WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Alexander Ochkin

Case No. D2017-0334

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 Alexander Ochkin of Nizhny Tagil, Russian Federation.

2. The Domain Names and Registrars

The disputed domain names <chatroulette.vg> and <chatruletka.chat> are registered with Key-Systems GmbH dba domaindiscount24.com and RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the "Registrars").

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 20, 2017. On February 20, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 21, 2017 the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on February 22, 2017 regarding the Mutual Jurisdiction. The Center sent another email communication to the Parties in English and Russian on the same day regarding the language of the proceeding. The Complainant filed the amended Complaint on February 23, 2017 including its language request. The Respondent did not comment on the language of the proceeding by the February 27, 2017.

The Center verified that the Complainant 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 in English and Russian of the Complaint, and the proceedings commenced on March 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 23, 2017.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on March 31, 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.

In accordance with paragraph 10(c) of the Rules on April 19, 2017, the Center extended the date of the decision to April 26, 2017.

4. Factual Background

The Complainant, Andrey Ternovskiy dba Chatroulette ("Chatroulette"), is the owner of trademark CHATROULETTE registrations across various jurisdictions. The trademark CHATROULETTE is registered in the Russian Federation, European Union, Germany and the United States of America (Annex 2 to the Complaint). The earliest of the Complainant's trademark registration dates December 4, 2012. The business under the name "Chatroulette", created and owned by Andrey Ternovskiy, is an online chat website that pairs random people from around the world together for real-time, webcam-based conversations and is associated with, and known for providing, online video chat services and online video social introduction and networking services.

The Complainant also has a registered domain name <chatroulette.com> registered since November 16, 2009.

The disputed domain name <chatroulette.vg> was registered on March 3, 2013 and the disputed domain name <chatruletka.chat> was registered on July 10, 2015. The disputed domain names redirect Internet users to websites providing online video chat services and online video social introduction and networking services.

5. Parties' Contentions

A. Complainant

The Complainant created the Chatroulette service and website in 2009 when he was just a 17-year-old high school student in Moscow, Russian Federation. The novel idea for Chatroulette stemmed from the Complainant's realization that, at the time of its inception, no website existed which allowed for random video chatting with other Internet users from around the world. The distinctive, unique "Chatroulette" name that the Complainant chose for his innovative website and business was, in part, selected after the Complainant watched a film in which American soldiers in Viet Nam played the game of Russian roulette. By combining the term "chat", which is one of the core purposes of the Complainant's website, and the word "roulette", which is associated with the thrill of unpredictability (though not inherently or naturally connected to online webcam chatting), the essence of Chatroulette is captured in this distinctive name. Thus, the Complainant coined a name that he felt encapsulated the ideas, goals, and mission of his business.

The Complainant very quickly established incredible popularity and a high-profile reputation. Chatroulette continues to be well known as one of the most popular video chat sites in the world, and the website has generated significant interest and attention internationally among fans, the media, and competitors. Following its launch and meteoric rise in popularity, the Complainant has retained its impressive web traffic. According to Compete.com statistics, the Complainant's website, located at "www.chatroulette.com", averaged over 260,000 unique monthly visitors in the 13-month period August 2015 – August 2016, earning a website popularity rank of 12,967 (annexes 6, 7 and 8 to the Complaint). Besides producing countless devotees and fans, the immense popularity of the Complainant has, unfortunately, also spawned numerous copycat, clone sites that mimic the Complainant's website and functionality, as well as encouraged a throng of other cybersquatters that wish to exploit the popularity and goodwill of the Complainant.

In summary, Complainant's extensive and continuous use of the CHATROULETTE trademarks, and the fact that the Complainant has made significant investments over the years to promote and protect these trademarks and the Complainant's business across the Internet, demonstrate that the Complainant enjoys a substantial degree of public recognition in CHATROULETTE and has seen this mark become uniquely and distinctly associated with the Complainant.

(a) The disputed domain names are identical or confusingly similar to the Complainant's trademark.

The Complainant is the owner of Complainant's trademark CHATROULETTE in various jurisdictions (Annex 2 of the Complaint).

When comparing the disputed domain names and the Complainant's trademarks, the Top-Level Domain ("TLD") of the disputed domain names may properly be considered in assessing and determining confusing similarity between the disputed domain names and the Complainant's trademarks. In light of the introduction of new generic TLDs, UDRP panels may determine that the TLD impacts the disputed domain names' confusing similarity to the Complainant's trademarks (see Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, D2014-0206.

