WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC / David Grandpierre
Case No. D2017-0456
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 Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("USA" or "United States") / David Grandpierre of New York, New York, USA.
2. The Domain Name and Registrar
The disputed domain name <webcamchatroulete.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 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. 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 the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 8, 2017, 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 the same day.
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 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 31, 2017.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on April 7, 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
The Complainant is the owner of the trademark CHATROULETTE, used since 2009 in connection with an online chat website that pairs together random people from around the world for real-time, webcam-based conversations.
The Complainant receives a substantial web traffic at the Chatroulette website, which regularly counts with hundreds of thousands of visitors.
The CHATROULETTE trademark is registered in multiple jurisdictions throughout the world, including in the United States Patent and Trademark Office (USPTO) (registration no. 4445843 on December 10, 2013), the European Union Intellectual Property Office (EUIPO) (registration no. 008946352 on August 19, 2012), and the German Patent and Trade Mark Office (DPMA) (registration no. 302010003706 on February 21, 2013), since 2012.
The Complainant also owns and operates other domain names incorporating its CHATROULETTE mark, such as <chatroulette.com>, registered in 2009.
The disputed domain name was registered by the Respondent on March 27, 2014.
The Panel accessed the disputed domain name on April 17, 2017, which resolved to a website that offers a "free video chat where random strangers from all over the world come to meet and make new friends". The Complainant's evidence shows that the website at the disputed domain name also included pay-per-click advertising links.
5. Parties' Contentions
The Complainant makes the following contentions:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. By virtue of its federal trademark and service mark registrations as shown in Annex 2, the Complainant is the owner of the CHATROULETTE trademark. The relevant point of comparison to be made is between the second-level portion of the disputed domain name and the Complainant's trademarks. The disputed domain name is a purposeful misspelling of the Complainant's CHATROULETTE trademark and must be considered confusingly similar to the Complainant's trademark. The disputed domain name differs from the Complainant's trademark by just one letter, and therefore must be considered a prototypical example of typosquatting. The practice of typosquatting intentionally takes advantage of Internet users that inadvertently type an incorrect address – often a misspelling of the complainant's trademark – when seeking to access the trademark owner's website. This means that a deliberate misspelling of a trademark registered as a domain name, which is intended to confuse Internet users, must be confusingly similar by design. In other words, the Respondent's registration of a domain name that is a minor misspelling of the Complainant's trademark constitutes typosquatting and thus creates a domain name that is confusingly similar to the Complainant's trademark. In creating the disputed domain name, the Respondent has also added the generic and descriptive term "webcam" to the Complainant's CHATROULETTE trademark, thereby making the disputed domain name confusingly similar to the Complainant's trademark. The fact that such term is closely linked and associated with the Complainant's brand and trademark only serves to underscore and increase the confusing similarity between the disputed domain name and the Complainant's trademark. The term "webcam" simply describes the mechanism by which users interact with each other through the Complainant's website. Past UDRP panels have consistently held that a disputed domain name that consists merely of a complainant's trademark and an additional term that closely relates to and describes that complainant's business is confusingly similar to that complainant's trademarks. Finally, the Respondent's use of the disputed domain name contributes to the confusion. The Respondent is using the disputed domain name to host a webcam chat site, which suggests that the Respondent intended the disputed domain name to be confusingly similar to the Complainant's trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The granting of registrations by USPTO, EUIPO, and DPMA to the Complainant for the CHATROULETTE trademark is a 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 in any way affiliated with the Complainant. 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 name, which evinces a lack of rights or legitimate interests. The Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. The website available at the disputed domain name is being used to host the Respondent's own online, webcam chat site which directly competes with the Complainant's own offerings. 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 Policy, paragraph 4(c)(iii). As such, the Respondent here should be held to possess no rights or legitimate interests in the disputed domain name. The Respondent registered the disputed domain name on March 27, 2014, which is significantly after the Complainant filed for registration of its CHATROULETTE trademark with the USPTO, EUIPO, and DPMA, and also significantly after the Complainant's first use in commerce of the CHATROULETTE mark in 2009.
