WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. WhoisProtectService.net/PROTECTSERVICE, LTD / Petr Rusin
Case No. D2018-0304
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is WhoisProtectService.net/PROTECTSERVICE of Limassol, Cyprus / Petr Rusin of Oleksandrivka, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <chatroulettegirls.net> ("Domain Name") is registered with Danesco Trading Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 9, 2018. On February 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 13, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 14, 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 (hereafter the "Complaint") on February 19, 2018.
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 February 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2018. The Respondent did not submit any response, though prior to the commencement of the proceeding sent two emails to the Center with procedural questions.
The Center appointed Nicholas Smith as the sole panelist in this matter on March 22, 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.
4. Factual Background
The Complainant is an individual, who in 2009, when he was a 17 year old high school student in Moscow, created an online chat website known as Chatroulette. Chatroulette pairs random people from around the world for real-time, webcam-based conversations. By February 2010, the Complainant's Chatroulette service was receiving 130,000 visitors per day. The rapid growth of the Chatroulette service in 2009 and 2010 lead to significant media interest in the Complainant and his service. As of 2015-16 the Chatroulette service averaged over 260,000 unique monthly visitors.
The Complainant holds registered trade marks in the European Union, German and the United States for the word mark "chatroulette" (the "CHATROULETTE Mark") with the European Union registrations (registration number 008944076) having been applied for in 2010 and granted in December 2012 for services in classes 35, 38 and 42 including providing chatrooms and portals on the Internet.
The Domain Name was registered by the Respondent on May 5, 2013. It presently redirects to a website that indicates that the website is undergoing maintenance but prior to the commencement of the proceeding redirected to a website (the "Respondent's Website") with the title "Chatroulette girls video" that offered pornographic content, including adult chats and live sex cam services.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's CHATROULETTE Mark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the CHATROULETTE Mark, having registered the CHATROULETTE Mark in various jurisdictions including the European Union, Germany and the United States of America.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name nor has the Complainant provided a licence or authorization to register the Domain Name or any domain name incorporating the CHATROULETTE Mark. There is no evidence, since the Respondent registered the Domain Name, of the Respondent's use of, or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose. The Domain Name resolved to a page that featured pornographic material. Numerous past Panels have held that use of a domain name that is confusingly similar to a complainant's trade marks to link to a website featuring pornographic or adult content evinces a lack of legitimate rights or interests. See, MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205.
The Domain Name was registered and is being used in bad faith. The Respondent had knowledge of the CHATROULETTE Mark by virtue of the Complainant's widespread use and trade mark registrations. Such knowledge is an indication of bad faith registration. The Respondent is using the Domain Name for a pornographic website providing adult chats and live sex cam services. Such use amounts to use in bad faith under the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the CHATROULETTE Mark, having registrations for the CHATROULETTE Mark as a trade mark the European Union, Germany and the United States of America.
The Domain Name consists of the CHATROULETTE Mark in its entirety and the descriptive term "girls". The addition of a descriptive term does not negate the confusing similarity between the Domain Name and the Complainant's CHATROULETTE Mark.
The Panel finds the Domain Name is confusingly similar to the Complainant's CHATROULETTE Mark. Consequently the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."
The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the CHATROULETTE Mark or a mark similar to the CHATROULETTE Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial fair use.
The Domain Name is presently under maintenance but prior to the commencement of the proceeding linked to a website offering pornographic services. The use of the CHATROULETTE Mark to direct visitors to website unassociated with the Complainant offering pornographic services does not amount to use for a bona fide offering of goods and services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has failed to rebut that prima facie case and establish that it has rights or legitimate interests in the Domain Name under the Policy. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has 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 mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. (Policy, paragraph 4(b)).
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the CHATROULETTE Mark at the time the Respondent registered the Domain Name. At the time the Domain Name was registered the Complainant and its Chatroulette service had achieved significant global notoriety. The Domain Name consists of the coined word "chatroulette" along with the descriptive term "girls". The Respondent has provided no explanation, and none is immediately obvious, why an entity would register a domain name containing "chatroulette", unless there was an awareness of and an intention to create a likelihood of confusion with and the Complainant and its CHATROULETTE Mark. The Respondent's conduct in registering the Domain Name when it was aware of the Complainant's reputation and lacked rights and legitimate interests of its own is registration in bad faith.
The Respondent's Website offered pornographic services under the title "Chatroulette Girls Videos", for which it is likely to receive revenue. In these circumstances where the Respondent has offered no plausible good faith explanation for the registration of the Domain Name, the Panel finds that that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the CHATROULETTE Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's Website. As such the Panel finds that the Domain Name is being used in bad faith. The fact that the Domain Name is presently under maintenance does not change this finding.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in 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 Domain Name <chatroulettegirls.net> be transferred to the Complainant.
Date: March 25, 2018