WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Protection of Private Person / Genadiy Bistriy / Bistrii Gennadii Ignatovich
Case No. D2017-0463
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Moscow, Russian Federation, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Protection of Private Person of Moscow, Russian Federation / Genadiy Bistriy / Bistrii Gennadii Ignatovich of Kramatorsk, Ukraine.
2. The Domain Names and Registrars
The disputed domain names <chatroulette.moscow> and <24chatroulette.com> are registered with Registrar of Domain Names REG.RU 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 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 9, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 21, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center sent an email communication to the Parties in English and Russian on the same day regarding the language of the proceeding, and invited the Complainant to respond by March 24, 2017 and the Respondent to respond by March 26, 2017. On March 22, 2017, the Complainant referred to its language request included in the Complaint, and on March 24, 2017 it filed an amended Complaint. The Respondent did not comment on the language of the proceeding by the specified due date. On March 28, 2017, the Center requested a clarification from the Registrar in relation to the location of the registrants of the two disputed domain names. On the same day, the Registrar made such confirmation. On March 31, 2017, the Complainant submitted a further amended Complaint.
The Center verified that 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 April 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2017.
The Center appointed Assen Alexiev as the sole panelist in this matter on May 2, 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 this proceeding, the Complainant has filed its Complaint in relation to two domain names. According to the registrant and contact information disclosed by the Registrar, the names and addresses of the registrants of the two disputed domain names do not coincide (although they appear quite similar), which raises the question of whether a consolidation of the proceedings in relation to the two disputed domain names would be appropriate in the circumstances. As pointed out by the Complainant, such consolidation would be appropriate if the two disputed domain names are under common control. In this regard, the Complainant has referred to the fact that the email addresses of the two registrants as disclosed by the Registrar and as used by the Respondent in its correspondence with the Complainant prior to the dispute are identical, and that the names of the two registrants are merely phonetic variations and transpositions of one another. The Respondent has made no comments on these contentions of the Complainant.
The Panel has reviewed the arguments and evidence submitted by the Complainant, and is satisfied that the disputed domain names may be considered as being under common control, as indeed the email address specified by the two registrants is the same and their names appear as phonetic variations of each other. Therefore, the Panel finds that it is appropriate to decide the disputes in relation to the two disputed domain names in the same proceeding.
In respect of the language of the proceeding, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain names is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or otherwise specified in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant has submitted its Complaint in the English language, and requests that the proceeding be held in English on the grounds of fairness and the expeditious resolution of the dispute. The Complainant notes that it is unable to communicate in Russian and that the translation of the Complaint would unfairly disadvantage and burden the Complainant and will delay the proceedings. The Complainant further points out that the Respondent has sent some of its correspondence to the Complainant in English. The Center has invited the Respondent, in both English and Russian, to state its position on the language of the proceeding, but the Respondent has not submitted any comments on this issue.
In view of the above, the Panel is prepared to accept that using the English language in this proceeding will be fair and efficient and will not put either of the Parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding be English. At the same time, the Panel will review and take into account all relevant evidence that is available in this case in either Russian or English.
4. Factual Background
In 2009, the Complainant Andrey Ternovskiy created the online chat website Chatroulette, which pairs random people from around the world together for real time, webcam based conversations, and provides online video chat services and online video social introduction and networking services. The Complainant created the name “Chatroulette” by combining the term “chat” (one of the core services offered by the Complainant’s website), with the word “roulette”, which is associated with the thrill of unpredictability. Very shortly after its launch, the Chatroulette website began to receive 500 visitors per day while continuing to experience consistent growth, and only one month later in January 2010, this figure had increased to 50,000 visitors per day (approximately 1.5 million users per month). In February 2010, the traffic increased to approximately 130,000 visitors per day (3.9 million monthly visitors).
The Complainant owns a number of trademark registrations for the sign CHATROULETTE around the world, including the following registrations (the “CHATROULETTE trademark”):
- The European Union trademark CHATROULETTE with registration No. 008944076, registered on December 4, 2012, covering services in International Classes 35, 38 and 42;
- The German trademark CHATROULETTE with registration No. 302010003706, registered on February 21, 2013, covering services in International Classes 35, 38 and 42;
- The United States trademark CHATROULETTE with registration No. 4,445,843, registered on December 10, 2013, covering services in International Classes 38 and 45.
The Complainant operates its official website at the domain name <chatroulette.com>, which was registered on November 16, 2009.
The disputed domain name <chatroulette.moscow> was registered on September 2, 2016. The disputed domain name <24chatroulette.com> was registered on September 14, 2014. At the time of filing of the Complaint, the disputed domain names resolved to websites offering adult content.
