WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Private Registration, Account Privacy / Scott Elliott, Transcom Ltd.
Case No. D2018-0536
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Private Registration, Account Privacy of Tampa, Florida, United States of America / Scott Elliott, Transcom Ltd. of Guernsey, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <chattroulette.com> is registered with Nettuner Corp. DBA Webmasters.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 16, 2018. On March 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 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 March 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 March 28, 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 April 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 25, 2018.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on May 14, 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 the registered owner of the trademark CHATROULETTE (No 4445843) registered with the USPTO for classes 38 and 45, filing date January 10, 2011; with the EUIPO (No 008944076) for classes 35, 38 and 42, registered on December 4, 2012; CHATROULETTE.TO, registered with the EUIPO (No 008946352), filing date March 11, 2010; and CHATROULETTE registered in Germany with the DPMA (No 3020100037067) for classes 35, 38 and 42, with application in 2010 and entry on the register on February 2, 2013.
The Respondent registered the disputed domain name on December 17, 2009 shortly after the
Complainant's registration of the <chatroulette.com> domain name on November 16, 2009. The disputed domain name resolves to a website featuring adult content and offering services in competition with the Complainant's services.
5. Parties' Contentions
The Complainant is the owner of trademark registrations in a number of jurisdictions for CHATROULETTE. The Complainant created Chatroulette as a chat website that pairs Internet users for real-time conversations. The Complainant created the website in 2009 as a 17 year old. He chose the distinctive and unique name Chatroulette for his website, to reflect the purpose and unpredictability of the service there rendered. The Complainant maintains that Chatroulette has proven to be a concept and name that people readily and eagerly embraced.
The Complainant asserts that very soon after its launch in November 2009, the Chatroulette website was receiving 500 visitors per day growing by January 2010 to 50,000 visitors per day (approximately 1.5 million users per month), representing a 10,000% increase in traffic over just one month. By February 2010 traffic had jumped to approximately 130,000 visitors per day (3.9 million monthly visitors), a 26,000% increase in traffic over the December 2009 figures. According to the Complainant this exponential growth is testament to the incredible popularity that the Chatroulette website and business were able to achieve within mere months of its launch. The Complainant contends that Chatroulette continues to be one of the most popular video chat sites in the world, and that it has generated significant interest and attention internationally among fans, the media, and competitors. Unfortunately, the Complainant says, cybersquatting has been a result of the popularity and fame of Chatroulette. In summary, the Complainant maintains that he enjoys a substantial degree of public recognition in CHATROULETTE and that this mark has become uniquely and distinctly associated with the Complainant.
The Complainant points out that the disputed domain name is a purposeful misspelling of the Complainant's CHATROULETTE trademark and is therefore confusingly similar. As the disputed domain name differs from the Complainant's trademark by just one letter, the Complainant maintains that the Respondent takes intentional advantage of Internet users who inadvertently type an incorrect address when seeking to access the trademark owner's website. A deliberate misspelling of a trademark registered as a domain name, which is intended to confuse Internet users, is said to be confusingly similar by design.
The Complainant also points out that the content of the website to which the disputed domain name resolves is a video chat platform, which reinforce the confusing similarity to the Complainant's own activity and trademark.
The Respondent is not sponsored by or affiliated with the Complainant in any way, and the latter has not given permission to use its trademarks in any manner, including in domain names. The Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests. Furthermore the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating its trademark.
The Respondent is using the disputed domain name to direct Internet users to a website that features adult content. The Complainant points out that numerous past panels have held that use of a disputed domain name that is confusingly similar to a complainant's trademarks to link to a website featuring pornographic or adult content evinces a lack of rights or legitimate interests.
The Complainant registered its <chatroulette.com> domain name on November 16, 2009 and established its Chatroulette service and website very shortly thereafter, before the Respondent's registration of the disputed domain name on December 17, 2009. The Complainant and its CHATROULETTE trademark are said to be known internationally, with trademark registrations across numerous countries.
At the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant's "www.chatroulette.com" website and unfairly sought to capitalize on the Complainant's nascent trademark rights. Although the Complainant had not registered any trademarks when the Respondent registered the disputed domain name, the popularity of "www.chatroulette.com" website grew exponentially in a very short space of time.
According to an article published in March 2010 in the Spiegel Magazine quoting Mr Ternovskiy, "In early December 2009, Chatroulette had 500 users. By January, there were 50,000. Now 1.5 million people visit the site every day". By February 2010, Chatroulette was a worldwide phenomenon that had far outgrown the 17 year old Mr Ternovskiy's bedroom, and had 4 million users. The Complainant maintains that it was talked about all over the media. Further, while constructive notice alone may sometimes be regarded as insufficient to support a finding of bad faith, numerous past UDRP panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant's marks, and thus having registered the domain in bad faith, where the complainant's mark is well-known and the circumstances support such a finding, as is, according to the Complainant, the case here.
