WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Domain Admin, Whois Privacy Corp.
Case No. D2017-1269
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 Admin, Whois Privacy Corp. of Nassau, Bahamas, of Bahamas.
2. The Domain Name and Registrar
The disputed domain name <chatroulettes.org> is registered with TLD Registrar Solutions Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2017. On July 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 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 July 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 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 (trademark registration No. 008944076, registered on December 4, 2012), the United States of America (trademark registration No. 4445843, registered on December 10, 2013) and Germany trademark registration No. 302010003706, registered on February 21, 2013).
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 December 10, 2014. According to the evidence provided by the Complainant the website at the disputed domain name was being used to host an online chat forum, displaying pornographic content.
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 on May 25, 2017, to which the Respondent did not respond.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to the Complainant’s CHATROULETTE trademark, being simply the plural form, with the addition of the letter “s” at the end of the mark and the generic Top-Level Domain (“gTLD”) “.org”.
The Complainant also argues that the Respondent’s domain name must be considered a prototypical example of typosquatting, causing Internet users who make a slight spelling or typing error to reach an unintended website.
Additionally, the Complainant states that the Respondent’s use of the disputed domain name contributes to the confusion, as it hosts an online chat forum, 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 says 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, which evidences a lack of rights or legitimate interests.
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 incorporates the CHATROULETTE trademark in its entirety, with the mere addition of letter “s” and the gTLD “.org”.
This Panel notes that it has become a common practice for the respondents to register domain names with minor spelling variations, a phenomenon which is commonly known as “typo-squatting”.
The slight spelling variation does not prevent the disputed domain name from being confusingly similar to the Complainant’s mark.
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 has not authorized, licensed or permitted the Respondent to use the trademark CHATROULETTE and there is no evidence that the Respondent has been or is commonly known by the disputed domain name or is using it in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Complainant has established a prima facie case that none of the three circumstances establishing rights or legitimate interests mentioned above applies. As stressed by many UDRP panels, in such a case, the burden of production then shifts to the respondent to rebut the complainant’s prima facie case.
By not submitting a Response, the Respondent has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the disputed domain names under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Considering the wide recognition of the Complainant’s trademark for online chat systems and all evidence presented by the Complainant, it is clear that the Respondent was aware of the Complainant’s trademark 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 to 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.
It is clear that the disputed domain name is an example of typosquatting, which constitutes registration in bad faith, according to past panels (see Sanofi v. Marek Zdanowicz, WIPO Case No. D2016-2545, and Andrey Ternovskiy dba Chatroulette v. Milen Radumilo, WIPO Case No. D2016-1926).
In this sense, the Panel verifies that the disputed domain name uses the Complainant’s mark with the mere addition of the suffix “s”, making for a “plural” reading of the mark, which, by the way, is not a dictionary word, but an expression created by the Complainant by combining the words “chat” and “roulette” (in an allusion to the Russian Roulette game).
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.
Finally, the Panel concludes that the Respondent’s the absence of a reply from the Respondent 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 <chatroulettes.org> be transferred to the Complainant.
Luiz E. Montaury Pimenta
Date: August 15, 2017