WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. AM F
Case No. D2017-1008
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 AM F of Vancouver, British Columbia, Canada.
2. The Domain Name and Registrar
The disputed domain name <chattroulette.org> (the "Domain Name") 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 May 22, 2017. On May 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 May 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 20, 2017.
The Center appointed D. Brian King as the sole panelist in this matter on June 23, 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
A. The Parties
The Complainant is a sole proprietorship that owns trademark registrations across various jurisdictions. The Complainant created Chatroulette, an online chat website, in 2009 when he was a 17-year-old high school student in Moscow, Russian Federation. Chatroulette has grown exponentially since it was created; during the 13-month period between August 2015 and August 2016, it averaged 205,105 unique monthly visitors (Annex 8 to the Complaint). No information is known about the Respondent's business or history.
B. The Marks
The Complainant is the registered owner of the following trademarks involving CHATROULETTE in different jurisdictions (together, the "Registered Marks") (Annex 2 to the Complaint):
European Union Intellectual Property Office (EUIPO)
German Patent and Trade Mark Office (DPMA)
United States Patent and Trademark Office (USPTO)
C. The Domain Name
The Complainant filed for registration of these marks in 2010 and 2011, and the Registered Marks were all registered between 2012 and 2013 (see Annex 2 to the Complaint). The Respondent registered the Domain Name on August 23, 2015 (Annex 3 to the Complaint). The Domain Name redirects Internet users to a third party website that displays adult images on its home page and offers a video chat service with pornographic content (Annex 4 to the Complaint).
On December 5, 2016, the Complainant wrote to the Respondent asking for the transfer of ownership of the Domain Name (Annex 10 to the Complaint). Absent a response, on December 15, 2016, the Complainant sent a second such notice to the Respondent (Annex 10 to the Complaint). On December 27, 2016, the Complainant sent a third and final notice to the Respondent, again asking for the transfer of ownership of the Domain Name (Annex 10 to the Complaint). As of May 22, 2017, the date the Complaint was filed in the present action, the Complainant had not received a response from the Respondent (see Complaint, p. 9).
5. Parties' Contentions
The Complainant claims that the Domain Name is identical or confusingly similar to its Registered Marks. It submits that the word "Chatroulette" has widespread recognition, and has been featured in numerous publications and media outlets within the past several years. The Complainant argues that the Respondent is impermissibly "typosquatting" by having registered a Domain Name that replicates the word used in the Registered Marks save for a difference of one letter—the Domain Name has an extra "t". According to the Complainant, the Respondent's misspelling of "Chatroulette" is a purposeful attempt to confuse Internet users.
The Complainant also claims that the Respondent has no rights or legitimate interests in respect of the Domain Name. It asserts that the Respondent is not sponsored by or affiliated with the Complainant in any way, and that it has not given the Respondent any licensing rights or permission to use the Registered Marks. The Complainant also submits that the Respondent is not commonly known by the Domain Name, and that it is not using the Domain Name to provide a bona fide offering of goods or services. Under these circumstances, the Complainant argues that the Respondent does not own and cannot lawfully obtain trademark or intellectual property rights in the Registered Marks.
The Complainant claims that the Domain Name was registered and is being used in bad faith. It states that "Chatroulette" is an internationally known trademark; the registration of a domain name containing "Chatroulette" by itself shows bad faith, as the Respondent must have known of the existence of the Complainant's rights in its Registered Marks. The Complainant also submits that the Domain Name is being used in bad faith because it is a slight misspelling of the Complainant's Mark, and so is being used to take advantage of Internet users who may make a spelling error. The Complainant further states that the fact that the website to which the Domain Name resolves features sexually explicit and pornographic content is evidence of the Respondent's bad faith registration and use of the Domain Name. Finally, the Complainant submits that the Respondent's failure to respond to three cease-and-desist letters sent to the Respondent's address is evidence of bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
i. The 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 Domain Name; and
iii. The Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii). Paragraph 4(c) of the Policy sets out three illustrative circumstances that could demonstrate a respondent's rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Complainant has provided evidence demonstrating that it has rights in multiple Registered Marks using the word "Chatroulette" (see Annex 2 to the Complaint). The Domain Name uses the same word, but with an additional "t" in what is simply a misspelling of the Complainant's mark. The Complainant contends, rightly in the Panel's view, that the Respondent's Domain Name is a typical example of "typosquatting," which is the intentional registration of a domain name that is a slight misspelling of a distinctive or famous mark. Previous panels constituted under the Policy have held that typosquatting typically satisfies the "confusingly similar" requirement (see, e.g., RX America, LLC v. Tony Rodolakis, WIPO Case No. D2005 1190 (January 11, 2006); Express Scripts, Inc. v. Kal Kuchora, WIPO Case No. D2005-1164 (February 15, 2006)). Furthermore, in this case, the Domain Name is phonetically similar to the Complainant's Registered Marks.
