Numerous previous UDRP panels have held that use of a disputed domain name that is confusingly similar to a complainant's trademarks to link to a website featuring pornographic or adult content evince a lack of rights or legitimate interests. See, MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205 (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant's mark).
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 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 on-line 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.
Here, on the balance of probabilities, the Panel finds that it is more likely than not that the Respondent's intent in registering the Domain Name was to unfairly capitalize on the Complainant's trademark rights for the following reasons:
(a) The Complainant registered its <chatroulette.com> domain name on November 16, 2009 and established its Chatroulette service and website very shortly thereafter, before Respondent's registration of the Domain Name on July 14, 2013. Furthermore, the Complainant began applying to register trademarks using that name in 2010, prior to the Domain Name registration.
(b) The evidence on file shows that very shortly after its launch, the "www.chatroulette.com" website received a lot of attention in the press. At the same time, the 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, that traffic had increased to approximately 130,000 visitors per day (3.9 million monthly visitors). The growth demonstrates the popularity that Complainant and its Chatroulette website and business obtained by the time the Respondent registered the Domain Name.
(c) The Respondent registered the Domain Name containing a two-letter addition to the Complainant's CHATROULETTE trademark after the Complainant registered its CHATROULETTE trademark. Because the Respondent selected the Domain Name, which differs from the Complainant's domain name and its trademark only by two-letters coupled with the fact that Respondent is using the Domain Name to host a website which advertises and promotes other web-based chat services, makes it likely that the Respondent registered the Domain Name with full knowledge of the Complainant and its trademarks.
(d) In addition, the Respondent is using the Domain Name in bad faith. Some of the chat services offered on the Respondent's website connected to the Disputed Domain Name feature sexually explicit, pornographic content, which provides evidence of Respondent's bad faith registration and use of this domain. Previous UDRP Panels have consistently held that a respondent's use of a confusingly similar domain name to direct unsuspecting Internet users to adult content, as here, is evidence of bad faith registration and use of that domain name. See, "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." V&S Vin & Sprit AB v. VCN - Whois Protection Service Panama, WIPO Case No. D2010-0715.
The Panel also finds that the cumulative circumstances of the case indicate that the Respondent is using the Domain Name in bad faith. The Respondent appears to have provided false contact information on the WhoIs database associated with the Domain Name, as evidenced by the non-delivery report issued on July 5, 2017, whereby the courier company informed the Center that the "Receiver's postcode and/or city are not valid". Also, the Respondent's ignoring of cease-and-desist letters is considered an indication of bad faith. Finally, several prior panels have found the CHATROULETTE trademark to be well-known,10 which also suggests bad faith registration and use.
All these factors cumulatively produce an inference of bad faith registration and use and therefore the third element of the UDRP has been proved.
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, <chatroulettell.com>, be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: September 26, 2017
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 1.9., WIPO Overview 3.0.
6 Section 1.11.1, WIPO Overview 3.0.
7 Section 2.1, WIPO Overview 3.0.
8 Id.
9 Id.
10 Andrey Ternovskiy dba Chatroulette v. Alexander Ochkin, WIPO Case No. D2017-0334; Andrey Ternovskiy dba Chatroulette v. AM F, WIPO Case No. D2017-1008; Andrey Ternovskiy dba Chatroulette v. Protection of Private Person / Aleksandr Katkov, WIPO Case No. D2017-0381; Andrey Ternovskiy dba Chatroulette v. A Anoniem, WIPO Case No. D2017-0940.