WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Contact Privacy Inc. Customer 0146570411 / Andrei Tyukalov, Private Person
Case No. D2018-0864
1. The Parties
1.1 The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
1.2 The Respondent is Contact Privacy Inc. Customer 0146570411 of Toronto, Canada / Andrei Tyukalov, Private Person of Moscow, Russian Federation, self-represented.
2. The Domain Name and Registrar
2.1 The disputed domain name <chatroulette.life> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2018. At or shortly prior to the time of filing, the publically available WhoIs details for the Domain Name identified the Registrar’s privacy service as the registrant of the Domain Name. On April 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain name. On April 18, 2018, the Registrar transmitted by email to the Center its verification response disclosing the underlying registrant for the Domain Name. The Center sent an email communication to the Complainant on April 23, 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 April 24, 2018. Save as is otherwise apparent from the context, references hereinafter to the Respondent are references to the underlying registrant.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2018.
3.4 On May 14, 2018, the Respondent filed a request to change the language of the proceedings.
3.5 On May 14, 2018, the Respondent requested for Response extension, and the Response due date was extended to May 19, 2018, in accordance with paragraph 5(b) of the Rules.
3.6 On May 16, 2018 the Complainant filed a supplemental submission, which appeared to anticipate arguments raised by the Respondent in his Response. That Response was filed with the Center on May 18, 2018.
3.7 On May 18, 2018, the Respondent also filed various documents with the following headings:
(i) “Petition for claiming evidence from the Claimant”;
(ii) “Application about attendance of third parties/witnesses”; and
(iii) “The good faith of the Defendant”.
3.8 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 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.
3.9 On June 8, 2018 the Respondent filed a number of supplemental submissions, comprising a series of documents in Russian, which he contended consisted of a subpeona and statement of claim in proceedings commended in the Moscow courts.
3.10 On June 12, 2018 the Complainant and the Respondent have submitted additional supplemental submissions.
4. Factual Background
4.1 The Complainant is a Russian individual (although he may no longer reside in the Russian Federation). In 2009, when aged 17, he founded the “Chatroulette” website. This website operates from the domain name <chatroulette.com> and allows for random video chatting with other Internet users around the world. Given the way in which the site has been used by some Internet users, it has developed a certain degree of notoriety. It has featured in various newspaper and magazine articles and on numerous television news programs and shows, including in the United States of America (“United States” or “US”). By February 2010, traffic to the website had increased to approximately 130,000 visitors per day.
4.2 The term “Chatroulette” is an allusion to the way in which the website operates. The Complainant is the owner of various trade marks that either comprise or incorporate that term. They include the following word marks for this term:
(i) European Union (“EU”) registered trade mark no. 8944076 in classes 35, 38 and 42 filed on March 10, 2010, registered on December 4, 2012; and
(ii) United States of America registered trade mark no. 85214314 in classes 38 and 45 filed on January 10, 2011, registered on December 10, 2013.
4.3 There would also appear to be a similar Russian registered trade mark (no 429957 applied for on March 11, 2010) that is not in the name of the Complainant, but which the Complainant nevertheless contends belongs to him.
4.4 The Respondent would appear to be an individual in the Russian Federation. The Domain Name was registered by the Respondent on November 23, 2016. It has been used since registration to display a website that displays the name “Chatroulette Indonesia” under which photographs of various women were displayed with the text “Want to find someone to chat with”. Thereafter, there is text in Indonesian. This website (or at least a variant of it) continues to operate from the Domain Name as at the date of this decision.
4.5 The present proceedings are one of four sets of UDRP proceedings involving the Complainant and the Respondent. The others are:
(i) Andrey Ternovskiy dba Chatroulette v. Andrei Tyukalov, WIPO Case No. D2018-0239 involving the domain name <chatroulette.video>;
(ii) Andrey Ternovskiy dba Chatroulette v. Andrei Tyukalov, WIPO Case D2018-0235 involving the domain name <chatroulette.online>; and
(iiii) Andrey Ternovskiy dba Chatroulette v. Andrei Tyukalov, WIPO Case No. D2018-0311 involving the domain name <chatroulette.world>.
