WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / I S, ICS INC

Case No. D2018-0099

1. The Parties

The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States” or “US”) / I S, ICS INC of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <chatroulettepictures.com> 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 January 18, 2018. On January 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2018, 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 January 22, 2018 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 January 24, 2018.

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 January 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2018.

The Center appointed James Bridgeman as the sole panelist in this matter on February 23, 2018. 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.

Except where the context otherwise indicates references to “Respondent” refer to I S, ICS INC who is the disclosed underlying registrant.

4. Factual Background

On November 16, 2009 the Complainant registered the domain name <chatroulette.com> and immediately launched a commercial online chat website named “Chatroulette” which he has since then funded by advertising income. Visitors to his website are randomly paired together with other visitors from around the world and may choose to engage in real-time, webcam-based conversations.

The Complainant’s website located at the domain name <chatroulette.com> quickly proved to be popular and by 2010, the date on which the disputed domain name was apparently first registered, it was receiving in excess of 100,000 visitors a day. The website has remained active since it was launched and has evolved into a substantial business. By December 2017, the Complainant’s website was receiving over 270,000 unique monthly visitors earning a global popularity rank of 18,214.

Soon after its launch the Complainant and his website received substantial amount of media attention with articles about him and his project published in The New York Times on February 13, 2010 and the New York magazine on February 5, 2010.

On February 21, 2010 the disputed domain name was registered with the identity of the registrant concealed by means of a privacy service. The disputed domain name registration appears to have lapsed and later re-registered on May 15, 2017.

As the traffic to his website increased, the Complainant registered a portfolio of trademark registrations for the CHATROULETTE mark for use on goods and services associated with his website including:

There is no information available about the Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the identity of the underlying registrant which was disclosed by the Registrar following the initiation of this Complaint.

The disputed domain name resolves to a website which offers links to third party websites and is offered for sale online.

5. Parties’ Contentions

A. Complainant

The Complainant relies on his claimed rights in its above-mentioned registered trademarks.

He furthermore claims rights in the CHATROULETTE mark acquired through his extensive use of the mark as the name of his website since December 2009. In January 2010, one month after the launch of the Complainant’s site, his website had 50,000 visitors per day (approximately 1.5 million users per month). The following month the traffic had jumped to approximately 130,000 visitors per day (3.9 million monthly visits). As a result of its exponential growth in visitor numbers, the website was featured in and highlighted by numerous publications and media outlets including The New York Times, The New Yorker, and New York magazine, as well as on television shows including Good Morning America and The Daily Show with Jon Stewart. The media’s attention was drawn to his website because of its exponential growth in popularity and because the Complainant was only 17 years old, living in Moscow when he launched his website with no initial investors.

By December 2017, the Complainant’s website, located at the domain name <chatroulette.com> was receiving over 270,000 unique monthly visitors earning a global popularity rank of 18,214.

The Complainant submits that the disputed domain name is confusingly similar to his CHATROULETTE trademark. He argues that the disputed domain name captures his distinctive CHATROULETTE mark in its entirety with the simple addition of the word “pictures” and the generic Top-Level Domain (“gTLD”) “.com” extension. Referring to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8, he submits that the mere addition of the generic term “pictures” to the end of the Complainant’s trademark does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark under Policy, paragraph 4(a)(i). Furthermore referring to the WIPO Overview 3.0 at section 1.11.1: he submits that the gTLD “.com” extension should be viewed as a standard registration requirement and, as such, disregarded under the confusing similarity test in the Policy.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant submits that he has the exclusive right to use the CHATROULETTE trademark, which is an original term which he coined for his innovative website and business. He states that he chose the name because it encapsulates the ideas, goals, and mission of his business. By combining the term, “chat”, which is one of the core purposes of the Complainant’s website, and the word, “roulette”, which is associated with the thrill of unpredictability, the essence of the service provided on his website is captured in this distinctive name.

He argues that his ownership of the above described trademark registrations is prima facie evidence of his exclusive right to use the CHATROULETTE trademark. He asserts that the Respondent is not sponsored by or affiliated with him in any way; that he has not given the Respondent permission to use his CHATROULETTE trademark in any manner and in particular he has not licensed, authorized, or permitted the Respondent to register the disputed domain name incorporating his trademark.