The disputed domain name was registered and is being used in bad faith. The Complainant and its CHATROULETTE trademark are known internationally, with trademark registrations across numerous countries. The Complainant registered its <chatroulette.com> domain name on November 16, 2009, and established its Chatroulette service and website very shortly thereafter, before the Respondent's registration of the disputed domain name on March 27, 2014. At the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks and that registration of 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 the Respondent's registration of the disputed domain name, the Complainant has retained impressive web traffic since its inception. According to Compete.com statistics, the Chatroulette 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. Further, while constructive notice may sometimes alone be regarded as insufficient to support a finding of bad faith, numerous past UDRP panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant's marks, and thus having registered the domain name in bad faith, where the complainant's mark is well known and the circumstances support such a finding, as is the case here. The Respondent's use of the disputed domain name constitutes a disruption of the Complainant's business and qualifies as bad faith registration and use under Policy, paragraph 4(b)(iii) because the Respondent's domain name is confusingly similar to the Complainant's trademarks and the website at the disputed domain name features multiple links to the Complainant's competitors. The Respondent employed a privacy service to hide its identity, which past UDRP panels have held serves as further evidence of bad faith registration and use. 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 disputed domain name. Finally, on balance of the facts set forth above, it is more likely than not that the Respondent knew of and targeted the Complainant's trademark, and the Respondent should be found to have registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(i) The disputed domain name is 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 name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no doubt that "chatroulette" is a term directly connected with the Complainant's brand, used to identify an online chat website.
Annex 2 to the Complaint shows several registrations of CHATROULETTE trademarks obtained by the Complainant, including in the United States, since 2012.
The disputed domain name consists of a misspelling version of the Complainant's trademark CHATROULETTE, missing a letter "t". This practice is commonly called typosquatting, a kind of cybersquatting in which a respondent registers a domain name in order to take advantage of typing errors made by Internet users seeking the complainant's commercial website (see CPP, Inc. v. Virtual Sky, WIPO Case No. D2006 0201).
The disputed domain name also contains the prefix "webcam" and the generic Top-Level Domain ("gTLD") suffix ".com". Previous UDRP panels have consistently found that descriptive additions (such as "webcam" for an online chat website) do not distinguish a domain name, so as to avoid confusing similarity. This has been held in many UDRP decisions (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000 0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927). It is also well established that a gTLD suffix such as ".com" is typically irrelevant when determining whether a domain name is confusingly similar to a complainant's trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; 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 trademark at issue.
Based on the Respondent's default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The disputed domain name is currently linked to a website that offers online random chat services, in direct competition with the Complainant.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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.
When the disputed domain name was registered by the Respondent (in 2014) the trademark CHATROULETTE was already registered and widely used in connection to the Complainant's activities.
"Chatroulette" is a coined term comprised of the words "chat" and "roulette", used to identify the specific online random chat provided on the Complainant's website.
The disputed domain name encompasses a misspelling version of the trademark CHATROULETTE together with a descriptive word directly related to the Complainant's main product (an online chat website).
Therefore, the Panel concludes that it is very unlikely that the Respondent was not aware of the Complainant's trademark or that the adoption of the expression "webcamchatroulete" was a mere coincidence.
Furthermore, using the disputed domain name to host a competing service of online random chat, the Respondent creates a likelihood of confusion with the Complainant's trademark and potentially obtains revenue from this practice. The presence of pay-per-click links on the website at the disputed domain name further supports such a finding.
Finally, (a) the absence of a reply from the Respondent, as well as (b) the use of privacy services and (c) the lack of any plausible interpretation for the adoption of the term "webcamchatroulete", are further indications of bad faith in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy.
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 <webcamchatroulete.com> be transferred to the Complainant.
Date: April 21, 2017