WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Goncharov Aleksei IUrevich
Case No. D2018-0372
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Goncharov Aleksei IUrevich of Kiev, Ukraine.
2. The Domain Names and Registrar
The disputed domain names <chatrouletteipad.com>, <chatrouletteiphone.com>, <chatroulettephone.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2018. On February 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 22, 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 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2018.
The Center appointed Marilena Comanescu as the sole panelist in this matter on March 26, 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.
The language of the proceeding is English.
4. Factual Background
The Complainant is the creator and the 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 trademark is a combination between the words “chat” and “roulette”, the later deriving from the Russian roulette and associates the activity of chatting with the thrill of unpredictability. The Complainant’s website was launched in 2009 and quickly grew in popularity worldwide. Beginning with the year 2010, the website and its owner were featured in prominent publications such as The New York Times, New York Magazine as well as in popular television shows, including Good Morning America and The Daily Show with Jon Stewart.
The Complainant owns various trademark registrations for CHATROULETTE mark, such as:
- the European Union trademark registration no. 008944076 for the word CHATROULETTE filed on March 10, 2010 and registered on December 4, 2012 for services in International Classes (“IC”) 35, 38 and 42;
- the United States of America trademark registration no. 4445843 for the word CHATROULETTE filed on January 10, 2011 and registered on December 10, 2013 for services in IC 38 and 45; and
- The Russian Federation trademark no. 429957 for the word CHATROULETTE filed on March 11, 2010 and registered on February 10, 2011 for services in IC 35, 38 and 42.
The disputed domain name <chatrouletteipad.com> was registered on March 4, 2013 and resolves to a website that attempts to spread malware and viruses to Internet users.
The disputed domain name <chatrouletteiphone.com> was registered on February 13, 2013 and resolves to a webpage offering online video chat services.
The disputed domain name <chatroulettephone.com> was registered on February 13, 2013 and redirects Internet users to a website that resolves to a blank page that lacks content.
Prior to commencing the present proceeding, the Complainant sent a cease-and-desist letter to the Respondent but no response was received.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to its trademark CHATROULETTE which is distinctive and famous as they incorporate such mark together with the generic words “iphone”, “Ipad” and “phone”, that the Respondent has no rights or legitimate interests in the disputed domain names and that the Respondent registered and uses the disputed domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Procedural Issue: Transfer of the Disputed Domain Names containing a Third Party’s Trademark
The Complainant alleges that the disputed domain names are formed of its mark and generic terms. The Panel finds this allegation applicable only to the disputed domain name <chatroulettephone.com>, containing the word “phone”. However, the other two disputed domain names, <chatrouletteipad.com> and <chatrouletteiphone.com> in fact incorporate the Complainant’s mark and the trademarks IPAD and IPHONE, owned by a third party which is Apple Inc.
This fact raises the important procedural issue of whether, in the event the Complaint is successful, there is any impediment to ordering the remedy sought by the Complainant – being, transfer of the disputed domain names to it in cases where the trademark holders have no prior agreement or any mutual consent for such remedy sought.
The majority of the previous UDRP panels dealing with this issue have granted the requested remedy of transfer. See section 4.13 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and particularly WhatsApp Inc. v. Private Whois whatsappandroid.com, Private Whois whatsappipad.com and Private Whois whatsappiphone.com, WIPO Case No. D2012-0674 which states “Neither the Policy nor the Rules contains a provision that precludes the grant of the transfer remedy in this situation. Furthermore, neither the Policy nor the Rules contains a provision that precludes the third party from bringing an action under the Policy, or under any other applicable law, against the complainant in whose favor an order of transfer is made, in the event that the third party considers the complainant’s holding of the domain name to be in violation of the Policy.”
For all the above, this Panel sees no reason not to make the requested order of transfer of the disputed domain names <chatrouletteipad.com> and <chatrouletteiphone.com> to the Complainant in the event that the present case meets all the three requirements of the Policy.
7. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain names are 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 the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly Similar
The Complainant holds rights in the CHATROULETTE trademark.
The disputed domain name <chatroulettephone.com> reproduces the Complainant’s trademark CHATROULETTE in its entirety with the addition of the descriptive term “phone”. However, such addition does not eliminate the confusing similarity and the dominant and distinctive part of the disputed domain name remains the Complainant’s trademark.
Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0.
The disputed domain names <chatrouletteipad.com> and <chatrouletteiphone.com> reproduce the Complainant’s trademark CHATROULETTE in its entirety as a prefix with the addition of a third party’s trademarks, IPAD and IPHONE.
According to the majority view resumed in section 1.12 of the WIPO Overview 3.0, “where the Complainant’s mark is recognizable within the disputed domain name, the addition of other third-party marks is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark under this first element of the Policy.”
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.info”, “.site”, “.org”) being technical requirement may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See also section 1.11.1 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark CHATROULETTE, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that it has given no license or other right to use or register its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain names and that the Respondent has not used the disputed domain names in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “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 relevant evidence demonstrating rights or 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”. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in record suggesting that the Respondent has ever been commonly known by the disputed domain names.
The Respondent is not actively using the disputed domain name <chatroulettephone.com>.
The Respondent is using the disputed domain name <chatrouletteipad.com> to spread malware and viruses to Internet users. Not ultimately, the disputed domain name <chatrouletteiphone.com> resolves to a website offering competing services to those offered by the Complainant. None of the above exploitations are considered legitimate or fair use activities.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant holds trademark rights for CHATROULETTE since 2009 and is using it extensively internationally.
The disputed domain names were created in 2013 and incorporate as a prefix the Complainant’s mark.
At the time of filing the Complaint, the disputed domain name <chatroulettephone.com> was not actively used, the website corresponding to the disputed domain name resolves to a blank page that lacks content.
From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” or other similar inactive page) would not prevent a finding of bad faith under the doctrine of passive holding. The panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be relevant circumstances found to be indicative of bad faith include the degree of distinctiveness or reputation of the Complainant’s mark and the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use. See section 3.3 of the WIPO Overview 3.0.
At the time of filing the Complaint, the disputed domain name <chatrouletteiphone.com> was used in connection to a webpage offering online video chat services, which directly compete with Complainant’s services offered under CHATROULETTE mark. The Internet users searching for the Complainant would acces the website corresponding to the disputed domain name <chatrouletteiphone.com> erroneously considering it belongs or is somehow associated with or endorsed by the Complainant. Accordingly, the Panel finds here applicable the provisions of paragraph 4(b)(iv) of the Policy which provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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” is evidence of registration and use in bad faith.
At the time of filing the Complaint, the disputed domain name <chatrouletteipad.com> resolved to a website that attempts to spread malware and viruses to Internet users.
UDRP panels have consistently held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include, inter alia, malware distribution. See section 3.4 of the WIPO Overview 3.0.
The Complainant’s trademark CHATROULETTE is distinctive and has gained significant recognition on its relevant market. The Respondent was properly notified by the Center with regard to the commencement of the present proceeding but it remained silent. Also, the Respondent did not react to the Complainant’s cease-and-desist letter sent prior to commencing this proceeding.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 names <chatrouletteipad.com>, <chatrouletteiphone.com> and <chatroulettephone.com> be transferred to the Complainant.
Although this is obvious within the purpose of the Policy, this Panel finds necessary to underline that the transfer of the disputed domain names <chatrouletteipad.com> and <chatrouletteiphone.com> shall be ordered without prejudice to any rights of the third parties.
Date: April 3, 2018