The Complainant also asserts that the Respondent is not commonly known by the disputed domain name because the pertinent WhoIs information identifies the Registrant as “Registration Private” which does not resemble the disputed domain name in any manner.

Furthermore the Complainant argues that a screenshot of the website to which the disputed domain name resolves, which has been adduced in an annex to the Complaint, shows that the Respondent is using the disputed domain name to redirect Internet users to a website which features links to competing websites offering “Adult Cam Chat” and “Adult Cam Web”. The Complainant submits that the Respondent presumably receives pay-per-click fees from the linked websites that are listed on the Respondent’s website and argues that decisions of UDRP panels have consistently held that monetizing domain names to generate pay-per-click income does not amount to a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name under the Policy.

The Complainant additionally submits that because the links on the Respondent’s website resolves to websites that compete with the Complainant’s business and capitalize on the reputation and goodwill of his CHATROULETTE mark and otherwise mislead Internet users, they cannot represent a bona fide offering of goods or services.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. He requests this Panel to note that disputed domain name was originally registered on February 21, 2010 subsequent to the Complainant’s registration of its <chatroulette.com> domain name on November 16, 2009 and the successful launch of his website. By February 2010, when the disputed domain name was registered, the Complainant’s website at “www.chatroulette.com” was receiving up to 130,000 visitors per day which is 3.9 million monthly visitors.

The Complainant furthermore submits that at the time the disputed domain name was chosen and registered, the registrant must have been aware of the Complainant, the reputation of his website and his rights in the CHATROULETTE mark. The Complainant’s application for a US trademark registration for CHATROULETTE had been filed in connection with the Complainant’s business on January 10, 2011 and the Complainant and his CHATROULETTE website had also been featured in and highlighted by numerous publications and media outlets including The New York Times, The New Yorker, and New York magazine, as well as on television shows including Good Morning America and The Daily Show with Jon Stewart.

Given the distinctive character of the Complainant’s trademark and the similarity of the disputed domain name, the Complainant submits that it is obvious that the disputed domain name was registered with the intention of riding on the coattails of the Complainant’s newly found fame and the reputation of the Chatroulette brand. The Complainant submits that previous panels have found bad faith under Policy, paragraph 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links to third-party websites that create revenue for the respondent. In this regard he cites the decision of the panelin PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162 (“Respondent’s use of the Domain Name to earn referral fees by linking to other websites attracts Internet users to Respondent’s site by creating confusion as to source and results in commercial gain to Respondent. Accordingly, the Panel finds that the Domain Name was registered in bad faith”).

Furthermore the Complainant submits that the Respondent is offering the disputed domain name for sale, and is thereby demonstrating an intent to sell, rent, or otherwise transfer the disputed domain name for valuable consideration in excess of his out-of-pocket expenses which constitutes bad faith under Policy, paragraph 4(b)(i). In this regard the Complainant cites the decision of the panel in Etihad Airways PJSC v. Sohail Nazar, WIPO Case No. D2013-1608 (“But the intention to profit from confusion between a disputed domain name and a trademark, or to profit from the sale of a disputed domain name identical or confusingly similar to a trademark, are in themselves sufficient to establish bad faith in the registration and use of the disputed domain names”).

Referring to the WIPO Overview 3.0 at section 3.2, the Complainant furthermore submits that at the time of initial filing of the Complaint, the Respondent had employed a privacy service to hide its identity, which past UDRP panels have held serves to be further evidence of bad faith registration and use when done in conjunction with other bad faith indicators.

Finally, the Complainant refers to a cease-and-desist letter that he sent to the Respondent which has been exhibited in an annex to the Complaint and submits that the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Referring to the decision in Encyclopaedia Britannica v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 (failure to positively respond to a demand letter provides “strong support for a determination of ‘bad faith’ registration and use”) and RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242 (finding bad faith where “The Complainant alleges that it sent numerous cease and desist letters to [r]espondent without receiving a response”), the Complainant submits that the Respondent’s failure to respond to his cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of the disputed domain name.

