WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Jack Shamama/Fauxjob Industries

Case No. D2018-2253

1. The Parties

The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Jack Shamama/Fauxjob Industries of San Francisco, California, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <homochatroulette.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2018. On October 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 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.

The Center verified that the 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 October 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2018.

The Center appointed Antony Gold as the sole panelist in this matter on November 21, 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

In or around November 2009, the Complainant created an online chat website that pairs random users from around the world for real-time, webcam-based, conversations. The Complainant chose the name “Chatroulette” for his business as he considered this name captured the intentionally unpredictable nature of his video chatting service. He registered the primary domain name used by his chatline, <chatroulette.com>, on November 16, 2009.

The Complainant’s website proved very popular. Very shortly after its launch, it was receiving 500 visitors per day. By January 2010 this figure had increased to 50,000 visitors per day, or approximately 1.5 million visitors per month. By February 2010 the figure had increased to approximately 130,000 visitors per day, or roughly 3.9 million monthly visitors. Since 2010, the Complainant’s website has been the subject of a number of press articles and television shows and continues to be well-known.

The Complainant has registered a large number of CHATROULETTE trade marks in various countries, including the following;

German trade mark, registration number, 302010003706, for CHATROULETTE, applied for on March 10, 2010 and registered on February 21, 2013, in classes 35, 38 and 42;

European Union trade mark, registration number 008944076, for CHATROULETTE, applied for on March 10, 2010 and registered on December 4, 2012 in classes 35, 38 and 42;

United States trade mark, registration number 4445843, for CHATROULETTE, applied for on January 10, 2011 and registered on December 10, 2013, in classes 38 and 45.

The disputed domain name was registered on February 11, 2010. Since that time, it has resolved to a parking page, the precise form of which has changed from time to time. However, most of the different iterations of the parking page have included the invitation “Learn how you can get this domain” or the question “Would you like to buy this domain?”.

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. The fact that the disputed domain name was registered prior to the date of the Complainant’s applications for his CHATROULETTE trade mark does not have any impact on the first element of the Policy; see section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). When comparing the disputed domain name to the Complainant’s trade mark, the relevant comparison is between the second level-portion of the disputed domain name (that is, “homochatroulette”) and the Complainant’s CHATROULETTE trade mark. The generic Top Level Domain (“gTLD”), in this case “.com”, is disregarded.

The disputed domain name captures in its entirety the Complainant’s CHATROULETTE trade mark and simply adds the word “homo” to the beginning of it. The addition of this generic term does not negate the confusing similarity between the disputed domain name and the Complainant’s trade mark; see section 1.8 of the WIPO Overview 3.0.

The Complainant asserts also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant’s trade marks for CHATROULETTE, granted in many jurisdictions, give him the exclusive right to use the mark in commerce for the classes of goods and services for which it has been registered.

The fast-growing nature of the Complainant’s website has been such that, within a very short period, CHATROULETTE had become distinctive of the Complainant and his services, even prior to his first application for a trade mark in March 2010. Previous UDRP panels have acknowledged that the name of a website which has attained rapid notoriety among Internet users is capable of comprising a distinctive identifier due to its sudden surge in online popularity; see Texts From Last Night, Inc. v. WhoIs Privacy Services Pty Ltd / Wang Shaopeng, WIPO Case No. D2011-1266.

The Respondent is not commonly known by the disputed domain name. The pertinent WhoIs information identifies him as “jackshamama/fauxjob industries” which does not resemble the disputed domain name in any manner. Moreover, the Complainant has not licensed, authorized or permitted the Respondent to register a domain name incorporating the Complainant’s trade mark.

Since its registration, the disputed domain name has resolved to a parking page which lacks content; such use does not evidence a right or legitimate interest in the disputed domain name; see, for example, Washington Mutual, Inc. v. Ashley Khong, WIPO Case No. D2005-0740.

Moreover, the Respondent registered the disputed domain name only two months after the Complainant registered its primary domain name, <chatroulette.com>, on November 16, 2009. The disputed domain name was registered during a period when the Complainant’s website was experiencing exponential growth in popularity. These circumstances, coupled with the fact that the terms “chat” and “roulette” do not in combination have any meaning in commerce other than to reference the Complainant’s business, strongly imply that the Respondent’s registration was opportunistic and predatory in nature. Misleading use of this nature does not give rise to any rights or legitimate interests on the part of the Respondent.

Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The timing and circumstances of the Respondent’s registration of the disputed domain name provides evidence of bad faith registration. The fact that the disputed domain name was registered during a period when the Complainant’s website was widely popular suggests that the Respondent knew of the Complainant and registered the disputed domain name in response to the publicity generated by the Complainant’s website. Previous panels have found that the registration of a domain name related to, and shortly after, an announcement or an event by a complainant constitutes an opportunistic bad faith registration. Section 3.8.2 of the WIPO Overview 3.0 makes plain that certain exceptions can apply when a domain name is registered before a complainant accrues trade mark rights, in particular if “the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trade mark rights”. It is very likely that the Respondent was trying to capitalize on the Complainant’s growing fame by registering a confusingly similar domain name.

Furthermore, CHATROULETE is so closely linked and associated with the Complainant that the Respondent’s use of a minor variation of this mark implies bad faith; see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.

The fact that the disputed domain name simply resolves to a parking page and has not been used since its registration can constitute a factor in finding bad faith registration and use; see section 3.3 of the WIPO Overview 3.0. Furthermore, the Respondent has not replied to cease and desist letters and a failure to reply to such letters provides further support for a finding of bad faith registration and use.

