WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Zhichao Yang
Case No. D2018-0817
1. The Parties
Complainant is Andrey Ternovskiy, dba Chatroulette, of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Zhichao Yang of Hefei, Anhui, China.
2. The Domain Names and Registrar
The disputed domain names are <chataroulette.com>, <chatrouleette.com> and <chatrouletti.com> which are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2018. On April 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 12, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 13, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 17, 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 Respondent of the Complaint, and the proceedings commenced on April 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 9, 2018.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on May 28, 2018. This Panel finds that it was properly constituted. This 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 has rights over the CHATROULETTE trademark for which it holds, among others, registration No. 429957 with the Russian Federal Service for Intellectual Property (ROSPATENT), registered on February 10, 2011, in classes 35, 38 and 42; registration No. 8126890 with the Trademark Office of China, registered on May 7, 2011, in class 42; registration No. 008944076 with the European Union Intellectual Property Office, registered on December 4, 2012, in classes 35, 38 and 42; and registration No. 4445843 with the United States Patent and Trademark Office, registered on December 10, 2013, in classes 38 and 45.
Complainant is the registrant of the domain name <chatroulette.com> which was registered on November 16, 2009.
The disputed domain names were all registered on January 14, 2018. At the time the Complaint was filed, the disputed domain names were redirected to the website “www.topcamsites.org” which showed, among others, the legend “The Top Live Sex Cam Sites In 2018” and featuring pornographic images with apparent hyperlinks.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows.
Chatroulette, created and owned by Complainant, is an online chat website that pairs random people from around the world together for real-time, webcam-based conversations. Complainant created the Chatroulette service and website in 2009. The idea for Chatroulette stemmed from Complainant’s realization that, at the time of its inception, no website existed which allowed for random video chatting with other Internet users from around the world. The “Chatroulette” name that Complainant chose for his innovative website and business was, in part, selected after Complainant watched a film in which soldiers in played the game of Russian roulette. By combining the term “chat”, which is one of the core purposes of Complainant’s website, and the word “roulette”, which is associated with the thrill of unpredictability, the essence of Chatroulette is captured in such distinctive name.
Very shortly after its launch, the Chatroulette website began to receive 500 visitors per day and only one month later, in January 2010, that figure had increased to 50,000 visitors per day (approximately 1.5 million users per month). In February 2010, that traffic had jumped to approximately 130,000 visitors per day (3.9 million monthly visitors). That exponential growth demonstrates the popularity that Complainant’s Chatroulette website and business were able to achieve within mere months of its launch.
Chatroulette continues to be well-known as one of the most popular video chat sites in the world, and the website has generated significant interest and attention internationally among fans, the media, and competitors. Chatroulette has been featured in and highlighted by numerous publications and media outlets including The New York Times, The New Yorker, and New York Magazine, as well as on television shows. According to Alexa.com statistics, the Chatroulette website, located at “www.chatroulette.com”, received over 270,000 unique monthly visitors in the month of December 2017, earning a global popularity rank of 18,214.
Complainant is the owner of trademark registrations across various jurisdictions, which demonstrate that Complainant has spent a considerable amount of time and money protecting his intellectual property rights.
The disputed domain names are a misspelling of Complainant’s CHATROULETTE trademark and must be considered confusingly similar to Complainant’s trademark. Each of the disputed domain names varies from Complainant’s trademark by only one letter: in <chatrouletti.com> the last letter “e” is replaced with the letter “i”; in <chataroulette.com> the letter “a” is added after “chat”; in <chatrouleette.com> another letter “e” is added after the first “e”.
Respondent has no rights or legitimate interests in respect of the disputed domain names. Complainant has not given Respondent permission to use Complainant’s trademark in any manner. Respondent is not sponsored by or affiliated with Complainant in any way and is not commonly known by the disputed domain names.
Since the disputed domain names differ from Complainant’s trademark by just one letter, they must be considered prototypical examples of typosquatting, which intentionally takes advantage of Internet users that inadvertently type an incorrect address when seeking to access the trademark owner’s website.
