WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. DGM Domains
Case No. D2017-1345
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 DGM Domains of Montreal, Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name <chatroulettegirls.org> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2017. On July 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 13, 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 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2017.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on August 10, 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 website “www.chatroulette.com”, the concept of which is to pair random Internet users from around the world for real-time video chats. The website was launched in 2009 and quickly grew in popularity, averaging over 260,000 monthly visitors in a period of 13 months between August 2015 and August 2016. Beginning with the year 2010, the website and its owner were featured in prominent publications such as The New York Times as well as in popular television shows, including Good Morning America and The Daily Show with Jon Stewart.
The Complainant is the owner of numerous registered trademarks for the term CHATROULETTE, including United States trademark number 4445843 registered on December 10, 2013, European Union Trade Mark number 8944076 registered on December 4, 2012, as well as German trademark number 302010003706 registered on February 21, 2013.
According to the WhoIs database, the disputed domain name <chatroulettegirls.org> was registered on December 2, 2013. Currently, the disputed domain name is being used to direct users to the website “www.bongacams.com”, which is a video chat website featuring sexually explicit content.
5. Parties’ Contentions
In summary, the Complainant contends the following:
The disputed domain name is identical or confusingly similar to the Complainant’s trademark, as it captures the CHATROULETTE trademark in its entirety and simply adds the generic term “girls” to it. The Complainant quotes a number of UDRP panel decisions to show that only the second level domain is relevant when assessing similarity. The fact that the Top-Level Domains of the disputed domain name <chatroulettegirls.org> and of the Complainant’s popular domain name <chatroulette.com> are not identical is irrelevant.
The Respondent’s use of the disputed domain name, which is to forward Internet users to another online video chat service, further adds to the confusion.
The Respondent has no rights or legitimate interests in the disputed domain name, since the Complainant has an exclusive right to its CHATROULETTE trademark, the Respondent is in no way affiliated with the Complainant and the Complainant has not given the Respondent permission to use its trademark in any manner.
The Respondent is not commonly known by the disputed domain name. Neither does the Respondent’s use of the disputed domain name – linking to a pornographic website unrelated to the Complainant – constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Given the notoriety of the Complainant’s trademark, it is more likely than not that, at the time of the registration of the disputed domain name, the Respondent had knowledge of and specifically targeted the Complainant’s trademark, thus having registered and used the disputed domain name in bad faith. The Complainant sees a further indication of bad faith in the Respondent’s refusal to respond to its cease-and-desist letter and to resolve this dispute amicably.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant’s trademark CHATROULETTE and the term “girls”, as well as the generic Top-Level Domain “.org”. According to the consensus view of UDRP panels, the addition of a descriptive term such as “girls” to a trademark in a domain name would not prevent a finding of confusing similarity under the first element of the Policy, where the relevant trademark is recognizable within the disputed domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). This is the case here.
It is further noted that, according to common practice of UDRP panels, the Top-Level Domain may be disregarded when determining identity or similarity under the first element of the Policy (see WIPO Overview 3.0, section 1.11; see also Canyon Bicycles GmbH v. Domains by Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206).
The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
There are no indications before the Panel of any right or legitimate interests of the Respondent in respect of the disputed domain name.
Based on the Complainant’s credible contentions, the Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name is currently linked to a third-party website featuring pornographic content. Like the Complainant’s website “www.chatroulette.com”, the website linked to the disputed domain name also offers video chat services. In light of the evidence submitted by the Complainant and absent any evidence to the contrary, the Panel can see no legitimate, bona fide reason for the Respondent to use the disputed domain name, which is confusingly similar to the CHATROULETTE trademark. The Panel is thus satisfied that the Respondent is attempting to create the impression that its website is connected to the Complainant, in order to attract more users to its website. This constitutes bad faith registration and use in the sense of paragraph 4(b)(iv) of the Policy.
Furthermore, given that the Complainant’s first trademark registration precedes the registration of the disputed domain name and that the CHATROULETTE mark and the associated website “www.chatroulette.com” had achieved a high degree of notoriety as early as 2010, the Panel agrees that it is more likely than not that the Respondent had knowledge of and targeted the CHATROULETTE trademark at the time of registration.
The Panel thus finds that the Complainant has established the Respondent’s bad faith under paragraph 4(a)(iii) 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, <chatroulettegirls.org>, be transferred to the Complainant.
Date: August 24, 2017