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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Domain Administrator, See PrivacyGuardian.org / FNGUwebdev Ltd

Case No. D2018-0598

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 Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“U.S.”) / FNGUwebdev Ltd of Victoria, Mahe, Seychelles.

2. The Domain Names and Registrar

The disputed domain names <chatroulettefrancais.info>, <chatroulettefrancais.org>, and <chatroulette-tchat.com> (“Domain Names”) are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2018. On March 19, 2018, the Center transmitted by email a request for registrar verification in connection with the Domain Names to the Registrar. On March 19, 2018, the Registrar transmitted by email its verification response to the Center disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 21, 2018, 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 March 23, 2018, with the Center.

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 March 26, 2018. In accordance with the Rules, paragraph 5, the due date for the Respondent filing a Response with the Center was April 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent’s default on April 20, 2018.

The Center appointed Marylee Jenkins as the sole panelist in this matter on May 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

Based on the review of the uncontested evidence submitted by the Complainant, the Panel determines that the Complainant is the owner of several trademark registrations for the mark CHATROULETTE in multiple countries including: the word mark CHATROULETTE (U.S. Trademark Registration No. 4445843 (filed on January 10, 2011; registered on December 10, 2013) in classes 38 and 45; Russian Trademark Registration No. 429957 (filed on March 11, 2010; registered on February 10, 2011) in classes 35, 38 and 42; European Union Trademark Registration No. 008944076 (filed on March 10, 2010, registered on December 4, 2012) in classes 35, 38 and 42; and German Trademark Registration No. 3020100037067 (filed on March 10, 2010, registered on February 21, 2013) in classes 35, 38 and 42) (individually and collectively referred to as the “Complainant’s Mark”)). The Complainant also owns the domain name <chatroulette.com> and markets its services at the website accessible at this domain name.

The domain name <chatroulette-tchat.com> was registered on May 27, 2010, and the domain names <chatroulettefrancais.info> and <chatroulettefrancais.org> were registered on September 22, 2010. The Domain Names resolve to the same website offering online video chat services and third-party links for webcam chat services.

5. Parties’ Contentions

A. Complainant

The Complainant states that it is the owner of the Complainant’s Mark and that it has spent a considerable amount of time and money protecting its intellectual property rights. The Complainant’s online chat website and service, “Chatroulette”, pairs random people from around the world together for real-time,

webcam-based conversations. The Complainant’s extensive and continuous use of the Complainant’s Mark and the fact that the Complainant has made significant investments over the years to promote and protect the Complainant’s Mark and the Chatroulette business across the Internet and world demonstrate that the Complainant enjoys a substantial degree of public recognition in the Complainant’s Mark and has seen the Complainant’s Mark become uniquely and distinctly associated with the Complainant.

The Complainant alleges that: (i) the domain name <chatroulette-tchat.com> can be considered as capturing, in its entirety, the Complainant’s CHATROULETTE trademark and adding a hyphen followed by the letter “t” and generic term “chat” related to the Complainant’s business, to the end of the Complainant’s trademark; and (ii) the domain names <chatroulettefrancais.info> and <chatroulettefrancais.org> can be considered as capturing, in their entirety, the Complainant’s CHATROULETTE trademark and adding the generic term “francais” (which refers to the French language) to the end of the Complainant’s trademark. The Complainant alleges that the mere addition of these generic terms to the Complainant’s Mark does not negate the confusing similarity between the Domain Names and the Complainant’s Mark and that the Domain Names must be considered confusingly similar to the Complainant’s Mark. In addition, the Complainant alleges that the Respondent uses the Domain Names to resolve to websites offering online video chat services, similar to the Complainant’s business, which is further evidence that the Domain Names are confusingly similar to the Complainant’s Mark.

The Complainant alleges that the granting of registrations by various trademark offices to the Complainant for the Complainant’s Mark is prima facie evidence of the validity of the term CHATROULETTE as a trademark, the Complainant’s ownership of the Complainant’s Mark and the Complainant’s exclusive right to use the Complainant’s Mark in commerce on or in connection with the goods and/or services specified in its registration certificates.

The Complainant alleges that the Respondent: (i) is not sponsored by or affiliated with the Complainant in any way; (ii) has not been given permission to use the Complainant’s Mark in any manner, including in domain names; and (iii) is not commonly known by the Domain Names, which evinces a lack of rights or legitimate interests. Particularly, the Complainant alleges that the pertinent WhoIs information identifies the Registrant as “Domain Administrator” which does not resemble the Domain Names in any manner – thus, where no evidence, including the WhoIs records for the Domain Names, suggests that the Respondent is commonly known by the Domain Names, the Respondent cannot then be regarded as having acquired rights to or legitimate interests in the Domain Names. The Complainant has also not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s Mark.

The Complainant further alleges that the Respondent is not making a bona fide offering of goods or services or a legitimate, noncommercial fair use of the Domain Names. On the websites available at the Domain Names, the Respondent provides online video chat services or various third party links for webcam chat services, some of which belong to the Complainant’s competitors, which directly compete with the Complainant’s own offerings. The Complainant therefore alleges that the Respondent should be held to possess no legitimate rights or interests in the Domain Names.