Respondent is using the disputed domain names to occasionally redirect Internet users to a third party website that contains pay-per-click links to competitor websites and adult content. As such, Respondent is not using the disputed domain names to provide a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Past UDRP decisions have held that use of a domain name that is confusingly similar to a complainant’s trademarks to link to a website featuring pornographic or adult content evidences a lack of legitimate rights or interests.
The disputed domain names were registered and are being used in bad faith.
Complainant and his CHATROULETTE trademark are known internationally, with trademark registrations across numerous countries. Complainant registered <chatroulette.com> in November 2009, and established its Chatroulette service and website very shortly thereafter, before Respondent registered the disputed domain names in January 2018.
At the time of registration of the disputed domain names, Respondent knew, or at least should have known, of the existence of Complainant’s trademark and that registration of domain names containing well-known trademarks constitutes bad faith. Past UDRP decisions 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 name in bad faith, where the complainant’s mark is well-known and the circumstances support such a finding.
Typosquatting itself has been taken as evidence of bad faith registration and use. The disputed domain names are a slight misspelling of Complainant’s CHATROULETTE trademark, as well as his <chatroulette.com> domain name, and Respondent is attempting to capitalize on typing errors committed by Complainant’s customers in trying to locate Complainant on the Internet. Each of the disputed domain names has intentionally been designed to closely mimic Complainant’s trademark and primary domain name.
Respondent is using the disputed domain names to confuse unsuspecting Internet users looking for Complainant’s services. By creating such likelihood of confusion between Complainant’s trademark and the disputed domain names, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the disputed domain names, Respondent has demonstrated an intent to capitalize on the fame and goodwill of Complainant’s trademark in order to increase traffic to the disputed domain names’ websites for Respondent’s own pecuniary gain, as evidenced by the presence of multiple pay-per-click links, some of which directly reference Complainant’s competitors.
The websites to which the disputed domain names are redirected feature sexually-explicit, pornographic content, which provides evidence of Respondent’s bad faith registration and use of the disputed domain names. Past UDRP decisions have consistently held that a respondent’s use of a confusingly similar domain name to direct unsuspecting Internet users to adult content is evidence of bad faith registration and use of that domain name.
Respondent’s use of the disputed domain names constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use because the disputed domain names are confusingly similar to Complainant’s trademark and the websites at which the disputed domain names are redirecting to feature multiple links to Complainant’s competitors. Further, the fact that Respondent had registered the three disputed domain names demonstrates that Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use.
There is evidence of prior UDRP decisions in which domain names have been transferred away from Respondent to complaining parties, which supports a finding that Respondent has engaged in a pattern of cybersquatting.1 Additionally, Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses, such as <allyfinicial.com>, <fecebok.com>, <mercede-benz.com>, <generalelectriccreditunion.org>, which demonstrates that Respondent is engaging in a pattern of cybersquatting/typosquatting, which is evidence of bad faith registration and use of the disputed domain names.
Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP decisions have held serves as further evidence of bad faith registration and use when done in conjunction with other indicators. Further, Respondent has ignored Complainant’s attempts to resolve this dispute outside of the administrative proceeding. Past UDRP decisions 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.
Complainant requests that the disputed domain names be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint 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”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that each disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) each disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the CHATROULETTE trademark.
Each disputed domain name incorporates almost identically such Complainant’s trademark, except for a single letter variation in each of them, as noted in the Complaint. Such minor variation in each of them is not enough to avoid confusing similarity.
Thus this Panel finds that each disputed domain name is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Complainant contends that he has no relationship with Respondent, that has no authorized Respondent to use his CHATROULETTE trademark, and that Respondent is not commonly known by the disputed domain names.