On these grounds, the Panel concludes that the Domain Name is confusingly similar to the Complainant's trademarks. Accordingly, the first element of the test under paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
Many prior UDRP panels have found that complainants only need to establish a prima facie case in relation to the second element of the test under paragraph 4 of the Policy (see MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205 (May 11, 2000); Mahindra & Mahindra Limited v. RV ABC Consulting, Inc., Roy Smith, WIPO Case No. D2010-1576 (November 12, 2010)). Once a prima facie showing is made, the burden shifts to the respondent to prove that it does have rights or legitimate interests in the disputed domain name.
The present Panel agrees that the Complainant need only make out a prima facie case and finds that it has met that standard. The Complainant has shown that it has used the name "Chatroulette" since 2009 and began applying to register trademarks using that name in 2010. Since 2012, the Complainant has owned registered trademarks using the same word. On the other hand, the Respondent registered the Domain Name in 2015, and the Domain Name redirects Internet users to a third party website (using a different domain name than the one at issue here) that features adult and pornographic content. Past UDRP panels have held that the use of a disputed domain name that is confusingly similar to a complainant's trademarks to link to a website featuring pornographic or adult content demonstrates a lack of rights or legitimate interests, and does not constitute a bone fide offering of goods or services. See, e.g., MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205 (May 11, 2000).
The Respondent has not filed a response and so the Complainant's claims and contentions remain unchallenged. In the absence of any contrary evidence, the Panel accepts the Complainant's representations that the Respondent is not sponsored by or affiliated with the Complainant, and that the Complainant has not given the Respondent permission to use the trademarks in any manner. Moreover, the Panel finds no evidence that the Respondent is commonly known by a name corresponding to the Domain Name. For these reasons, the Panel finds that the Complainant has satisfied the requirements of the second element of the test under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Previous UDRP panels have found that where the complainant's mark is well-known, a respondent is considered to possess knowledge and notice of a complainant's mark for purposes of the bad faith test. See, e.g., Société des Produits Nestlé S.A. v. Sonia de Ferrero, WIPO Case No. D2016-1300 (August 10, 2016). The Complainant here first registered the domain name <chatroulette.com> in 2009 and launched its website shortly thereafter (Annex 5 to the Complaint). By February 2010, Chatroulette was receiving 130,000 visitors per day (3.9 million monthly visitors), and numerous news articles and features were written about the Complainant and Chatroulette in prominent news outlets (Annex 7 to the Complaint). As noted above, the Complainant's website averaged 205,105 unique monthly visitors during the 13 month period between August 2015 and August 2016, which demonstrates Chatroulette's continued popularity. Given these facts, the Panel finds that it is more likely than not that the Respondent knew of, or in any event should have known of, the Complainant's Registered Marks, in August 2015 when it registered the Domain Name.
Past UDRP panels have also considered that "typosquatting" itself constitutes registration in bad faith. See Sanofi v. Marek Zdanowicz, WIPO Case No. D2016-2545 (February 1, 2017); Andrey Ternovskiy dba Chatroulette v. Milen Radumilo, WIPO Case No. D2016-1926 (November 7, 2016). The Domain Name is a clear example of typosquatting because, as discussed above, it uses the Complainant's Registered Marks, with the minor addition of an extra "t." Moreover, the Respondent's confusingly similar Domain Name redirects Internet users to a website with an altogether different domain name, which advertises a video chat service with pornographic content. The Panel concludes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant's own video-chatting business.
The Panel has therefore determined that the Respondent registered and is using the Domain Name in bad faith, and accordingly that the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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, <chattroulette.org>, be transferred to the Complainant.
D. Brian King
Date: July 12, 2017