4.6 The proceedings were consolidated and on May 3, 2018 a decision was issued in the Complainant’s favour.
5. Parties’ Contentions
5.1 The Complaint sets out the history of the Complainant’s website and his various registered trade marks. So far as the choice of the term “Chatroulette” is concerned, the Complainant contends that it was inspired by the “Russian Roulette” scene in the film the Deer Hunter.
5.2 The Complainant claims that the Domain Name is identical to his registered trade marks on the basis that the applicable top level domain (“TLD”) should be ignored. In any event, it refers to the use made of the Domain Name, referring to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.15, which states that although the content of any website operating from a disputed domain name is usually ignored there are cases where that is appropriate.
5.3 The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name. It claims that the Respondent is not making a bona fide offering of goods and services on the basis that this is said not to apply where a respondent is using a domain name that is confusing similar to a complainants marks for the purposes of selling competing goods or services.
5.4 So far as bad faith registration and use is concerned, the Complainant puts forwards various claims, but the central allegations appear to be that (i) the extent of the reputation of his marks is such that the Respondent is likely to have had knowledge of the Complainant’s rights and to have registered the trade mark with the intention of specifically targeting the Complainant; and (ii) the use of the Domain Name falls within the scope of the example of circumstances indicating bad faith use set out in paragraph 4(b)(iv) of the Policy.
5.5 The Complainant also contends that the Respondent is responsible for the registration of a number of additional domain names comprising the term “Chatroulette” combined with another TLD, and refers to various other UDRP proceedings, in this respect.
5.6 The Complainant also claims that the Respondent’s use of a privacy service indicates bad faith.
5.7 The Respondent complains that the power of attorney filed by the Complainant’s representative “CSC Digital Brand Services, AB” is in the name of “CSC Digital Brand Services Group AB”. In that document the Complainant gives his title as “CEO”. The Respondent appears to contend that this demonstrates that the Complainant has not signed that document on behalf of himself but instead as the director and/or beneficiary of a number of companies. One of the companies so identified is the current registered owner of the Russian trade mark identified in the Factual Background section of this decision.
5.8 The Respondent contends that the Complainant did not invent “Chatroulette”. The Respondent relies in this respect on (i) a German trade mark registration for this term granted in 2000 and expiring in 2008; (ii) the fact that the <chatroulette.com> domain name currently used by the Complainant was first registered in 2005 and expired in 2008; and (iii) a document identified as a translation of an email from a Holger Volt, in which Mr Holger contends that he created the website in 2005, and he lost control of when his laptop was stolen in 2008.
5.9 The Respondent further points out that the Russian trade mark relied upon by the Complainant is not registered in the Complainant’s name and takes the form of a “graphic”.
5.10 The Respondent claims that the Complainant’s business involves the illegal promotion of pornography.
5.11 The Respondent maintains that the Domain Name was registered and is being used to promote a website in Indonesia. He produces a report that is said to demonstrate that this is predominately used by persons in Indonesia. Although, the Respondent does not appear to deny that this website offers a similar service to that of the Complainant, he appears to contend that he was not aware of the Complainant at the time the Domain Name was registered.
5.12 The Respondent points out that there are numerous other new generic Top Level Domains that the Complainant could register other than the Domain Name.
5.13 The Respondent further contends that the Complainant’s trade mark rights relied upon do not extend to Indonesia. He further contends that the Complainant has sought to mislead the Panel by not disclosing that attempts by the Complainant to register the term “Chatroulette” in the Russian Federation and the United States via an international registration has led to the provisionally refused of the Russian application and the abandonment of the United States registration due to the pre-existence of the Russian and United States trade mark upon which the Complainant has claimed ownership of and relied upon in these proceedings.
5.14 Finally, the Respondent claims to have filed a number of proceedings in the Russian Federation in respect of the Domain Name and other domain names the subject of UDRP proceedings. The first is said to be in the Savelovsky court of Moscow, with a “petition for addition of claim requirements – the domain chatroulette.life” being delivered to the court on April 27, 2018. The second is said to be proceedings being filed in the same court in respect of the Domain Name and which the Respondent contends has been filed together with a motion that it be joined with the first case. The Complainant is said to be named, among others, as a Defendant in these proceedings and both sets of proceedings are said to involve claims for recognition of the Complainant’s rights to own and administer the domain names.