The Complainant says that by registering a domain name that is a one-letter typo and incorporates CHATROULETTE in its entirety the Respondent has created a domain name that is confusingly similar to the Complainant's trademark, as well as its <chatroulette.com> domain. As such, the Respondent is said to have demonstrated knowledge of and familiarity with the Complainant's brand and business. The Respondent registered the disputed domain name on December 17, 2009, which is shortly after the Complainant's registration of its own <chatroulette.com> domain name on November 16, 2009. The Complainant asserts that panels will find bad faith if circumstances indicate that the respondent's intent in registering the disputed domain name was to profit in some manner from or otherwise exploit the complainant's trademark. The Complainant says that given the evidence in this matter it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant's brands at the time the disputed domain name was registered.
Typosquatting itself has been taken as evidence of bad faith registration and use by past UDRP panels according to the Complainant. The disputed domain name is a slight misspelling of the Complainant's CHATROULETTE trademark, as well as its <chatroulette.com> domain name, and the Respondent is attempting to capitalize on typing errors committed while attempting to locate the Complainant on the Internet. In other words, the disputed domain name is a typo-squatted version of the Complainant's CHATROULETTE trademark and has intentionally been designed to closely mimic the Complainant's trademark and primary domain name.
The website to which the disputed domain name resolves features sexually explicit, pornographic content, which is evidence of bad faith registration and use. According to the Complainant, past UDRP panels have consistently held that a respondent's use of a confusingly similar domain name to direct unsuspecting Internet users to adult content, as here, is evidence of bad faith registration and use.
The Respondent also ignored the Complainant's attempts to resolve this dispute without the need for the present administrative proceeding. Past UDRP panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name.
Finally, on balance, given the facts as set out above, it is according to the Complainant more likely than not that the Respondent knew of and targeted the Complainant's trademark, and the Respondent should be found to have registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the CHATROULETTE trademark of the Complainant. However, it only differs in a very minor and virtually unnoticeable way. The disputed domain name constitutes an example of "typosquatting", where the "typo" is the doubling up of the letter "t". This modification makes virtually no difference to the appearance, or any change to the meaning of the domain name as registered compared to the Complainant's registered trademark.
In the circumstances the Panel holds that the disputed domain name is confusingly similar to the CHATROULETTE trademark of the Complainant.
B. Rights or Legitimate Interests
The Respondent is not known under the disputed domain name, nor is there any evidence that he has ever made any legitimate use of that name or the term CHATROULETTE. The Respondent has used the disputed domain name to resolve to a website that provides adult material. The particular form of the disputed domain name has been intentionally adopted to take advantage of Internet users' unwitting misspelling of "chatroulette" which entails them thinking that they are being taken to the legitimate website of the Complainant. In fact the Respondent hopes to obtain an advantage from Internet users who so arrive at his website. These activities on the part of the Respondent are devious and not of a kind to vest rights or result in the recognition of any legitimate interests in his name.
The Respondent did not receive authorization or a license of any kind to use the trademark CHATROULETTE of the Complainant or to incorporate it or something very like it in a domain name.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered before the CHATROULETTE trademark was entered upon the trademark register of any jurisdiction. However, figures provided by the Complainant show exponential growth in popularity of the CHATROULETTE website and extensive reporting on it in the press in the final months of 2009. The popularity and thus reputation of the CHATROULETTE website had already rapidly expanded before the disputed domain name was registered. In the circumstances and given the particular misspelled form of the disputed domain name itself, it is highly unlikely that the Respondent was not aware of the Complainant's website and its rapidly expanding reputation at the relevant time. The registration of the disputed domain name came after the registration of the Complainant's own <chatroulette.com> domain name and the website to which it resolves, and which is the focal point of the Complainant's web chat services.
The registration of a domain name which is an obvious and very proximate misspelling or mistyping of a registered trademark is not an activity that is in good faith. It hopes to derive some unfounded advantage from unsuspecting consumers who are searching for the Complainant's genuine website. Further, the provision of adult material at a website to which a disputed domain name of the present kind resolves is also an activity redolent of bad faith. The Respondent simply seeks to turn the reputation of the Complainant's distinctive trademark to his advantage without having any legitimate basis, rights or permissions for doing so.
The Respondent has also not reacted to cease-and-desist letters and has not sought to submit a Response to the Complaint.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith.
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 <chattroulette.com> be transferred to the Complainant.
William A. Van Caenegem
Date: May 28, 2018