WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Domain Administrator, See PrivacyGuardian.org / Shakro Abramishvili
Case No. D2017-1371
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 (“United States”) / Shakro Abramishvili of Kvemo Kartli, Georgia.
2. The Domain Name and Registrar
The disputed domain name <gaychatroulette.org> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2017. On July 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2017, 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 19, 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 19, 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 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2017.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on August 21, 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.
The disputed domain name <gaychatroulette.org> was registered on July 30, 2016. Currently, the disputed domain name resolves to an online chat service looking to chat with random people with the same sexual preferences as themselves.
5. Parties’ Contentions
In summary, the Complainant contends the following:
The disputed domain name is identical or confusingly similar to the Complainant’s CHATROULETTE trademark, as it captures this trademark in its entirety, simply adding the generic term “gay” and the generic Top-Level Domain (“gTLD”) “org”. The Respondent’s use of the disputed domain name to host an online chat service similar to the Complainant’s contributes 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. Furthermore, the Respondent is not commonly known by the disputed domain name. Neither does the Respondent’s use of the disputed domain name constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The disputed domain name was registered and is being used in bad faith. The Complainant established its service and website in 2009, before the Respondent’s registration of the disputed domain name on July 30, 2016. Given the popularity of the Complainant’s brand and business, it is implausible that the Respondent had no knowledge of the Complainant’s rights in the CHATROULETTE mark at the time of registration.
The Complainant sees a further indication of bad faith in the fact that, at the time of initial filing of the Complaint, the Respondent employed a privacy service to hide its identity as well as in the fact that the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of these administrative proceedings.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Ignoring the gTLD “org”, the disputed domain name consists of the Complainant’s CHATROULETTE trademark with the addition of the term “gay”. The addition of a descriptive term such as “gay” 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.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that paragraph 4(a)(i) of the Policy is fulfilled.
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
Given that the Complainant’s trademark registrations precede 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. By creating a likelihood of confusion with the Complainant’s trademark and taking advantage of the trademark’s popularity, the Respondent can attract more Internet users to its website for commercial gain.
Furthermore, the Panel considers that the registration and use of a domain name which incorporates the CHATROULETTE trademark to direct Internet users to a competing chat service constitutes bad faith registration and use for the purposes of the third element of the Policy.
The Panel thus finds that the disputed domain name has been registered and used in the sense of paragraph 4(b)(iv) of the Policy and that paragraph 4(a)(iii) of the Policy has been fulfilled accordingly.
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, <gaychatroulette.org>, be transferred to the Complainant.
Date: September 4, 2017