5.15 The Respondent asks as an alternative to dismissal of the Complaint on substantive grounds, that the proceedings be terminated in light of these Russian proceedings.
6. Discussion and Findings
6.1 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these issues in turn. However, before it does so it is first necessary to address a number of procedural issues in this case.
A. Procedural Issues
6.3 The first procedural issue in this case is the Respondent’s request that the language of these proceedings be deemed to be Russian. The Respondent claims that the proceedings have been brought in the English language in a deliberate attempt to prevent the Respondent for conveying his arguments and to present evidence.
6.4 The Rules are quite clear that the language of the proceedings is the language of a Domain Name’s registration agreement, absent a determination by the Panel otherwise. It is, therefore, in large part within a registrant’s power to choose the language that prima facie applies to UDRP proceedings as it is the registrant that chooses the registrar used to register, and through which to hold, a domain name.
6.5 The Respondent chose a registrar whose registration agreement was in English. This has been confirmed by the Registrar in response to the verification request sent to the Registrar by the Center in the usual fashion. Given this, it was perfectly proper for the Complainant to have filed the Complaint in English. Indeed, had he not done so, he and his advisors would have run the risk that the Complaint was deemed procedurally invalid (or at least a risk that it would face an argument from the Respondent in such terms). The Panel, therefore, rejects the contention that this has been done by the Complainant in order to cause difficulty for the Respondent in responding to these proceedings.
6.6 Notwithstanding this, there still remains the question as to whether, pursuant to the Respondent’s request and paragraph 11 of Rules, the Panel should determine the language of these proceedings to be Russian. Having considered this request the Panel declines to do so. First, as has already been stated, it is the Respondent’s own actions that have led to these proceedings being commenced in English. Second, having considered the numerous submissions from the Respondent in this case, it is clear that the fact that these proceedings are in English has not prevented the Respondent from putting its case at some length. Accordingly, these proceedings can and will continue in English.
6.7 The next procedural issue is the Respondent’s request that there be “attendance of third parties/witnesses”. Inherent in the Respondent’s request is either an assumption or request that there will be a hearing in these proceedings. Paragraph 13 of the Rules, states that there shall be “no in person hearings (including hearings by teleconference, videoconference and web conference) save in exceptionable circumstances”. The UDRP is intended to be a swift (see paragraph 10(b) of the Rules) and inexpensive procedure, where a decision is ordinarily made on paper. Although time limits can be extended, a panelist is prima facie required to make a decision within 14 days of appointment (see paragraph 15(b) of the Rules). A hearing would add both expense and delay. It would, therefore, require a truly exceptional set of circumstances to justify any form of hearing. The Panel is not convinced that there are any such exceptional circumstances in this case.
6.8 Further, even if there were a hearing, although the Panel has a power to make procedural orders under the Rules directed to the parties (see paragraph 10(b) of the Rules), it has no power under the Rules to make an order compelling any third party to do anything in the proceedings. If a party wishes to rely upon the statement of some other person, it is for that party to prepare and put before the panel evidence in this respect (whether by way of witness statement, affidavit or otherwise). Therefore, the Respondent’s request is rejected.
6.9 Next, there is the Respondent’s request that that the Complainant answer various questions. A Panel does have a power under paragraph 12 of the Rules to require further submissions from the parties. It would therefore be possible for the Panel to issue a procedural order in this respect. However, this is a matter for the Panel’s “sole discretion”. For reasons addressed later on in this decision, the Panel does not consider this necessary and declines to do so. Accordingly, this Respondent’s request is also rejected.
6.10 Next, there is the fact that there is a very slight mismatch between the name of the Complainant’s representative and the name appearing on the power of attorney attached to the Complaint in this case. There is no formal requirement for the provision of a power of attorney from those representing a party in UDRP proceedings. A panel will wish to satisfy itself that a complaint is actually brought by the named complainant. But this is an assessment of common sense and fact rather than a formalistic exercise involving the checking of documents of authority.
