WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Whois Protected, VCN - Whois Protection Service Panama
Case No. D2018-0604
1. The Parties
Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Whois Protected, VCN - Whois Protection Service Panama of Panama.
2. The Domain Name and Registrar
The disputed domain name <chat-roulette.info> is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2018. On March 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent of Respondent’s default on April 16, 2018.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on April 30, 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
Complainant is the creator and owner of the video chat website “www.chatroulette.com”. Complainant acquired the accompanying domain name <chatroulette.com> on November 16, 2009, and launched his online chat platform shortly thereafter. In the meanwhile, Complainant’s website quickly gained popularity, attracting roughly 944,000 visitors in January 2010 and 3.9 million visitors worldwide in February 2010. By mid-February 2010, the website and its creator had received considerable media attention. In early February 2010, the popular United States television program Good Morning America included a segment about the website and its young creator. New York magazine and The New York Times published articles (on February 10 and 13, respectively) about the popularity of the <chatroulette.com> domain name.
Shortly after this widespread publicity, on February 19, 2010, Respondent registered the disputed domain name <chat-roulette.info>. Before the filing of the Complaint, the disputed domain name resolved to a website offering pornographic content.
A couple weeks later, in March, 2010, Complainant applied to register his trademark in the Russian Federation and the European Union and registrations subsequently issued. (Russian Federation Registration No. 429957, filed March 11, 2010; registered February 10, 2011). About a year later, Complainant filed an application for a United States trademark registration based a declaration claiming first use as a trademark in United States commerce as of December 5, 2009. (United States Registration No. 4445843, filed January 10, 2011; claiming first use December 5, 2009; registered December 10, 2013).
5. Parties’ Contentions
Complainant asserts that he is the registered owner of the CHATROULETTE mark and the disputed domain name is identical to the mark. According to Complainant, the inclusion of the hyphen does not distinguish the disputed domain name from Complainant’s trademark. Complainant maintains that Respondent has no rights or legitimate interests in the disputed domain name because Complainant has not authorized Respondent’s use of the mark and Respondent’s use of the disputed domain name is not bona fide as the disputed domain name takes advantage of Complainant’s fame and goodwill to direct Internet traffic away from Complainant’s website and to a website offering a competing video chat service (albeit with pornographic content). As for bad faith registration and use, Complainant argues that considering the popularity of Complainant’s website in 2010, Respondent knew or, at least, should have known about Complainant’s mark and associated rights at the time Respondent registered the disputed domain name and that Respondent is using the disputed domain name to trade off on Complainant’s popularity for Respondent’s own commercial gain.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <chat-roulette.info> is confusingly similar to the CHATROULETTE mark in which Complainant has rights. The disputed domain name incorporates the CHATROULETTE mark in its entirety and the addition of the hypen does not dispel the confusion. The generic Top-Level Domain “.info” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
B. Rights or Legitimate Interests
Complainant has established a prima facie case of Respondent’s lack of rights or legitimate interest in the disputed domain name. By a preponderance of the evidence, Complainant shows that Respondent has sought to capitalize on the popularity of CHATROULETTE to lure Internet users to Respondent’s website which runs advertisements and offers a competing video chat service. Respondent has failed to respond and offer evidence in rebuttal.
The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant has established by a preponderance of the evidence that Respondent registered and is using the disputed domain name in bad faith. Generally, “where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent”. WIPO Overview 3.0, section 3.8.1. An exception applies, however, “where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights”. WIPO Overview 3.0, section 3.8.2. Here, Complainant provides credible evidence that Complainant’s website had received significant media attention in the weeks before Respondent registered the disputed domain name. Even though Complainant had not applied to register his trademark before Respondent registered the disputed domain name, there is prima facie evidence that he had acquired common law rights, at least in the United States, before Respondent registered the disputed domain name. Complainant’s declaration (as required by a United States federal trademark application) claiming first use of the trademark as of December 5, 2009 combined with the evidence of widespread publicity in the United States is prima facie evidence to support a finding that Complainant acquired common law rights in the United States before Respondent registered the disputed domain name. More generally, it is reasonable to infer, indeed it is obvious, that Respondent registered the disputed domain name to exploit Complainant’s recently acquired and growing trademark rights. See WIPO Overview 3.0, section 3.8.2 (registration of a domain name “further to significant media attention” supports a finding of bad faith).
The disputed domain name resolves to a website that offers a service that competes with Complainant’s. The Panel finds that Respondent uses the disputed domain name in bad faith by creating a likelihood of confusion about the source of Respondent’s services to attract, for commercial gain, Internet users to Respondent’s website.
Accordingly, the Panel finds that Complainant has satisfied 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 disputed domain names <chat-roulette.info> be transferred to Complainant.
Lawrence K. Nodine
Date: May 14, 2018