One disputed domain name contains the Complainant's CHATROULETTE trademark in its entirety, thus resulting in a domain name that is identical or confusingly similar to the Complainant's CHATROULETTE trademark. Where, as here, a disputed domain name encompasses and captures a complainant's trademark in its entirety, past UDRP panels have established that the disputed domain name should be found confusingly similar to that trademark. Thus, the disputed domain names should be considered identical or confusingly similar to the Complainant's CHATROULETTE trademark.

While the other disputed domain name contains the CHATROULETTE trademark translated to a foreign language, it is not identical to the Complainant's trademark CHATROULETTE, but given the context and the similarities in both pronunciation and spelling, it is confusingly similar to the Complainant's trademark. More specifically:

The disputed domain name varies from the Complainant's trademark by three total letters – the Respondent has removed the letters "o" and "te" from the trademark and added "ka" to the end of the trademark.

As the disputed domain name differs from the Complainant's trademark by just three total letters, the disputed domain name must be considered confusingly similar to the Complainant's trademark (see VeriSign Inc. v. VeneSign C.A., WIPO Case No. D2000-0303 (finding that similarities between the pronunciation and spelling of the domain name and a complainant's mark, VERISIGN, are so close that confusion can arise in the mind of a consumer).

Additionally, the Respondent's use of the disputed domain names contributes to the confusion. The Respondent is using the disputed domain names to redirect users to a website providing, online video chat services and online video social introduction and networking services, which suggests that the Respondent intended the disputed domain names to be confusingly similar to the Complainant's trademark as a means of furthering consumer confusion. In a previous UDRP case involving a domain name that resolved to website that sought to imitate the complainant's website, a panel found that such use was evidence that the domain name was confusingly similar to the mark in question (see The Gaming Board for Great Britain v. gaming board, WIPO Case No. D2004-0739.

(b) The Respondent has no rights or legitimate interests in the disputed domain names.

The granting of registrations by the Russian Federal Service for Intellectual Property (ROSPATENT), the European Union Intellectual Property Office (EUIPO), the German Patent and Trademark Office (DPMA) and the United States Patent and Trademark Office to the Complainant for the CHATROULETTE trademark is prima facie evidence of the validity of the term "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 on or in connection with the goods and/or services specified in the registration certificates.

The Respondent is not sponsored by or affiliated with the Complainant in any way.

The Complainant has not given the Respondent permission to use the Complainant's trademarks in any manner, including in domain names.

The Respondent is not commonly known by the disputed domain names, which evinces a lack of rights or legitimate interests (as indicated in theWhoIs data for the disputed domain names in Annex 3 to the Complaint). In the instant case, the pertinent WhoIs information identifies the Registrant as "Alexander Ochkin", which does not resemble the disputed domain names in any manner – thus, where no evidence, including the Whois records for the disputed domain names, suggesting that the Respondent is commonly known by the disputed domain names, then the Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain names within the meaning of the Policy, paragraph 4(c)(ii).

The Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial fair use of the disputed domain names. On the websites available at the disputed domain names, the Respondent offers and attempts to market a competing website providing online video chat services and online video social introduction and networking services. This is the exact service which the Complainant offers through the website associated with its primary domain name. Past UDRP panels have consistently held that selling competing goods, coupled with the unauthorized use of a complainant's trademarks in a confusingly similar domain name, does not qualify as a bona fide offering of goods or services under the Policy, paragraph 4(c)(iii). As such, the Respondent here should be held to possess no rights or legitimate interests in the disputed domain names (see America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 and others).

The Respondent registered the disputed domain names on March 3, 2013 and July 10, 2015, which is significantly after the Complainant filed for registration of its CHATROULETTE trademark, and also significantly after the Complainant's first use in commerce of its trademark on December 5, 2009 and the Complainant's registration of its <chatroulette.com> domain name on November 16, 2009.

(c) The disputed domain names were registered and are being used in bad faith.

The Complainant and its CHATROULETTE trademark are known internationally, with trademark registrations for CHATROULETTE across numerous countries. The Complainant registered its <chatroulette.com> domain name on November 16, 2009 and established its service and website very shortly thereafter, with common law trademark rights inuring to the Complainant's benefit before Respondent's registration of the disputed domain names on March 3, 2013 and July 10, 2015.

