WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Domain Hostmaster, CustomerID: 61529007151882, Whois Privacy Services Pty Ltd / Xedoc Holding SA
Case No. D2018-0201
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondents are Domain Hostmaster, CustomerID: 61529007151882, Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia (the "First Respondent"), unrepresented / Xedoc Holding SA of Luxembourg (the "Second Respondent"), represented by Law.es, Spain.
2. The Domain Name and Registrar
The disputed domain name <chatroulette.org> (the "Domain Name") is registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 31, 2018. Initially, the Complaint was filed in relation to two domain names, the Domain Name and <chatroullette.com>, both of which were originally registered on November 19, 2009 by a third party. The original Complaint cited as respondents the First Respondent and the original registrant (not a party to this proceeding) of those domain names. On January 31, 2018, the Center transmitted by email to the Registrars (each domain name was with a different registrar) a request for registrar verification in connection with those domain names. On February 1, 2018, the Registrar transmitted by email to the Center its verification response confirming that the First Respondent is listed as the registrant of the Domain Name and providing the contact details. On the same day the registrar for the other domain name identified the original registrant as the registrant of that domain name. On it being drawn to the Complainant's attention that the two domain names were held in the names of different entities, the Complainant filed an amended Complaint on February 23, 2018, removing one of the domain names (<chatroullette.com>) from the dispute and citing the First Respondent as the registrant of the Domain Name.
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 First Respondent of the Complaint, and the proceedings commenced on February 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2018. On February 27, 2018, the Complainant forwarded a request for suspension of the proceeding to the Center. The proceeding was suspended the same day. On March 28, 2018, a request for reinstitution of the proceeding from the Complainant was received by the Center. The Center notified the Parties on March 29, 2018 of the reinstitution of the proceeding and that all time periods were calculated from the reinstitution date. The new due date for Response was April 17, 2018. After a request from the Second Respondent, the Center extended the due date for the Response to April 21, 2018, in accordance with paragraph 5(b) of the Rules. The Response was filed with the Center by the Second Respondent on April 21, 2018.
The Center appointed Tony Willoughby, Alexandre Nappey, and Fernando Triana as panelists in this matter on May 25, 2018. The Panel finds that it was properly constituted. Each member of 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.
It being noted by the Panel that there had been no registrar verification as to the Second Respondent's ownership of the Domain Name, at the Panel's direction on June 1, 2018 the Center issued a request to the Registrar for further information as to the ownership of the Domain Name. The Registrar responded on June 8, 2018 in the following terms: "the domain name you are referring to has a privacy service. The only way to retrieve the underlying information is from a subpoena. If you already have one, you can send it to firstname.lastname@example.org to get the information." The issue is dealt with further in Section 6B below, but the Registrar subsequently confirmed by way of an email of June 22, 2018 that the Second Respondent is the underlying registrant of the Domain Name. Henceforth in this decision the term "Respondent" is used to refer exclusively to the Second Respondent.
Unsolicited supplemental filings have been received from the Complainant on April 26, 2018, June 5, 2018, and June 13, 2018 and from the Respondent on June 4, 2018. To the extent that the content of those filings has been of assistance to the Panel it has been noted and taken into account.
The Complainant's unsolicited Supplemental filing of June 13, 2018 appeared on its face to undermine a major plank of the Respondent's case; thus it was admitted into this administrative proceeding. On June 18, 2018 the Respondent was given an opportunity by way of Procedural Order No. 1 to respond to the Complainant's claims. The Respondent duly responded on June 20, 2018.
4. Factual Background
The Complainant is Andrey Ternovskiy, the owner of the "Chatroulette" ("www.chatroulette.com") website, an online chat website that pairs random people from around the world for real-time, webcam-based conversations. He registered the <chatroulette.com> domain name on November 16, 2009 and launched his website that day or very shortly thereafter.
The Complainant's domain name <chatroulette.com> was first registered however by a German registrant in an earlier creation on April 21, 2005 and connected to a German language website featuring a heading reading "Flirten, Dating, Entertainment, Freunde finden, …..!".
The evidence before the Panel supports the Complainant's contention that his website rapidly achieved notoriety. On February 10, 2010 (a few months after the complainant launched its services) the New York Times published an article on the Complainant and his website reporting that on a typical night the website attracted 20,000 visitors.
The Complainant is the owner of several trade mark registrations covering the "Chatroulette" name including by way of example European Union Trade Mark Registration No. 008944076 CHATROULETTE (word), registered on December 4, 2012 (application filed on March 10, 2010) for a variety of services in classes 35, 38, and 42.