Complainant asserts that Respondent is not using the disputed domain names to offer its own products or services, but rather to redirect Internet users to a third-party website that shows pay-per-click links to competitor websites and pornographic materials (printouts of such website attached as exhibits to the Complaint). As established in prior UDRP cases, such use is not a bona fide offering of products or services (see, for instance, Alfa Laval AB and Alfa Laval Corporate AB v. Alfalava.com, WIPO Case No. D2007-1881; and Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775).
This Panel considers that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names (see Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467; and section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a possible right to or legitimate interest in the disputed domain names by Respondent. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using domain names which are almost identical to Complainant’s trademark, this Panel considers that Respondent has no rights or legitimate interests in the disputed domain names.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant contends that Respondent has registered and used the disputed domain names in bad faith, which Respondent chose not to rebut.
Taking into consideration Complainant’s media coverage, that his CHATROULETTE trademark and website have become well-known, and that Complainant’s trademark is composed of a coined term that confers to it certain distinctiveness, this Panel is of the view that Respondent must have been aware of the existence of Complainant’s trademark and website at the time it obtained the registration of the disputed domain names. The fact that Respondent registered the three disputed domain names, each incorporating Complainant’s CHATROULETTE trademark with just a minor typographical error variation (practice commonly known as typosquatting), simply reinforces the aforesaid and leads to infer that Respondent registered and used the disputed domain names in bad faith.2
The use of a domain name for a website which may generate pay-per-click revenue and/or that features pornographic content is not, per se, evidence of bad faith. However, there are several factors in this case, in addition to those mentioned above, that in the aggregate also lead for a finding of bad faith in the registration and use of the disputed domain names: (i) Complainant’s trademark was registered years before the registration of the disputed domain names (and particularly in China, country where Respondent is domiciled as per the WhoIs report); (ii) Respondent is using Complainant’s trademark at the disputed domain names, albeit with just a minor typpographical error variation, without Complainant’s authorization and the display of such website content has the effect of tarnishing Complainant’s trademark; (iii) several prior UDRP decisions against Respondent; (iv) Respondent’s registration of other domain names that, on their face, might also infringe third parties’ rights (for instance, <fecebok.com>, <generalelectriccreditunion.org> and <mercede-benz.com>); (v) Respondent’s use of a privacy shield service; and (vi) Respondent’s failure to appear at this proceeding.
Thus the overall evidence in the file leads this Panel to deduce that Respondent’s choice of the disputed domain names was deliberate for their substantial identity with, and with the intention to benefit from the reputation and goodwill of, Complainant’s trademark, which denotes bad faith.3
In light of the above, this 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, this Panel orders that the disputed domain names <chataroulette.com>, <chatrouleette.com> and <chatrouletti.com> be transferred to Complainant.
Date: June 11, 2018
1 Complainant cites Credit Karma, Inc. v. Zhichao Yang, Private Registration, Domains By Proxy, LLC, WIPO Case No. D2018-0031; G4S Plc v. Domain Administrator, SeePrivacyGuardian.org / Zhichao Yang, WIPO Case No. D2017-1396; Accor SA v. Domain Administrator, PrivacyGuardian.org / Zhichao Yang, WIPO Case No. D2017-1322; Klarna AB v. Domain Administrator, See PrivacyGuardian.org / Zhichao Yang, WIPO Case No. D2017-0220.
2 See Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517: “the practice of typosquatting, in and of itself, constitutes bad faith registration”, and Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568: “Typosquatting is virtually per se registration and use in bad faith”. See also America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713: “registration of several names corresponding to Complainant’s service marks is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith within the meaning of paragraph 4(b)(ii) of the Policy”. Cfr. section 3.1.2 of the WIPO Overview 3.0.
3 See Jafra Cosmetics, S.A. de C.V. and Jafra Cosmetics International, S.A. de C.V. v. ActiveVector, WIPO Case No. D2005-0250: “due to the intrinsically distinctive character of Complainants’ trademarks, it is inconceivable that the contested domain name would have been registered and used if it were not for exploiting the fame and goodwill of Complainants’ marks by diverting Internet traffic intended for Complainant”.