The Complainant submits therefore that the disputed domain name was registered and is being used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location of a product or service on Respondent’s website or location.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to establish that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has proven that he has rights in the CHATROULETTE mark acquired through his ownership of the above-listed portfolio of registered trademarks and the reputation of his website business.

The disputed domain name consists of three elements namely the word “chatroulette”, which is the Complainant’s distinctive trademark in its entirety, the word “pictures” and the gTLD “.com” extension.

Having compared the Complainant’s trademark and the disputed domain name, this Panel finds that “chatroulette” is the first, dominant and only distinctive element of the disputed domain name; that the word “pictures” does not distinguish the disputed domain name in any way; and that in the circumstances of this present Complaint the gTLD “.com” extension may be ignored for the purpose of comparison. This Panel finds therefore that the disputed domain name is confusingly similar to the Complainant’s CHATROULETTE mark.

The Complainant has therefore succeeded in the first element of the test in the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. He has submitted, supported by evidence, that he has exclusive rights in the CHATROULETTE mark through his registered trademark and international goodwill and reputation. He has averred that the mark is a coined word which he chose and promoted as a trademark on his website. He has asserted that he has no association with the Respondent and in fact had no knowledge of the identity of the Respondent when he filed the Complaint. There is no evidence that the Respondent has ever been known by the disputed domain name, nor is there any evidence that the Respondent has used the disputed domain name for any bona fide trade in goods or services or has made any legitimate noncommercial or fair use. The website to which the disputed domain name resolves purports to have links to services that compete to some extent with the Complainant’s business. The Respondent is offering the disputed domain name for sale but such an offer cannot amount to a bona fide business, particularly as the disputed domain name clearly references the Complainant’s business.

In such circumstances it is well established under the Policy that the burden of production shifts to the Respondent who has failed to file any Response to the Complaint.

This Panel finds therefore that the Respondent has no rights or legitimate interests in the disputed domain name and the Complainant has therefore satisfied the second element of the test in Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant has also proven on the balance of probabilities that the disputed domain name was registered and is being used in bad faith. The Complainant’s <chatroulette.com> domain name was registered on November 16, 2009 and the Complainant launched his website at that domain name shortly thereafter. The Complainant’s website was an immediate success and gained a significant number of visitors and media attention. The Complainant then filed an application to register CHATROULETTE as a US trademark in January 2011. Within weeks the disputed domain name was registered anonymously.

The Panel notes that of the articles which the Complainant has adduced in the annex to the Complaint only two namely in The New York Times on February 13, 2010 and the New York magazine on February 5, 2010 pre-dated the registration of the disputed domain name on February 21, 2010. These are nonetheless prominent publications.

Given the quickly-acquired reputation of the Complainant’s website, the amount of media attention, the distinctive character of the Complainant’s CHATROULETTE trademark, the fact that the trademark is the dominant element of the disputed domain name and that on the balance of probabilities the registrant of the disputed domain name would have become aware of the Complainant’s trademark and <chatroulette.com> domain name when going through the registration process for the disputed domain name, this Panel finds on the balance of probabilities that the disputed domain name was chosen and registered to attract and divert Internet traffic away from the Complainant’s website by creating confusion and taking predatory advantage of the Complainant’s goodwill and reputation.

On the evidence, this Panel finds that the Respondent has caused, permitted or allowed the disputed domain name to resolve to a website which has links to content which competes with the Complainant’s business. In the circumstances this Panel accepts the Complainant’s submission and finds that on the balance of probabilities the disputed domain name was registered and is being used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location of a product or service on the Respondent’s website or location.

Additionally the Respondent’s offer to sell the disputed domain name for a profit, however small, over and above the cost of registration, while endeavouring to conceal its identity by means of a privacy service are further evidence of bad faith registration and use when done in conjunction with other bad faith indicators described above.

The Complainant has therefore satisfied the third and final element of the test in Policy, paragraph 4(a)(iii) and is entitled to succeed in his Complaint.

7. Decision

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 <chatroulettepictures.com> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Date: February 28, 2018