According to the Complainant's Supplemental Filing, the Domain Name, <chatroulette.org>, was registered on November 19, 2009 by Isaac Paul, a resident of the United States of America, who also registered on the same day the domain name, <chatroullette.com>. The latter domain name has recently been transferred to the Complainant following a decision dated April 20, 2018 in Andrey Ternovskiy dba Chatroulette v. Isaac Paul, WIPO Case No. D2018-0459. The Parties' various submissions as to the date on which the Respondent acquired the Domain Name are sloppy, to say the least. In the original Complaint and Response, both Parties state that the Respondent registered the Domain Name on November 19, 2009. Then, correspondence from the Respondent's representative (to the Complainant) in February 2018, states that "From our review it appears that this domain name was acquired as a part of a domain portfolio in February 2010." At the same time however, Exhibited to the Supplemental Response is an Exhibit showing a SEDO transaction referencing a sales contract dated November 14, 2010. (Adding further confusion, the schedule of Annexes in the Respondent's Supplemental Response lists "SEDO Invoice re domain name purchase November 6, 2010".) Finally, the Complainant's Supplemental Filing purports to show that in December 2010 the contact details for the Domain Name moved to a privacy service.
Taking what seems to ultimately be shared per the Parties' own disorganized evidence, it appears that the Respondent acquired the Domain Name on November 14, 2010. It appears to have been connected to various webpages featuring Pay-Per-Click ("PPC") links primarily to websites offering adult services.
On June 4, 2015 the Complainant's representative emailed a cease and desist letter addressed to the First Respondent, a privacy service based in Australia. The letter drew attention to the Complainant's trade mark rights, set out the nature of the feared damage to the Complainant's reputation and goodwill, and sought transfer of the Domain Name. In the absence of a reply, a "chaser" was sent on June 16, 2015.
On June 17, 2015 the Complainant's representative received an email from a lawyer stating that he represented the registrant of the Domain Name without indicating that he was representing anyone other than the privacy service to which the cease and desist letter was addressed. It now turns out that he was representing the underlying registrant, the Respondent. The email denied the Complainant's request for transfer of the Domain Name and contended that the Respondent did not have a case to answer based on the fact that registration of the Domain Name pre-dated the earliest of the Complainant's registered trade marks and that the expression "chat roulette" had been widely used in a descriptive sense by third parties. The Respondent asserted that it was in that sense that the Respondent had been using it.
That correspondence ended there.
The correspondence was revived when the Respondent learnt in the course of February 2018 that the Complainant had launched the fore-runner to this Complaint (see Section 3 above).
On February 20, 2018 the Complainant's representative received an email from the lawyer representing the Respondent observing that any complaint under the Policy was likely to fail for similar reasons indicated in the 2015 correspondence. The letter stated that the Respondent had no connection with either Isaac Paul, the original registrant of both the domain names, the subject of the fore-runner to this Complaint, or the registrant of the <chatroullette.com> domain name included in that earlier complaint. The letter pointed out that a multi-party complaint was therefore inappropriate and that it would be sensible to come to an amicable settlement to avoid the cost of filing a new complaint.
On February 22, 2018 the Complainant's representative stated that the Complainant was open to an amicable settlement and invited the Respondent's representative to put forward a settlement proposal.
On February 22, 2018 the Respondent's representative suggested that the dispute could be amicably settled by the Complainant paying USD 1,200 for the Domain Name.
On February 22, 2018 the Complainant's representative indicated that the Complainant was prepared to pay USD 300 for the Domain Name, that being the figure that represented, in the view of the Complainant, the maximum of the Respondent's likely out-of-pocket expenses in respect of the Domain Name.
On February 23, 2018 the Respondent's representative responded, the essence of the response being:
"My client's domain was acquired from a prior owner who had held it for many years;
My client registered the domain well before your client's trademark;
Your client does not appear to have owned its domain name until just prior to my client having acquired its domain;
Your complaint attempts to join two completely independent registrants; and,
I have seen no evidence that would establish that my client was on notice as to any trademark your client could assert. The term 'chat' + 'Roulette' is descriptive in as much as it calls directly to mind the ability to converse with another on a random basis."
On February 27, 2018 the Complainant's representative sought from the Center and was granted suspension of this administrative proceeding to allow for settlement discussions to take place.
On February 28, 2018 the Complainant's representative emailed the Respondent's representative offering USD 1,000 as a settlement figure.
The Respondent's representative responded the same day indicating that they had already reached an agreement by email at USD 1,200.