B. Respondent

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

6. Discussion and Findings

Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.

Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:

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

(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.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its trade mark registrations for CHATROULETTE, details of three of these marks having been set out above. These establish its rights in the mark.

For the purpose of considering whether the disputed domain name is identical or confusingly similar to CHATROULETTE the gTLD “.com” is disregarded as this is a technical requirement of registration. The disputed domain name comprises the Complainant’s trade mark in full but with the additional word “homo” inserted before the mark. This additional word does not serve to render the disputed domain name dissimilar from the Complainant’s trade mark. As explained at section 1.8 of the WIPO Overview 3.0: “Where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out, without limitation, circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely;

(i) before any notice to it of the dispute, it had used or made 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) it had been commonly known by the domain name, even if it had acquired no trade mark or service mark rights; or

(iii) it was making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The circumstances fall outside the scope of paragraph 4(c)(i) of the Policy. Section 2.2 of the WIPO Overview 3.0 provides examples of non-exhaustive examples of prior use, or demonstrable preparations to use a domain name, in connection with a bona fide offering of goods or services and explains that “While such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required”. Simply offering the disputed domain name for sale does not meet this requirement. See, by way of example, Ruby’s Diner, Inc. v. Joseph W. Popow, WIPO Case No. D2001-0868, in which the panel found that registering a domain name and doing no more with it than to advertise that it is for sale does not support a respondent’s legitimate interest under the Policy.

Paragraph 4(c)(ii) of the Policy is inapplicable; there is nothing to suggest that the Respondent has been commonly known by the disputed domain name.

Paragraph 4(c)(iii) is also inapplicable. The Respondent has not made any known use of the disputed domain names since its registration in February 2010, other than to advertise that it is for sale. This is not a legitimate, noncommercial use of the disputed domain name. Section 2.5.3 of the WIPO Overview 3.0 explains that; “While specific case factors have led panels to find that fair use need not always be categorically noncommercial in nature, unambiguous evidence that the site is not primarily intended for commercial gain….would tend to indicate a lack of intent to unfairly profit from the complainant’s reputation”. The circumstances of this case are the converse; pointing the disputed domain name to a parking page which offers it for sale is both commercial in character and does not constitute a fair use of it because, as is explained further below, the Panel finds that the Respondent’s intention in registration and use of the disputed domain name is to take advantage of the Complainant’s rights in CHATROULETTE.

As outlined at section 2.1 of the WIPO Overview 3.0, once a Complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden.

The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

As explained above, whilst the Complainant’s first trade mark for CHATROULETTE was not applied for until March 2010, the Complainant has established that, as at the date of registration of the disputed domain name on February 11, 2010, its website at www.chatroulette.com was very popular and was receiving somewhere between 50,000 and 130,000 hits per day. The name “chatroulette” is a distinctive term and the likelihood that the Respondent registered the disputed domain names for a reason other than that it had become aware of the Complainant’s website and hoped to profit from acquiring a domain name which might be perceived as associated with the Complainant’s CHATROULETTE business is remote. This view is reinforced by the fact that the Respondent has not made any attempt to use the disputed domain name for a bona fide offering of goods and services.

Section 3.8.1 of the WIPO Overview 3.0 explains that, subject to a number of exceptions; “where a respondent registers a domain name before the complainant’s trade mark rights accrue, panels will not normally find bad faith on the part of the respondent”. It is plainly arguable that the pace of expansion of the Complainant’s business was such that he had acquired unregistered trade mark rights in CHATROULETTE as at February 2010. But, in any event, section 3.8.2 of the WIPO Overview 3.0 explains that “in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalise on the complainant’s nascent (typically as yet unregistered) trade mark rights, panels have been prepared to find that the respondent acted in bad faith”.

It is appropriate to make such a finding where there is clear evidence that the reputation of the complainant has grown very quickly and, even in the absence of any registered trade mark rights, the only tenable explanation is that the domain name had been registered by the respondent in order to capitalise unfairly on that reputation. See, by way of example; Khloe Kardashian, Whalerock Celebrity Subscription, LLC, Khlomoney, Inc. v. Private Registrations Aktien Gesellschaft / Privacy Protection Service Inc. d/b/a Privacyprotect.Org, WIPO Case No. D2015-1113, where the domain name <khloekardashian.com> was registered two weeks after the complainant first appeared on Keeping up with the Kardashians. The panel found that “the Panel is in little doubt that the Respondent must have had the Complainant and its rights in the KHLOE KARDASHIAN name in mind when it registered the Domain Name. Furthermore, the Panel struggles to conceive of any legitimate, bona fide reason for the registration of the Domain Name. The circumstances of registration and the use to which the Domain Name has been put (to indicate that it was available for sale, no doubt for a sum significantly in excess of out-of-pocket expenses for registering the Domain Name), represent paradigmatic bad faith registration and use with a view to financial gain”. Essentially similar circumstances are present in these proceedings.

Paragraph 4(b) of the Policy sets out circumstances which, 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. These include, at paragraph 4(b)(i), circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or to a competitor of that complainant, for valuable consideration in excess of the respondent’s out-of-pocket costs directly related to the domain name.

There is no other realistic construction to place on the Respondent’s conduct other than it registered the disputed domain name for the purpose outlined at paragraph 4(b)(i) of the Policy. The fact that the disputed domain name is not being used in any generally understood meaning of the term does not preclude a finding of bad faith use; see section 3.3 of the WIPO Overview 3.0; “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”.

The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.

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 <homochatroulette.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: December 5, 2018