6.11 In this respect, it is rare for lawyers (who will usually be subject to ethical and regulatory constraints when it comes to making assertions as to who are their clients) to provide formal evidence in this respect. Where a party is not represented by a firm of lawyers, such documents are more frequently submitted. That is perhaps good practice since such a document may sometimes be useful in putting to rest any doubt in the panel’s mind in this respect. But it is not a requirement. Further, more often than not the likely position will be apparent from a host of factors including the substantive content of any submission. It is also inherent in the UDRP process that the relief sought is the transfer into the name of a complainant.
6.12 In the present case the slight mismatch in names in the power of attorney relied upon (i.e., the inclusion of the word “Group” in the power of attorney), does not lead the Panel to seriously question whether the Complainant was brought for the benefit of the Complainant, nor does the Respondent advance any independent argument or evidence that this is the case. In this respect the power of attorney is only a few months old, is obviously in the hands of those who claim to be the Complainant’s representative and the Respondent does not claim that it has not been signed by the Complainant.
6.13 Further the Panel does not consider there to be any significance that the Complainant identified himself in the power of attorney as a “CEO”. The Respondent seems to be arguing that this indicates that the Complainant has authorised his representatives to bring proceedings on behalf of some unspecified company or companies that he controls, but has not authorised them to do so when it is him that has the relevant rights. That is inherently implausible.
6.14 Accordingly, the Panel is not prepared to dismiss the Complainant on the grounds that it is not actually brought by the Complainant. The Panel notes that a similar conclusion was reached by the panel in respect of the same argument in Andrey Ternovskiy dba Chatroulette v. Andrei Tyukalov, supra.
6.15 Next, there is the Respondent’s request that proceedings be terminated in light of proceedings brought in the Russian courts. The Panel undoubtedly can in its discretion either suspend or terminate proceedings as a result of the initiation of legal proceedings, or proceed to a decision (see paragraph 18(a) of the Rules).
6.16 The Panel observes that if the Russian courts do have jurisdiction in this case, it would not appear to be on the basis of the Complainant’s agreement (given the exact form of the submission to jurisdiction in Section IX of the Complaint). Nevertheless, the discretion in paragraph 18(a) of the Rules is not limited to cases where the Complainant has agreed to submit to the jurisdiction in which those proceedings have been commenced.
6.17 The three person panel in Gstaad Saanenland Tourismus v. Domain Administrator, PrivacyGuardian.org / Dimitri Dimitriadis, WIPO Case No. D2016-2601, considered such a request in a case where proceedings had been commenced in the Swiss courts (in that case by a complainant). Without seeking to fetter the discretion granted by the Rules, the panel observed (starting at paragraph 6.12 of that decision) as follows:
“… That … still leaves the question of whether the Panel should terminate the proceedings in light of ongoing court proceedings under paragraph 18 of the Rules. … [P]aragraph 18 of the Rules … involves a panel considering whether it is better that that the issues between the parties be left to be determined by the courts regardless of what one or both parties might prefer in this respect.
… As is reflected in paragraph 4.15 of the WIPO Overview 2.0, although the Policy and issues of trade mark infringement significantly overlap, they are not the same thing. Therefore, in many cases it will be quite possible and proper for a panel to proceed to issue a decision in UDRP proceedings even if there are parallel court proceedings. Nevertheless, if there is a common factual dispute in both proceedings, it may be preferable that a panel leaves this matter to the courts, which are likely to be procedurally better equipped to determine that dispute than a panel appointed under the UDRP.
… In the present case, the proceedings in the Swiss courts appear to involve claims of trade mark infringement by reason of the use of the Domain Name. However, it is far from clear what, if any, factual issues are in dispute between the parties. It is for a party who wants proceedings under the UDRP suspended or terminated because of parallel court proceedings to persuade a panel as to why this is necessary, if the parties are not in agreement that this is the right course of action. The Complainant has failed to persuade the Panel that termination would be appropriate in this case. In the circumstances, the Panel will proceed to a substantive decision.”