On March 1, 2018 the Complainant's representative apologised for the error and confirmed agreement at USD 1,200, indicating that an escrow account had been set up. The Respondent's representative responded indicating that all was well save that the escrow account would have to be amended because the money was to be received by another account holder.
The following day the Complainant's representative emailed the Respondent's representative stating "Before we proceed with funding the transaction, we will want to complete and submit the Settlement Form to WIPO. Please see attached Settlement Form for your signature. Once the Settlement Form has been sent to WIPO, we will then add funds to the transaction".
On March 7, 2018 the Respondent's representative returned the form duly signed, but having made amendments one of which was to state that the complaint under the Policy was to be dismissed "with prejudice".
On March 9, 2018 the Complainant declined to agree to dismissal of the Complaint "with prejudice". The Respondent's representative responded with a request for an explanation why the Complainant would wish to retain the right to file a fresh complaint against the Respondent in respect of the Domain Name.
The Complainant's representative responded in the following terms:
"Our client sincerely wishes to settle this case. However, for our client's added protection, we wish to settle this case without prejudice. Our client wishes to have the opportunity to be able to cite this case, either in court or through any other arbitration procedure, in the event that there are other domain names held by your client, which are infringing on the CHATROULETTE trademark that we do not know about yet. If this is not the case, there is no reason for you or your client to object in settling this case without prejudice."
Following a further exchange in which the Complainant's representative stated that settlement "without prejudice" was a non-negotiable issue, the Respondent's representative emailed a response on March 22, 2018 stating that while he did not understand the logic of the Complainant's position, his client was prepared reluctantly to agree to a "without prejudice" settlement and invited the Complainant's representative to
re-send the Settlement agreement suitably amended.
On March 28, 2018 the Complainant requested that the proceeding be re-instated.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical to the Complainant's CHATROULETTE trade mark. The Complainant contends that in addition to his registered trade marks he had rapidly acquired, prior to the coming into force of those registered trade marks, unregistered trade mark rights derived from his substantial use (and the substantial level of recognition) of the "Chatroulette" name.
He contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. First, he points to the provisions of paragraph 4(c) of the Policy stating that the Respondent is not commonly known by the name "Chatroulette". He states that the use being made of the Domain Name by the Respondent is not a fair noncommercial use, but a commercial use which is not a bona fide offering of services within the meaning of paragraph 4(c)(i) of the Policy, the Domain Name being connected to PPC links, which cannot constitute a bona fide offering. He also claims that the circumstances are such that the Respondent must have known of the Complainant's trade mark when it acquired the Domain Name, it being a unique name coined by him which had achieved such rapid success and that the Respondent's intent must have been to exploit the Complainant's trade mark for its own benefit.
On that same basis the Complainant contends that the Domain Name has been registered and is being used in bad faith. He also points to the fact that the Domain Name resolves to another website at "www.omgroulette.com", which he contends is also evidence of bad faith diversion of traffic. Moreover he contends that the Respondent's use of a privacy service is evidence of bad faith as is the Respondent's use of the Domain Name in relation to adult chat services.
The Respondent observes that while the Domain Name at the second level is identical to the Complainant's CHATROULETTE trade mark, that trade mark post-dates registration of the Domain Name and should not lead to a finding in favour of the Complainant under the first element of the Policy. The Respondent recognizes that on a simple text-to-text approach to the issue, the approach adopted by most, if not all, UDRP panels deciding these cases, the Complaint succeeds under this element of the Policy, but it disagrees with this approach.
The Respondent contends that it has rights or legitimate interests in respect of the Domain Name. It acquired the Domain Name in ignorance of the Complainant and its trade mark. It had no reason to believe that the expression "chatroulette", a commonly used descriptive term in the adult services industry, was a trade mark. It could not have been aware of the Complainant's registered trade mark because the registration did not come through until after the Respondent acquired the Domain Name. When the Domain Name was registered (only 3 days after the Complainant registered <chatroulette.com>) the Complainant could not have built up a sufficient reputation and goodwill to give rise to any unregistered trade mark rights. (See the above discussion however on the timing of the Respondent's acquisition of the Domain Name.)
The Respondent has consistently used the Domain Name to connect to websites providing adult services and/or links to such websites, which is a use appropriate to the descriptive meaning of "chatroulette" as evidenced by the material annexed to the Response showing descriptive usage of the term going back to 2001. Indeed, the material shows that there was an earlier registration of the Domain Name going back to 2005. The Domain Name has been used consistently in a straightforward descriptive manner for a bona fide offering of services. The Respondent contends that it acquired the Domain Name in complete ignorance of the Complainant and his trade mark.
