WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Domain Administrator, See PrivacyGuardian.org / Josh Pendergrass
Case No. D2017-1261
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 Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America / Josh Pendergrass of Lapu, Lapu, Philippines.
2. The Domain Name and Registrar
The disputed domain name <bdsmchatroulette.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2017. On June 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 July 4, 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 July 5, 2017.
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 July 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2017.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on August 3, 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 creator and owner of the online chat service “Chatroulette”, in which users from around the world are paired randomly to be able to chat via webcam-based conversations and messaging.
The Complainant created the service in 2009 and holds trademark registrations of CHATROULETTE in various jurisdictions, including the European Union, the United States of America (“US”) and Germany. For instance, the Complainant is the owner of the European Union Trademark Registration No. 008946352 CHATROULETTE.TO, registered on August 19, 2012, and the US Trademark Registration No. 4445843 CHATROULETTE, registered on December 10, 2013 and claiming a first use in commerce in 2009.
The Complainant’s website experienced rapid growth since its creation, reaching 3.9 million monthly visitors on February, 2010, making it a worldwide web phenomenon.
The disputed domain name was registered on November 13, 2012. The disputed domain name resolves to a website displaying pornographic content, as well as offering online video chat service.
The Complainant’s domain name <chatroulette.com> was registered on November 16, 2009.
The Complainant’s authorized representative contacted the Respondent with a cease-and-desist letter, to which the Respondent did not reply.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to the Complainant’s CHATROULETTE mark, as it captures the Complainant’s mark in its entirety with the mere addition of the generic term “bdsm” (an abbreviation for sexual activities encompassing six components: “bondage and discipline, domination and submission, and sadism and masochism”).
The Complainant then proceeds to state that the addition of generic or descriptive terms is not sufficient to overcome a finding of confusing similarity pursuant to Policy, paragraph 4(a)(i).
Additionally, the Complainant states that the Respondent’s use of the disputed domain name contributes to the confusion, as it hosts an online video chat website, confusingly similar to the Complainant’s website and service.
The Complainant also claims that its trademark registrations are prima facie evidence of the validity of the term “chatroulette” as a trademark owned by the Complainant and of its exclusive right of use on or in connection with goods and/or services. Besides, the Respondent is not sponsored by or affiliated with the Complainant in any way and no permission to use the aforementioned trademark has been given, including in domain names.
The Complainant asserts that the Respondent is not commonly known by the disputed domain name and is not making a bona fide offering of goods or services, or a legitimate, noncommercial fair use of the disputed domain name.
Further on, the Complainant notes that the Respondent is using the disputed domain name to direct Internet users to a website that features adult content and that past panels have held that the use of a disputed domain name that is confusingly similar to a complainant’s trademark to link to a website featuring pornographic or adult content evinces a lack of rights or legitimate interests.
The Complainant brings to attention that the Respondent assumed control of the disputed domain name on or about February 24, 2015, which is significantly after the Complainant filed for registration of its trademark and first use.
The Complainant also claims that the Respondent has registered and used the disputed domain name in bad faith.
Finally, the Complainant seeks to have the disputed domain name transferred to itself.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a), that must be established by the Complainant to obtain relief. These elements are:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name;
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns various trademark registrations for the CHATROULETTE trademark, in different jurisdictions, therefore holding rights in the CHATROULETTE mark.
The disputed domain name in fact incorporates the CHATROULETTE trademark in its entirety, with the mere addition of the term “bdsm” (an abbreviation for “bondage, discipline, dominance and submission”) before the Complainant’s mark. The Panel agrees that the addition of the “bdsm” term to the Complainant’s mark does not negate the confusing similarity between the disputed domain name and the CHATROULETTE trademark. As a matter of fact, past panels have recognized that incorporation of 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).
Therefore, the Panel concludes that the Complainant has established the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
There is no evidence that the Respondent has, before any notice of the dispute, ever been commonly known by the disputed domain name nor has made or is making a legitimate noncommercial or fair use of the disputed domain name. Accordingly, the Respondent has not been authorized by the Complainant to use the CHATROULETTE trademark, either as a domain name or in any other way.
Instead, the Respondent redirects users to a website providing online video chat service in direct competition with the Complainant, however with a clear pornographic approach. Besides, there is no reasonable explanation apparent from the case file that would explain as to why the Respondent needed to rely on the CHATROULETTE mark in order to offer its content on the Internet.
Moreover, the Panel notes that the disputed domain name has been registered years after the Complainant started using the <chatroulette.com> domain name.
In view of the above, in absence of any evidence on the contrary and the facts presented by the Complainant, the Panel concludes that the Complainant has succeeded to establish the second condition of paragraph 4(a) 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.
Considering the wide recognition of the Complainant’s CHATROULETTE trademark and the domain name <chatroulette.com> for online chat systems, its reproduction in full in the disputed domain name with the mere addition of the “bdsm” term, and all the evidence presented by the Complainant, it is clear that the Respondent was aware of the Complainant when it chose the disputed domain name.
As a matter of fact, when the disputed domain name was registered by the Respondent, the trademark CHATROULETTE was already registered and widely used in connection with the Complainant’s activities.
Thus, the Panel finds that the Respondent has intentionally registered the disputed domain name with the sole objective of making a connection with the Complainant’s trademark and its online video chat service.
As mentioned above, the Panel also verifies that the disputed domain name resolves to a website displaying pornographic content, as well as offering online video chat service. Such use tarnishes the Complainant’s trademark, and is, along with other circumstances, evidence of the Respondent’s bad faith use of the disputed domain name.
Furthermore, the Panel notes the presence of what appear to be links to other pornographic websites that are likely to be commercial. In view of all the evidence provided by the Complainant, this fact supports a finding that the Respondent 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 CHATROULETTE trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location. Under the circumstances, the Panel finds the use of the disputed domain name falls under paragraph 4(b)(iv) of the Policy.
Lastly, the Panel concludes that the Respondent’s failure to respond to the cease-and-desist letter sent by the Complainant, the absence of a reply from the Respondent to the Complaint as well as the use of privacy services are further indications of bad faith in the present case.
Therefore, the Panel finds that paragraph 4(a)(iii) of the Policy is also satisfied.
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, <bdsmchatroulette.com>, be transferred to the Complainant.
Luiz E. Montaury Pimenta
Date: August 15, 2017