WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Domain Privacy, Above.com Domain Privacy
Case No. D2018-0307
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Domain Privacy, Above.com Domain Privacy of Beaumaris, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <chatrouletteofsex.com> is registered with Burnsidedomains.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2018. On February 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2018, 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 February 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2018.
The Center appointed Zoltán Takács 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
Chatroulette, created and owned by the Complainant is an online chat website that pairs random people from around the world together for real-time, webcam-based conversations.
The Complainant created the Chatroulette service and website in 2009 and shortly after its launch it began to receive 500 visitors per day while continuing to experience consistent growth. Only one month after its launch the number of visitors grew to 50,000 per day, approximately 1.5 million per month.
According to Alexa.com statistics, the Chatroulette website, located at <chatroulette.com> received over 270,000 unique monthly visitors in the month of December 2017, earning a global popularity rank of 18,214.
The Complainant owns a number of trademark registrations for the word mark CHATROULETTE, among others:
- United States of America (“US”) Trademark Registration No. 4445843, registered on December 10, 2013, for services of Classes 38 and 45 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks (the “Nice Classification”);
- European Union Trade Mark (“EUTM”) Registration No. 008944076, registered on December 4, 2012, for services of Classes 35, 38 and 42 of the Nice Classification.
Since November 16, 2009, the Complainant owns the domain name <chatroulette.com> which identifies the principal website for his Chatroulette service.
The disputed domain name was registered on May 11, 2016, and it redirects to a website featuring links to third-party websites some of which are in direct competition with the Complainant’s business.
Prior to filing its Complaint the Complainant sent a cease-and-desist letter to the Respondent requesting cease of any use of the disputed domain name and transfer of it to the Complainant. The Respondent did not reply to the Complainant’s communication.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <chatrouletteofsex.com> is confusingly similar to his CHATROULETTE trademark since it reproduces the trademark in its entirety and the addition of generic terms “of” and “sex” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant states that the Respondent incorporated his CHATROULETTE trademark in the disputed domain name with obvious intent to capitalize on the reputation of it by diverting Internet users seeking information about the Complainant to its own website featuring pay-per-click links, which among others is evidence of bad faith registration and use.
The Complainant submits that the Respondent has been using a privacy service to hide its identity and has ignored his attempts to resolve this dispute in an amicable way, which past UDRP panels have held serve as further indications of bad faith registration and use.
The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
As noted in many previous UDRP panel decisions, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must prove each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
As noted by many UDRP panels, if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant proved that he holds registered rights in the trademark CHATROULETTE, and for the purpose of this proceeding the Panel establishes that the Complainant’s US Trademark Registration No. 4445843 and EUTM Registration No. 008944076 for the word mark CHATROULETTE satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the CHATROULETTE mark, the Panel next assessed whether the disputed domain name <chatrouletteofsex.com> is identical or confusingly similar to the CHATROULETTE trademark of the Complainant.
According to section 1.7 of the WIPO Overview 3.0 “[t]he standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”
According to section 1.8 of the WIPO Overview 3.0 “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
According to section 1.11.1 of the WIPO Overview 3.0 “[t]he applicable Top Level Domain (ʻTLDʼ) in a domain name (e.g., ʻ.comʼ, ʻ.clubʼ, ʻ.nycʼ) is viewed as a standard registration requirement and as such is disregarded under the first element confusingly similar test”.
The disputed domain name incorporates the Complainant’s CHATROULETTE trademark in its entirety.
The only elements in the disputed domain name that differ from the CHATROULETTE trademark of the Complainant are the generic, dictionary words “of” and “sex”, which are not sufficient to prevent a finding of confusing similarity under the first element of the Policy.
The applicable generic Top-Level Domain (“gTLD”) suffix in the disputed domain name “.com” should in relation to this administrative proceeding be disregarded.
On the basis of facts and circumstance discussed above the Panel finds that the disputed domain name <chatrouletteofsex.com> is confusingly similar to the CHATROULETTE trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that he holds well-established prior rights in the trademark CHATROULETTE.
The Complainant has never authorized the Respondent to use his CHATROULETTE trademark in any way, and the Complainant’s prior rights in the CHATROULETTE trademark precede the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights of legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Complainant presented undisputed evidence which convinces the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
The reputed CHATROULETTE trademark of the Complainant has no dictionary meaning; it’s a word invented by the Complainant and therefore highly distinctive for the corresponding services.
According to section 3.1.4 of the WIPO Overview 3.0, panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can itself create a presumption of bad faith.
In the Panel’s opinion the only conceivable explanation for the Respondent’s choice to register the disputed domain name that reproduces the widely-known trademark of the Complainant is to exploit the reputation behind the CHATROULETTE trademark without any authorization or rights to do so.
The disputed domain name resolved and resolves to a pay-per-click website displaying links to services some of which directly competing with those of the Complainant.
Using domain names incorporating third-party trademark to divert Internet users to pay-per-click websites generating revenue for either the Respondent or anyone else is activity that is well within paragraph 4(b)(iv) of the Policy.
According to section 3.6 of the WIPO Overview 3.0 “where it appears that a respondent employs a privacy or proxy shield merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference”.
The Respondent neither submitted a response to the Complaint nor addressed communications of the Complainant aimed at amicable resolution of the dispute and in view of this Panel these facts further support inference of bad faith disregard of the Respondent for the trademark rights of others.
The Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 <chatrouletteofsex.com> be transferred to the Complainant.
Date: April 3, 2018