WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Private Registration, Account Privacy / Scott Elliott, Transcom Ltd.

Case No. D2017-0455

1. The Parties

Complainant is Andrey Ternovskiy dba Chatroulette of Moscow, Russian Federation, represented by CSC Digital Brand Services AB, Sweden.

Respondent is Private Registration, Account Privacy of Tampa, Florida, United States of America / Scott Elliott, Transcom Ltd. of Guernsey, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").¹

2. The Domain Names and Registrar

The disputed domain names <camchatroulette.com> and <chatroulettevideos.com> are registered with Nettuner Corp. DBA Webmasters.com (the "Registrar").

3. Procedural History

The Complaint regarding the disputed domain name <camchatroulette.com> was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 1, 2017. On March 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <camchatroulette.com>. On March 7, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 9, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint.

The Complaint regarding the disputed domain name <chatroulettevideos.com> was filed with the Center on March 6, 2017. On March 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <chatroulettevideos.com>. On March 9, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 9, 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 March 10, 2017.

Since the underlying Registrants of the disputed domain name in this Complaint and another pending Complaint are the same, Complainant filed a Second Amended Complaint on March 10, 2017, requesting to add the disputed domain name <camchatroulette.com> into the current case.

The Center verified that the Complaint together with the amended Complaints 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 March 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 11, 2017.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on April 19, 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

Complainant is active in the online industry providing online video chat services as well as online video social introduction and networking services. Complainant has produced evidence that it is the registered owner of various trademarks relating to the designation "Chatroulette" including, inter alia:

- Word mark CHATROULETTE, United States Patent and Trademark Office (USPTO), Registration No.: 4445843, Registration Date: December 10, 2013, Status: Active;

- Word mark CHATROULETTE, European Union Intellectual Property Office (EUIPO), Registration No.: 008944076, Registration Date: December 4, 2012, Status: Active.

The disputed domain name <camchatroulette.com> was registered on May 13, 2015, while the disputed domain name <chatroulettevideos.com> was registered on May 9, 2014. As of the time of rendering this Decision, both disputed domain names resolve to a website at "www.hotroulette.com" headed "Hot Roulette", that explicitly states to be a "free adult chat roulette site where you can video chat with random strangers from all over the world".

Complainant's authorized representative contacted Respondent with cease-and-desist letters relating to the disputed domain name <camchatroulette.com> on December 6, 2016, December 20, 2016 and January 4, 2017, and with cease-and-desist letters relating to the disputed domain name <chatroulettevideos.com> on December 5, 2016, December 15, 2016 and December 27, 2016, to which Respondent did not reply.

Complainant requests that the disputed domain names be transferred to Complainant.

5. Parties' Contentions

A. Complainant

Complainant contends to have created the Chatroulette service and website already in 2009. The name "Chatroulette" was invented by combining the term "chat", which is one of the core purposes of Complainant's website, with the word "roulette", which is associated with the thrill of unpredictability, thus capturing the essence of Chatroulette in a distinctive name. Moreover, Complainant states that it has meanwhile achieved incredible popularity and a high-profile reputation under the Chatroulette brand with over 260,000 monthly visitors between August 2015 and August 2016.

Complainant submits that the disputed domain names are confusingly similar to Complainant's CHATROULETTE trademark as both of them incorporate the latter in its entirety with the mere addition of the generic terms "cam" to the beginning and the generic term "videos" to the end of the trademark.

Moreover, Complainant asserts that Respondent has no rights or legitimate interests with respect to the disputed domain names since (1) Complainant has not given Respondent permission to use Complainant's trademark in any manner, including domain names, (2) Respondent is not commonly known by the disputed domain names, and (3) Respondent is using the disputed domain names to direct Internet users to a video chat website featuring pornographic content.

Finally, Complainant argues that Respondent registered and is using the disputed domain names in bad faith since (1) the registration and making use of the disputed domain names took place well after the establishment of Complainant's Chatroulette service and website in 2009, (2) the addition of the generic terms "cam" to the beginning and "videos" to the end of Complainant's CHATROULETTE trademark in the disputed domain names demonstrates that Respondent registered the disputed domain names with full knowledge of Complainant's CHATROULETTE trademark and, thus, is specifically targeting Complainant, (3) the website under the disputed domain names features sexually-explicit, pornographic content, (4) Respondent offers to sell the disputed domain name <chatroulettevideos.com> at the Sedo domain trading platform, (5) Respondent, at the time of the initial filing of the Complaint, had employed a privacy service to hide its true identity and, finally, (6) Respondent has ignored Complainant's attempt to resolve this dispute outside of this administrative proceeding.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain names; and

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

Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel is to decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent's failure to submit a Response.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain names <camchatroulette.com> and <chatroulettevideos.com> are confusingly similar to the CHATROULETTE trademark in which Complainant has rights.

