WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. PrivacyDotLink Customer 2682908 / Evelyn Vict, DBF Group
Case No. D2017-0232
1. The Parties
Complainant is Andrey Ternovskiy dba Chatroulette of Moscow, Russian Federation, represented by CSC Digital Brand Services AB, Sweden.
Respondent is PrivacyDotLink Customer 2682908 of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("United Kingdom") / Evelyn Vict, DBF Group of Herts, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <chatroulettegirls.xxx> (the "Domain Name") is registered with Uniregistrar Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 6, 2017. On February 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 8, 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 Complainant on February 10, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 13, 2017.
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 Respondent of the Complaint, and the proceedings commenced on February 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 8, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on March 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
Since December 2009, Complainant has operated an online chat room website "that pairs random people from around the world together for real-time, webcam-based conversations." By January 2010, Complainant's website, located at <chatroulette.com>, was receiving 50,000 visitors per day. Complainant's website has received a measure of unsolicited publicity from various media sources.
Complainant holds several trademark registrations for the mark CHATROULETTE, including a European Union Intellectual Property Office ("EUIPO") registration dated April 12, 2012 and a United States Patent and Trademark Office ("USPTO") registration dated December 10, 2013. The USPTO registration indicates that Complainant first used the CHATROULETTE mark in commerce on December 5, 2009.
The Domain Name was registered on June 18, 2014. The Domain Name resolves to a website which purports to offer services similar to those offered by Complainant. The introductory sentence on the home page to which the Domain Name resolves states: "Chatroulette sites usually have mostly men, so we decided to create Chatroulette Girls, now you can chat cam to cam with only girls."
Complainant sent Respondent a cease-and-desist letter on November 28, 2016, followed by chaser letters on December 8 and 19, 2016. No response was made to those letters.
5. Parties' Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
The Panel concludes that Complainant has rights, through registration and use, in the mark CHATROULETTE. The Panel also finds that the Domain Name is confusingly similar to that mark. The Domain Name incorporates the mark in its entirety and adds the dictionary word "girls". The addition of this word does not diminish the confusing similarity between the Domain Name and the mark.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent has not come forward, either in response to the several letters from Complainant or to the Complaint in this proceeding, to explain any possible bona fides Respondent might have vis-à-vis the Domain Name. Moreover, it appears clear from this record that Respondent is using the Domain Name for the illegitimate purpose of running a copycat site designed to siphon off consumers who were actually looking for Complainant's services.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel concludes that Respondent registered and is using the Domain Name in bad faith. The Panel finds it more likely than not that Respondent had Complainant's CHATROULETTE mark in mind when registering the Domain Name. This finding is based on two facts: (1) the CHATROULETTE mark is inherently distinctive (the term "roulette" is not descriptive of chat room services; it is at most suggestive of random chat room encounters); and (2) Respondent's website offers services similar to those offered by Complainant under the CHATROULETTE mark.
The Panel also concludes that Respondent is using the Domain Name in bad faith within the meaning of Policy paragraph 4(b)(iv), quoted above.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <chatroulettegirls.xxx> be transferred to Complainant.
Robert A. Badgley
Date: March 24, 2017