5. Parties’ Contentions
The Complainant submits that the disputed domain name <chatroulette.moscow> contains Complainant’s CHATROULETTE trademark in its entirety, and so is identical to it. The Complainant further submits that the disputed domain name <24chatroulette.com> also incorporates the CHATROULETTE trademark in its entirety with the addition of the number “24” before the trademark, which makes this disputed domain name confusingly similar to the CHATROULETTE trademark. The addition of the number “24” to this disputed domain name does not eliminate the confusing similarity between it and the CHATROULETTE trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant, and 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, as the Internic WhoIs database information identifies him as Bistrii Gennadii Ignatovich or Genadiy Bistriy. The Respondent is not making a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed domain names, as they direct Internet users to websites that feature adult content. The use of a domain name that is confusingly similar to the trademark of another to link to a website featuring pornographic or adult content is evidence of lack of legitimate rights or interests.
According to the Complainant, the disputed domain names were registered and are being used in bad faith. At the time of registration of the disputed domain names, the Respondent is likely to have known of and to have targeted the Complainant’s CHATROULETTE trademark. The Complainant registered its <chatroulette.com> domain name on November 16, 2009 and established its Chatroulette service and website shortly thereafter, while the Respondent registered the disputed domain names only in 2014 and 2016. The Complainant also points out that Complainant’s website generates substantial web traffic. According to Compete.com statistics, the official Chatroulette website averaged over 260,000 unique monthly visitors in the 13-month period August 2015 – August 2016.
The Complainant further points out that the websites at the disputed domain names feature sexually-explicit, pornographic content. It contends that the use of a domain name that is confusingly similar to a trademark of another to direct unsuspecting Internet users to adult content is evidence of bad faith registration and use of that domain name.
The Complainant also submits that it contacted the Respondent on November 18, 2016, through cease and desist letters. The Respondent refused to transfer the disputed domain names to the Complainant, and replied that the disputed domain names were for sale and the Complainant could buy them. As the attempt to solve the matter amicably was unsuccessful, the Complainant commenced the present proceeding under the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…” In the event of a default, under the Rules, paragraph (14)(b): “[…] the Panel shall draw such inferences therefrom as it considers appropriate”.
As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.”
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the CHATROULETTE trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” part of the disputed domain name <24chatroulette.com>, and the “.moscow” part of the disputed domain name <chatroulette.moscow>.
Therefore, the relevant part of the disputed domain name <24chatroulette.com> that has to be examined is its “24chatroulette” section. This section of the disputed domain name is confusingly similar to the distinctive CHATROULETTE trademark, as the only difference is the addition in the disputed domain name of the non-distinctive number “24”, which does not eliminate the confusing similarity. Taking the above into account, the Panel finds that this disputed domain name is confusingly similar to the CHATROULETTE trademark, in which the Complainant has rights.
As to the disputed domain name <chatroulette.moscow>, its relevant part that has to be examined is its “chatroulette” section, which is identical to the CHATROULETTE trademark. In view of this, the Panel is satisfied that this disputed domain name is identical to the CHATROULETTE trademark, in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain names. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain names. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Respondent is not affiliated to the Complainant and is not authorized to use the CHATROULETTE trademark or to seek registration of any domain name incorporating this trademark. The Complainant has further pointed out that the registration of the CHATROULETTE trademark predates the registration of the disputed domain names for years, and that the Respondent does not use the disputed domain names in connection to a bona fide offering of goods or services as they resolve to websites that feature adult content. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
The Respondent has not taken any position on the contentions of the Complainant or made any allegations relevant to the issue of rights and legitimate interests.
The disputed domain names incorporate the distinctive CHATROULETTE trademark, which was registered several years before their registration. The websites at the disputed domain names indeed feature adult content. These circumstances lead the Panel to reach a conclusion that the Respondent is likely to have been well aware of the business of the Complainant and to have intended to exploit the popularity of the CHATROULETTE website to attract the attention of Internet users to its adult websites when it chose to register the disputed domain names. In the Panel’s view, such conduct cannot be regarded as giving rise to rights and legitimate interests of the Respondent. Therefore, the Panel finds that the Complainant’s prima facie case has not been rebutted, and that the Respondent does not have rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
The facts of this case show that the disputed domain names are likely to have been registered with knowledge of the reputation of the Complainant’s services offered under the CHATROULETTE trademark, which at that point in time had been active for several years. In this situation, the Respondent is likely to have registered the disputed domain names in view of their attractiveness to consumers, while at the same time not having obtained an authorization from the Complainant for the registration. This conclusion supports a finding that the Respondent has registered the disputed domain names in bad faith.
The disputed domain names resolve to websites that offer adult content. The confusing similarity between the disputed domain names and the Complainant’s trademark may confuse Internet users and attract them to the Respondent’s websites, thus affecting the Complainant’s reputation and disrupting the Complainant’s business, which supports a finding that the Respondent uses the disputed domain names in bad faith under Policy, paragraph 4(b) (iii) and (iv).
On the basis of all the above the Panel finds that the disputed domain names have been registered and are being used in bad faith.
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.moscow> and <24chatroulette.com> be transferred to the Complainant.
Date: May 26, 2017