6.18 Further, in Ritzio Purchase Limited v. Domain Admin, PrivacyProtect.org / Timur Ziganshin / Lianna Tall, Escave Ltd / Private Whois, Global Domain Privacy Services Inc / Moniker Privacy Services, WIPO Case No. D2015-0875, this Panel stated (starting at paragraph 6.9) as follows:
“… The mere fact that the parties may be involved in a broader and more complex dispute and even parallel proceedings does not necessarily mean that proceedings under the Policy cannot continue. It will depend upon exactly what is in dispute, what any other court or tribunal in any parallel proceedings is determining and whether either actually has any bearing on the issues the panel has to consider in proceedings under the Policy.
… As was stated in IFA Hotels & Resorts FZE v. Jaffar Sharif WIPO Case No. D2008-0895:
‘The Panel certainly accepts that there is broader dispute here between the parties and that the Panel should be wary of trespassing into areas that are the preserve of the relevant trade mark registries in which that dispute is ongoing. However, it does not follow simply from the fact of the existence of parallel proceedings that a Panel should refuse to consider the substance of the Complaint. Instead the Panel believes that the correct approach is to examine each of the requisite elements of the Policy in turn. In the context of that examination it may become apparent that there is a substantive factual dispute between the parties that cannot be resolved under the Policy and/or is being addressed and/or can be better determined in another forum. Only at this stage does the question raise its head whether the Panel should decline to consider that issue further.’”
6.19 Returning to the present case before the Panel, there is no real description of the basis of the Respondent’s legal proceedings in the Russian Federation, let alone why it is that the Russian court is likely to consider issues of fact that are relevant to these UDRP proceeding. Given this, the Panel concludes that insufficient reason has been advanced by the Respondent to justify the termination of these proceedings, and declines to do so. The Panel also notes that in Andrey Ternovskiy dba Chatroulette v. Andrei Tyukalov, WIPO Case No.s. D2018-0235, D2018-0239 and D2018-0311, the panel reached the same conclusion.
6.20 Finally, there is the Complainant’s supplemental submission. The submission was not called for by the Panel pursuant to paragraph 12 of the Rules. In that document the Complainant raised a question as to whether there are really parallel ongoing court proceedings in the Russian Federation, and this issue has already been addressed. Otherwise, in coming to its conclusion in this case it has been unnecessary for the Panel to consider the content of that document.
B. Identical or Confusingly Similar
6.21 The Complainant clearly has registered trade mark rights in at least some jurisdictions in the term “Chatroulette” (the position in the Russian Federation is discussed in greater depth later on in this decision). The Domain Name comprises that term in its entirety in combination with the “.life” TLD. The Panel takes the view that the TLD means that the mark and the Domain Name are not formally identical (and for a further explanation of the reasons for this see Philip Morris USA Inc. v. Marlboro Beverages / Vivek Singh, WIPO Case No. D2014-1398). However, in practical terms that does not matter. There is no doubt that the Domain Name and the registered trade marks are confusingly similar (as to which see section 1.11 of WIPO Overview 3.0).
6.22 The Respondent has raised a question as to the ownership of the Russian mark relied upon and points out that there is no Indonesian mark claimed by the Complainant. These points are addressed later on in this decision. But for the purposes of this “standing” or “threshold” aspect of the Policy, they do not matter. With perhaps some exceptions (which do not apply in this case) the Complainant merely needs to show some form of registered trade mark rights somewhere in the world (see section 1.2 of the WIPO Overview 3.0). Either of the Complainant’s US or EU registered marks are sufficient.
6.23 Given this, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
6.24 For the reasons that are set out at length in the part of this decision that deals with registration and use in bad faith, the Panel has concluded that the Domain Name has been registered and held by the Respondent with a view to taking unfair advantage of the reputation of the Complainant’s marks, to further his own business. Such use does not constitute use “in connection with a bona fide offering of goods or services” within the scope of paragraph 4(c)(i) of the Policy (see, for example, Financial Industry Regulatory Authority, Inc. v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Edward Banis, WIPO Case No. D2016-0434).