At the time of registration of the disputed domain names, the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks and that registration of the disputed domain names containing well-known trademarks constitutes bad faith per se. In addition to the numerous trademarks filed in connection with the Complainant's business prior to Respondent's registration of the disputed domain names, the Complainant has retained impressive web traffic since its inception. According to Compete.com statistics, the Complainant's website, located at "www.chatroulette.com", averaged over 260,000 unique monthly visitors in the 13-month period August 2015 – August 2016, earning a website popularity rank of 12,967, which demonstrates the Complainant's fame.

The Respondent's use of the disputed domain names constitutes a disruption of the Complainant's business and qualifies as bad faith registration and use under the Policy, paragraph 4(b)(iii) because the disputed domain names are confusingly similar to the Complainant's trademarks and the websites at the disputed domain names feature multiple links to the Complainant's competitors.

The Respondent has ignored the Complainant's attempts to resolve this dispute outside of this administrative proceeding. Past UDRP panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name (see Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 (failure to positively respond to a demand letter provides "strong support for a determination of 'bad faith' registration and use") and others).

B. Respondent

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

6. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules both in electronic and paper forms.

However, the Respondent failed to file a response to the Complaint and has not sought to answer to the Complainant's assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case and finds no exceptional circumstances indicating why it could not do so; the Panel will proceed to a decision based on the Complaint in accordance with paragraph 5(f) of the Rules.

The Respondent's default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must prove that the three following elements are satisfied:

(i) the disputed domain names are 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 disputed domain names; and

(iii) the disputed domain names were registered and are being used in bad faith.

Pursuant to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent's failure to reply to the Complainant's assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel's decision is based upon the Complainant's assertions and evidence and inferences drawn from the Respondent's failure to reply.

A. Language of Proceedings

Paragraph 11 of the Rules states that the language of the proceeding shall be the language of the Registration Agreement unless the Panel determines otherwise. The Registrars have confirmed that the language of the Registration Agreement is Russian for both disputed domain names. The Complainant has requested English as the language of the proceeding. The Complainant will incur undue hardship and delay the proceeding if it was required to translate the Complaint into Russian. The Respondent was properly notified about the language of the proceeding in English and Russian, and the Respondent has not objected to the Complainant's language request. In the present circumstance, the Panel finds it fair to accept the Complainant's Complaint filed in English, while allowing the Respondent to respond in Russian. The Center correspondence to the Respondent was communicated both in English and Russian. Given that the Respondent has not filed any submission, the Panel proceeds to a decision in English.

B. Identical or Confusingly Similar

By virtue of its trademark registrations the Complainant has rights in CHATROULETTE, registered particularly in the Russian Federation, on April 6, 2015.

The Complainant has registered the CHATROULETTE trademark in numerous other jurisdictions, including the European Union, Germany and the United States of America. The Complainant submits that the disputed domain names are identical or confusingly similar to its trademark.

The first disputed domain name <chatroulette.vg> incorporates the CHATROULETTE trademark in its entirety. The ".vg" is typically ignored when assessing confusing similarity. Accordingly, <chatroulette.vg> is identical to the Complainant's mark.

The Panel also refers to a number of past UDRP decisions, which confirm that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802).

The second disputed domain name <chatruletka.chat> represents the English word "chat" and the Russian word "ruletka" ("рулетка") in Latin letters for English "roulette". Consequently, the second disputed domain name is a mixed language variation of CHATROULETTE. The Complainant's mark is clearly recognizable in the disputed domain name and as such does not avoid a finding of confusing similarity.

Accordingly, the Panel finds that the disputed domain names are identical or confusingly similar to the Complainant's trademark CHATROULETTE.

The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a) of the Policy as to the first element of the Policy.

C. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names.

Even though the Respondent has not filed a response to the Complaint and has not contested the Complainant's assertions, the Panel will need to consider whether the Respondent's use of the disputed domain names would indicate the Respondent's rights or legitimate interests in the disputed domain names.

According to paragraph 4(c) of the Policy, the following circumstances, if proved, demonstrate a respondent's rights or legitimate interests in a domain name:

(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant's marks.

A respondent may show its rights or legitimate interests by producing evidence to support the circumstances under paragraphs 4(c)(i)-(iii) of the Policy.