On the same basis the Respondent contends that the allegation of bad faith registration and use is misconceived.
The Respondent further contends that it had concluded an agreement for transfer of the Domain Name prior to the re-instatement of this administrative proceeding and on that ground alone, on payment by the Complainant of the agreed contract sum and simultaneous transfer of the Domain Name, the Respondent is entitled to dismissal of the Complaint.
C. Complainant's Supplemental Filing of June 13, 2018
A major plank of the Respondent's answer to this Complaint is that the Complainant did not, as claimed, coin the expression "Chatroulette", but that this expression had been in third party use descriptively from at least as early as 2001. As will be seen below much of that evidence came from a Google search result exhibited by the Respondent providing details of the websites mentioning the expression and the dates of use.
The Complainant's Supplemental Filing of June 13, 2018 produced evidence purporting to show that that evidence was flawed at any rate as to the alleged dates of use going back to 2001. The Respondent's response to Procedural Order No. 1 sought to answer the point.1
D. Settlement Agreement
As indicated in B above and in Sections 3 and 4 above, following the filing of the original Complaint that proceeding was suspended to permit settlement discussions to take place. They failed and each party blames the other for that failure. The Respondent contends that the Respondent has a contractual right to the Domain Name. As will be seen below, the Panel has not felt it necessary to address the issue as to whether or not the Respondent has rights or legitimate interests in respect of the Domain Name.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
B. Identity of the Respondent
Initially there was no verification from the Registrar as to the (Second) Respondent's ownership of the Domain Name despite a recent request issued to the Registrar. Indeed the Registrar indicated in response to that request that for it to verify that the Respondent is the underlying registrant, it would need to be served with a subpoena.
It may be that from time to time a registrar may decline to disclose the identity of an underlying registrant, but in the experience of the Panel it is unique for a registrar to adopt that line – moreover where, as here, the underlying registrant had volunteered its identity. Indeed, it raised for the Panel an obvious question as to whether the claimed underlying registrant was in fact the underlying registrant, and why the Registrar would have refused such disclosure.
One aspect of Procedural Order No. 1 was an invitation to the Respondent to repair the omission by producing evidence to verify its ownership of the Domain Name. The Registrar has also now provided the necessary verification.
The Panel observes that a registrar's failure to provide the requested registrar verification in the context of a UDRP case (noting, e.g., paragraph 4 of the Rules) may raise questions as to its motivation.
C. Identical or Confusingly Similar
While noting the Respondent's position on this (see Section 5B above), the Domain Name features, as the Respondent acknowledges, an identical representation of the Complainant's CHATROULETTE trade mark at the second level. The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
In light of the Panel's finding under E below, it is unnecessary for the Panel to address this issue.
E. Registered and Used in Bad Faith
The Complainant claimed that he coined the term, "Chat Roulette", in 2009.
The evidence of the Respondent included search engine search results and domain name WhoIs results showing that the expression, "Chat Roulette", had been in use on the Internet since at least 2001 and had been in prior use for <chatroulette.com>, the very domain name which the Complainant claimed to have coined and registered in 2009, which was in fact registered in an earlier creation in April 2005 by a German individual. The Respondent has produced a screenshot of the website connected to that earlier iteration of the Domain Name as at April 28, 2007 featuring a heading reading "Flirten, Dating, Entertainment, Freunde finden, …..!" and a slogan reading "Chatroulette Die Flirtsensation!".
A Google search result for the term "chatroulette" produced to the Panel by the Respondent featured entries headed "Radchats: FEEE Online Cam chat – Omegle, Chatroulette alternative" (November 16, 2005); "Chatroulette Sex Tape – You Tube" (April 1, 2008); "Chatroulette Style Webcam Chat – Random Video Chat Omegle Multi…" (December 10, 2005); "Chatroulette – El Chat" (February 1, 2001); "r/Chatroulette on Imgur" (February 1, 2002); [then two entries referencing the Complainant's website and dated November 2009]; "Free Video Chatroulette – Chat Revolve" (February 1, 2001); "! Russian Site Like Chatroulette ! – uCan Technologies" (August 25, 2007).