6.25 There is also no evidence before the Panel to suggest that regardless of the initial association of the Domain Name with the Complainant, the Domain Name has become so independently associated with the Respondent such that the Respondent can rely upon paragraph 4(c)(ii) of the Policy (Green Bay Packers, Inc. v. Moniker Privacy Services / Montgomery McMahon, WIPO Case No. D2016-1455). Indeed, on the contrary, as is again addressed in greater detail on the question of bad faith, the Domain Name has been used for a website that fails to identify any independent operator of the relevant website and where the overall impression given is that this is a version of the Complainant’s service.
6.26 The Respondent does not rely upon any independent trade marks of his own. It also does not change the position that the Respondent contends that the Complainant does not have any trade mark rights in Indonesia and the Respondent claims that the website operating from the Domain Name is primarily directed to persons in that territory.
6.27 The Panel is unclear as to whether the claims regarding the targeting and use website are correct. There is evidence filed by the Respondent that suggests that the primary audience of that website is Internet users in Indonesia. However, the Panel notes that there are currently aspect of the website operating from the Domain Name that are in English (with even a US flag being displayed) and links that appear primarily addressed to persons located elsewhere. Further the Panel notes, that in Andrey Ternovskiy dba Chatroulette v. Andrei Tyukalov, WIPO Case No.s. D2018-0235, D2018-0239 and D2018-0311, the panel was somewhat more sceptical of similar claims by the Respondent that the disputed domain names were used for websites directed to India, Japan and Viet Nam.
6.28 However, whether the Respondent’s contentions here are right or wrong does not matter. The reason is that the Respondent’s contentions here are based upon a misconception as to how the UDRP operates. A similar argument to that being put forward by the Respondent as to scope of rights was raised and rejected in Ritzio Purchase Limited v. Domain Admin, PrivacyProtect.org / Timur Ziganshin / Lianna Tall, Escave Ltd / Private Whois, Global Domain Privacy Services Inc / Moniker Privacy Services, WIPO Case No. D2015-0875. In Ritzo both parties had a connection with the Russian Federation and the claim was that there was no valid Russian mark. In that case, the panel stated (at paragraph 6.24) as follows:
“… This Respondent’s argument assumes that simply because the use of a domain name cannot be stopped as a matter of local law in a particular country then the registrant must have a right or legitimate interest in that domain. However, the Panel does not think this is right. It is not uncommon under the Policy for a complainant to own registered trade mark rights in a term in a large number of countries and for that term also to be known in other countries where a mark has not yet been obtained. Should someone register and use a domain name that incorporates that term in a country where trade mark rights do not yet exist with a view to taking unfair advantage of that reputation (for example to sell a competing product), it is unlikely that under the Policy the registrant will have a relevant right or legitimate interest. This is so, even if the complainant cannot demonstrate that the registrant’s use of the domain name is unlawful in a particular jurisdiction.”
6.29 Matters would be perhaps somewhat different if the relevant term that is relied upon is widely understood to be a generic term and this were a case of different entities using that same generic term for the same purpose in different markets. But again as is discussed under the heading of bad faith below, the Panel rejects that is the case.
6.30 It therefore follows that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
6.31 Despite the numerous procedural and technical matters raised by the Respondent, and the arguments about the Complainant’s lack of rights, at its heart this case is a conventional one with a complainant contending that the domain name was registered with knowledge of and an intention to take unfair advantage of the complainant’s mark, and the respondent denying that this is the case. The Panel has little hesitation in rejecting the Respondent’s contentions in this respect.
6.32 First, the Panel rejects the Respondent’s claim that “Chatroulette” is somehow a generic term in relation to the service offered by the parties. The term is obviously suggestive of the nature of that service, but it is not obviously generic. The combination of words “chat” and “roulette” is unusual and there is no evidence that it has become generally used to describe services of the sort. The Respondent has argued that some other person came up with the term for a similar service several years before the Complainant. Even were this true (and the Panel makes no finding in this respect), it makes no difference. The fact that two individuals may independently or otherwise have chosen the same name for businesses or services of the same type, does not demonstrate that the term is generic or wholly descriptive. Further, it appears to be undisputed that whatever the original origins of that term, the person who the Respondent claims to have invented it, has not during the time that the Complainant’s business has operated, used that term commercially.