By not responding to the Complainant's contentions, the Respondent in this proceeding has not attempted to demonstrate its rights or legitimate interests.

The Panel further notes that there is no evidence that before any notice of the dispute with the Complainant, that the Respondent was using the disputed domain names for a bona fide offering of goods or services. Instead, the Respondent redirects users to the websites providing online video chat services and online video social introduction and networking services, in direct competition with the Complainant.

The above-described use of the disputed domain names, in the Panel's view, proves that the Respondent was not involved in a bona fide offering of goods and services in respect of the disputed domain names under paragraph 4(c)(i) of the Policy.

As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain names.

The Panel recalls that the Respondent registered the disputed domain names on March 3, 2013 and July 10, 2015 accordingly. The Complainant asserts that the Complainant's activity under its trade name CHATROULETTE has continued since 2009 and CHATROULETTE has been registered as a trademark shortly after and is widely known and recognized as a trademark within its industry.

The disputed domain names have been registered years after the registration of the Complainant's trademark; it is highly unlikely that the Respondent known as "Alexander Ochkin" has been commonly known by the disputed domain names as provided in paragraph 4(c)(ii) of the Policy.

Further the Complainant confirmed that the Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant's trademarks in any manner, including in the disputed domain names.

There is no further evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names. To the contrary, the Respondent is offering a service in direct competition with the Complainant. Therefore, the Panel concludes that the paragraph 4(c)(iii) of the Policy does not apply.

The Panel finds the Complainant has established its prima facie case to show that the Respondent has no rights or legitimate interests in the disputed domain names and, accordingly, the Complainant has satisfied the requirement under paragraph 4(a) of the Policy as to the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its 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 its website or location or of a product or service on its website or location.

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain names have been registered with the Respondent's knowledge of the Complainant's trademark and reputation.

The Complainant's first use and first registration of its CHATROULETTE mark predate any use the Respondent may have made of the disputed domain names as a trade name, domain name or common name. The disputed domain names were registered in 2013 and 2015, years after the Complainant first used its CHATROULETTE marks. Additionally, the Complainant registered its domain names and began operating its websites at "www.chatroulette.com" many years before the Respondent registered the disputed domain names in this case. The Respondent was more likely aware of the Complainant's trademarks, domain names and websites associated with the same at the time the Respondent registered the disputed domain names.

In addition, the Complainant's CHATROULETTE trademark is well known as a popular chat site and has been for many years. The Respondent's registration of the first disputed domain name wholly incorporating a third-party mark is indicative of bad faith. As for the second disputed domain name which is a mix of English and Russian words equivalent to the mark CHATROULETTE is aim to mislead the Interned users and, in the Panel's view, is further indication of bad faith.

It is the Panel's view, under the present circumstances, that the Respondent most likely registered the disputed domain name with full awareness of the Complainant's trademark as well as the goodwill associated with it.

It is clear in the Panel's view that in the mind of an Internet user, the disputed domain names could be directly associated with the Complainant's trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327).

Additionally, the Respondent's use of the disputed domain names contributes to redirect users to a website providing, online video chat services and online video social introduction and networking services which leads to the confusion of the Internet users. In the Panel's view, it confirms that the Respondent intends to use the similarity of the disputed domain names to the trademark to attract the Internet users.

The Panel finds that the Respondent's registration of the disputed domain names shows the Respondent's intent to rely on a risk of confusion with the Complainant's activity and trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain names and any website associated with them.

The Panel is not aware of the Respondent conducting any legitimate business activity using the disputed domain names. These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain names, lead the Panel to conclude that the disputed domain names were registered and are being used by the Respondent in bad faith.

The Respondent's failure to reply to the Complainant's cease-and-desist letter is a further indication of bad faith by the Respondent.

The Respondent's use of the disputed domain names constitutes a disruption of the Complainant's business and qualifies as bad faith registration and use because the disputed domain names are confusingly similar to the Complainant's trademarks and the websites at the disputed domain names feature multiple links to Complainant's competitors.

The Panel finds that the Respondent registered and is using the disputed domain names in bad faith and, accordingly, the Complainant has satisfied the requirements of paragraph 4(a) of the Policy as to the third element of the Policy.

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 names <chatroulette.vg> and <chatruletka.chat> be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist
Date: April 26, 2017