The disputed domain names incorporate the CHATROULETTE trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9), that the addition of a descriptive term to a trademark in a domain name is normally insufficient in and of itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the terms "cam" to the beginning and "videos" to the end of Complainant's CHATROULETTE trademark does not dispel the confusing similarity arising from the incorporation of Complainant's CHATROULETTE trademark in the disputed domain names (especially not against the background that e.g., the term "videos" directly points to Complainant's core business).

Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel is further convinced on the basis of Complainant's undisputed contentions that Respondent has not made use of the disputed domain names in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain names, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.

Respondent has not been authorized to use Complainant's CHATROULETTE trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent's name somehow corresponds with the disputed domain names and Respondent does not appear to have any trademark rights associated with the name "Chatroulette". In fact, Complainant has explained that its CHATROULETTE trademark was invented by combining the term "chat", being one of the core purposes of Complainant's business and website, and the term "roulette" which is associated with the thrill of unpredictability, yet another feature of Complainant's online video services. Respondent, in turn, redirects the disputed domain names to a website at "www.hotroulette.com" headed "Hot Roulette" apparently offering chat roulette video services which are set up in a way likely to compete with Complainant's services, thereby using the disputed domain names which are confusingly similar to Complainant's CHATROULETTE trademark to redirect to said website, and by the same time listing the disputed domain name <chatroulettevideos.com> for sale via the Sedo domain name platform. Such making use of the disputed domain names, therefore, neither qualifies as bona fide within the meaning of paragraph 4(c)(i) of the Policy nor as noncommercial or fair without intent for commercial gain as set forth by paragraph 4(c)(iii) of the Policy.

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests with respect to the disputed domain names. Having done so, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating such rights or legitimate interests (see WIPO Overview 2.0, paragraph 2.1). Given that Respondent has defaulted, he has not met that burden.

Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain names were registered and are being used by Respondent in bad faith. That the disputed domain names resolve to a website at "www.hotroulette.com" offering sexually explicit, pornographic content in relation to video chatting services in a similar layout as does, in part, Complainant's official website, is disruptive for Complainant. Such use tarnishes Complainant's CHATROULETTE trademark, and is evidence of Respondent's bad faith use of the disputed domain names within the meaning of paragraph 4(b)(iii) of the Policy.

Moreover, Respondent's website at "www.hotroulette.com" – though stating that it is a "free adult chat roulette site" – still provides for various click-on-buttons such as "Buy Tokens" and "Get Paid" which indicates that the website somehow is commercial in nature, which in turn supports a finding that Respondent also intentionally attempted to attract, for commercial gain, Internet users to its website or other online location by creating a likelihood of confusion with Complainant's CHATROULETTE trademark as to the source, sponsorship, affiliation or endorsement of Respondent's website or location. Such circumstances are evidence of registration and use of the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

The Panel, finally, notes that the listing for sale of the disputed domain name <chatroulettevideos.com>, which is confusingly similar to Complainant's CHATROULETTE trademark, on the Sedo domain name platform, may be considered evidence that Respondent likely registered the disputed domain names primarily for the purpose of selling them to Complainant, or to a competitor of Complainant for valuable consideration in excess of Respondent's documented out-of-pocket costs associated with the disputed domain names within the meaning of paragraph 4(b)(i) of the Policy.

In connection with this finding, it also carries weight in the eyes of the Panel that Respondent not only made use of a WhoIs privacy shield, apparently in an attempt to conceal its true identity, but also provided false WhoIs contact information, since the delivery of the Written Notice of this proceeding sent to Respondent via courier on March 21, 2017, failed due to an apparent invalid postal address. These facts at least throw a light on Respondent's behavior which supports the conclusion of registration and use of the disputed domain names in bad faith.

Taking into consideration the facts and circumstances set out above, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).

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 <camchatroulette.com> and <chatroulettevideos.com> be transferred to Complainant.

Stephanie G. Hartung
Sole Panelist
Date: April 28, 2017

¹ It is evident from the Registrar that Private Registration, Account Privacy is a privacy protection service and that Scott Elliott, Transcom Ltd is the underlying registrant of the disputed domain names. Therefore, unless otherwise indicated, the term "Respondent" is used by the Panel to refer to the latter underlying registrant only.