6.33 Similarly, the Panel is unpersuaded that the fact that there would appear to be another entity that has registered that mark in the Russian Federation is of any real significance in this respect. It was unhelpful that in the case of the Russian Federation that the Complainant failed to explain why he was able to rely upon a Russian trade mark that was not in his name. But the Respondent does not suggest that there is some independent business in either of these two territories that is using this term in some generic sense. On the contrary, in the context of his contentions regarding the use of the term CEO, the Respondent appears to contend that the owners of these marks are businesses with which the Complainant is directly associated.
6.34 Second, the Panel rejects the Respondent’s claim that it was unaware of the Complainant at the time he registered the Domain Name. That is wholly implausible given:
(a) the unusual nature of the term “Chatroulette”;
(b) the fact that by the time the Domain Name was registered in November 2016, the Complainant business had been in operation for many years and had developed considerable fame and notoriety. It is not credible that the Respondent when he decided to offer a very similar service, was not aware of the Complainant’s business;
(c) the fact that the Complainant has at all material times operated his business from the domain name <chatroulette.com>. Again it is not credible that the Respondent in deciding to register at least four different domain names that took the form <chatroulette.[tld]>, would not have been aware of how <chatroulette.com> was being used.
6.35 Further, the Panel concludes that the only reasonable explanation of the Respondent conduct is that in registering and holding the Domain Name he intended to take unfair advantage of the reputation of the Complainant’s business and marks. In addition to each of the factors identified in the preceding paragraph, there is the form of the website that has operated from the Domain Name since registration. Not only is it similar, to that of the Complainant, but there is no attempt to identify the business behind that website. Given this the Panel concludes that an Internet user coming across this website is likely to conclude that this website is somehow authorised by or affiliated with the Complainant, and that it is the Respondent’s intention that this should occur. The Panel notes that this was also the conclusion of the panel in Andrey Ternovskiy dba Chatroulette v. Andrei Tyukalov, WIPO Case No.s. D2018-0235, D2018-0239 and D2018-0311.
6.36 Accordingly, the Panel agrees with the Complainant’s contention that the Respondent’s activities fall within the scope of paragraph 4(b)(iv) of the Policy.
6.37 The fact that the Complainant might have registered the Domain Name, or various other domain names that comprise the term “Chatroulette” combined with a new TLD, is irrelevant to this assessment. This involves the regurgitation of an old argument, frequently recited by respondents in the early days of the UDRP that a registration could not be in bad faith, because a complainant could have registered the domain name itself and that the domain name was available on a first come first served basis. It was misconceived then, since the question is not what the complainant might or could have done, but what the respondent did and for what purpose. It remains misconceived now, notwithstanding the introduction of numerous new TLDs.
6.38 It also makes no difference to those conclusions that (i) the Respondent claims that the Complainant “stole” the idea for his business from another; and (ii) the Respondent claims that the Complainant’s business is illegal.
6.39 So far as the first allegation of theft is concerned, there is no real evidence of this. An email is from the alleged inventor, who claims that his laptop was stolen ten years go by some unspecified person in a fast food restaurant. The Domain Name was indeed initially registered in the name of that person, but the material before the Panel suggests not that there was some transfer of the Domain Name into the name of the Complainant but that it expired and at a later date was registered by the Complainant. Further and more fundamentally, the “inventor” is not the Respondent in this case and has expressly stated that he does not want to get directly involved in these UDRP proceedings. It is, therefore, difficult to see why these allegations are of any relevance to the current dispute between the Complainant and the Respondent.
6.40 So far as the claims of illegality are concerned, they are ones that the Panel are ill-equipped to judge and fall outside of the scope of these proceedings. If they have any foundation (and the Panel expresses no view on this), that is a matter for the Respondent to take up with the relevant authorities. It is important to note that a panel’s task under the UDRP is a limited one. It is not to act as a general arbiter or regulator of conduct on the Internet. It is simply to assess whether the requirements of the Policy have been made out in any particular case. In the absence of any explanation as to why those allegations are relevant to any issue that the Panel has to decide, the Panel has not taken them into account when reaching its decision in this case.
6.41 It therefore follows that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <chatroulette.life> be transferred to the Complainant.
Matthew S. Harris
Date: June 13, 2018