The Complainant alleges that the Respondent is using the Domain Names to direct Internet users to websites that feature various third party links to adult content. The Complainant further alleges that the metadata associated with the Domain Names specifically refer to the Complainant and the Complainant’s Mark. The Complainant alleges that the Respondent is using this metadata to increase the likelihood that an Internet user searching for the Complainant through a search engine would come across the Domain Names and subsequently become confused as to its source. The Complainant alleges that the Respondent’s use of the Domain Names in this fashion constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use. Additionally, the Complainant alleges that by registering the Domain Names incorporating the Complainant’s Mark and adding generic terms “tchat” and “francais” to the end of the Complainant’s Mark, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. The Complainant further alleges that the Respondent had employed a privacy service to hide its identity, which serves as further evidence of bad faith registration and use when done in conjunction with other bad faith indicators. Accordingly, the Complainant alleges that it is more likely than not that the Respondent knew of and targeted the Complainant’s Mark and that the Respondent should be found to have registered and used the Domain Names in bad faith.

B. Respondent

No response was received from the Respondent with respect to this proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the domain name holder 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.

Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as the Panel considers appropriate. Nevertheless, the Panel may rule in the Complainant’s favor only after the Complainant has proven that the above elements are present.

Element (i) - Domain Names Identical or Confusingly Similar to the Complainant’s Mark

The Panel finds that the Complainant has provided sufficient evidence to show that it is the owner of and has rights in and to the Complainant’s Mark. A review of the second-level domains (“chatroulette-tchat” and “chatroulettefrancais”) of the Domain Names show that each domain comprises the Complainant’s mark CHATROULETTE in its entirety and the descriptive term “tchat” or “francais” as a suffix. The domain name <chatroulette-tchat.com> also includes a hyphen. A review of the Complainant’s trademark registrations for the word mark CHATROULETTE used in connection with web-based services in multiple classes predating the Respondent’s registrations of the Domain Names as well as the uncontested evidence of the Complainant’s website at “www.chatroulette.com” support the finding that the terms “tchat” and “francais” are descriptive of the Complainant’s services. The Panel concludes that the inclusion of these descriptive terms or the use of the hyphen does not differentiate the Domain Names from the Complainant’s Mark. Rather such inclusions show that the Respondent was clearly aware of the Complainant’s Mark when registering the Domain Names. Based on the uncontested evidence and assertions of the Complainant, the Panel concludes that these Domain Names are confusingly similar to the Complainant’s Mark in which the Complainant has rights and that paragraph 4(a)(i) of the Policy has been satisfied.

Element (ii) - Rights or Legitimate Interests in the Domain Names

There is no evidence that the Complainant has at any time ever licensed, sponsored, endorsed or authorized the Respondent to register or use the Complainant’s Mark in any manner. In addition, no evidence has been presented that before notice to the Respondent of the dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Names in connection with any type of bona fide offering of goods or services or that the Respondent is commonly known by the Domain Names, as an individual, business or otherwise. Rather the uncontested evidence shows that the Complainant had filed several of its trademark applications in 2010 and that the Respondent registered the Domain Names shortly thereafter. In addition, the Complainant has presented sufficient evidence to result in a finding that the Respondent is misleadingly diverting consumers to pornographic and commercial websites in an apparent attempt to profit from the Internet traffic misdirected to these Domain Names. Such uses of the Domain Names by the Respondent cannot be considered as being legitimate noncommercial or fair use of the Domain Names. The Panelist therefore concludes that the Respondent has no rights or legitimate interests in the Domain Names and that Element (ii) has been satisfied.

Element (iii) - Domain Names Registered and Used in Bad Faith

Based upon the undisputed evidence submitted by the Complainant, the Panel finds that the Respondent clearly had actual knowledge of the Complainant’s Mark when registering the Domain Names. This finding is supported by the uncontested evidence showing that the registrations of the Domain Names by the Respondent do not predate the Complainant’s earlier filing dates of its trademark applications for the Complainant’s Mark. Rather the Complainant has sufficiently proven that the Respondent likely acquired the Domain Names in bad faith for the purpose of diverting Internet users looking for the Complainant to the Respondent’s sites for its own commercial benefit. Furthermore, the Complainant has provided significant evidence showing that the Domain Names resolve to sites where the Respondent is using the Complainant’s Mark with descriptive terms related to the Complainant’s business in the Domain Names to intentionally attract and subject users to pornographic and third party commercial websites for apparent commercial gain. Coupled with the number of Domain Names registered by the Respondent incorporating the Complainant’s mark CHATROULETTE in its entirety and the Respondent’s failure to provide accurate contact information in the registrations for the Domain Names, such only supports a finding of bad faith domain name registration and use by the Respondent. The Panel therefore finds that the Respondent has registered and is using the Domain Names in bad faith for the purpose of creating a likelihood of confusion with the Complainant’s Mark, as to the source, sponsorship, affiliation or endorsement of the sites to which the Domain Names redirect users or of the products and services offered on those sites. The Panelist accordingly concludes that Element (iii) has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Names <chatroulettefrancais.info>, <chatroulettefrancais.org>, and <chatroulette-tchat.com> be transferred to the Complainant.

Marylee Jenkins
Sole Panelist
Date: June 11, 2018

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