The Complainant's unsolicited Supplemental Filing of June 13, 2018 produced WhoIs search results showing that the creation dates of the domain names referred to in the above Google search result post-dated the dates in brackets in the above paragraph and thus that the evidence of the Respondent was not to be relied upon. The Respondent dealt with the matter in its response to Procedural Order No. 1 demonstrating that creation dates in WhoIs search results only relate to that particular creation of the domain name in question, and that the current creation date does not mean that there may not have been earlier creations of the same domain name. While the Respondent's response may not have dealt specifically with all the above-mentioned domain names, it dealt with some of them and the Panel has concluded on the balance of probabilities that the expression "chatroulette" had been in descriptive use by third parties for many years prior to the Complainant's first use of the expression.
The Panel does not suggest that the Complainant intentionally misled the Panel. As he says, he was a 17 year old when he devised his website and was maybe unaware of the material produced by the Respondent, and in relying heavily on his current fame, his representative overlooked prior use of the term. Nonetheless, it is incontrovertible that he was not the first or only person to use the expression.
For the Complaint to succeed the Panel has to be satisfied on the balance of probabilities that the Respondent acquired the Domain Name, knowing of the Complainant's trade mark (or nascent trade mark rights) and acquired the Domain Name with a view to taking advantage of the Complainant's trade mark (or nascent trade mark rights).
The Respondent states that it was unaware of the Complainant and its trade mark rights when it acquired the Domain Name in November 2010, before any of the Complainant's trade mark registrations came through.
That may indeed have been the case.
Another possibility is that the Respondent was aware of the Complainant's stunning and rapid success, and seeing the Complainant's registration of the ".com" version, acquired the Domain Name to take advantage of the Complainant's success, riding on the back of the Complainant's goodwill.
Another possibility is that whether or not it was aware of the Complainant's success, it reasonably viewed "chatroulette" as a descriptive term commonly in use online in the random chat and adult services industry.
There are a number of troubling aspects to this case; not least that by the time the Respondent acquired the Domain Name, the Complainant had been successfully exploiting its "Chatroulette" name for nearly a year. It is somewhat remarkable that the Respondent, operating in broadly the same area of online business activity, was not aware of it, when it acquired the Domain Name. Had the Respondent's denial of knowledge been a bare denial unsupported by any evidence, the Panel would have had no difficulty in ordering transfer. However, as indicated, the Respondent has produced sufficient evidence of prior descriptive use of the term to raise doubts in the minds of the Panel as to the motive of the Respondent at the date that it acquired the Domain Name. The burden of proof is on the Complainant. The Panel takes the view that the Respondent's denial of knowledge of the existence of the Complainant and his trade mark at that date is credible enough to require more from the Complainant to overcome. The Panel concludes that it would be unsafe on the evidence before it to reject the Respondent's denial and conclude that the Respondent intentionally set out to acquire the Domain Name in bad faith to target the Complainant.
Accordingly, the Panel finds that the Complainant has failed to establish that the Domain Name has been registered and is being used in bad faith.
For completeness, the Panel does not believe that in this case the Respondent's use of a privacy service is necessarily indicative of bad faith on the part of the Respondent. It is to be noted that when the Complainant addressed his cease-and-desist letter to the privacy service in 2015 (see section 4 above), the Respondent's representative responded in timely fashion.
Nor does the Panel believe that the resolving of the Domain Name to a webpage at "www.omgroulette.com" without more constitutes evidence of bad faith. As indicated above, the view of the Panel is that the limited evidence before it shows that the use to which the Domain Name has been put has been consistent with the descriptive meaning of the expression "chatroulette", even if redirected. That use has been described by the Complainant in the following terms: "Since 2011, it appears the Disputed Domain Name has been used to redirect to adult live chat services, and currently it redirects to a website found at <omgroulette.com>, which features adult chats and live sex cam services. This provides evidence of Respondent's bad faith registration and use of this domain name."
If it was the case that the expression "chatroulette" was not in third party use back in 2010 when the Respondent acquired the Domain Name, the Complainant's argument would have had significantly greater force. As it is, on the evidence before the Panel, the Complainant has not discharged its burden, and resolution of this matter would be better addressed by a court where discovery and examination can better get at the Respondent's motives and knowledge. The Panel finally notes that both Parties' various pleadings in this matter (not to mention the failure to reach an amicable settlement) have in certain respects been difficult to understand and that the competing claims dealt with through various supplemental submissions and panel orders illustrate a case that pushes the UDRP to its outer limits for resolving the disputes for which it was designed.
For the foregoing reasons, the Complaint is denied.
Date: June 27, 2018
1 To the extent that the Respondent's response to Procedural Order No. 1 dealt with other matters, which could and should have been included in the original Response, the Panel has ignored them.