WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy / dba CHATROULETTE v. Chat Roulette, Exclusive Names
Case No. D2018-1024
1. The Parties
Complainant is Andrey Ternovskiy / dba CHATROULETTE of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Chat Roulette, Exclusive Names of Cape Town, South Africa, self-represented.
2. The Domain Name and Registrar
The disputed domain name <chatroulette.cam> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2018. On May 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 15, 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 the Respondent of the Complaint, and the proceedings commenced on May 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 5, 2018. The Response was filed with the Center on June 5, 2018.
The Center appointed Michael A. Albert as the sole panelist in this matter on June 8, 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 Andrey Ternovskiy / dba Chatroulette owns and operates a website created by Mr. Ternovskiy which pairs together random Internet users from around the world for webcam conversations. Complainant owns multiple trademark registrations related to the Chatroulette website, including Russian Trademark Reg. No. 429957 for CHATROULETTE, registered on February 10, 2011; European Union Trademark Reg. No. 008944076 for CHATROULETTE, registered on December 4, 2012; European Union Trademark Reg. No. 008946352 for CHATROULETTE.TO, registered on August 19, 2012; German Trademark Reg. No. 3020100037067 for CHATROULETTE, registered on February 21, 2013; and United States Trademark Reg. No. 4445843 for CHATROULETTE, registered on December 10, 2013.
According to the United States Registration Certificate for the CHATROULETTE mark, the mark was first used in commerce by Complainant on December 5, 2009, and according to the Russian Registration Certificate for the CHATROULETTE mark, Complainant first filed for trademark registration on November 3, 2010.
Complainant’s website averaged over 4.5 million monthly visitors between November 2017 and January 2018 and is one of the most popular video chat sites in the world. Complainant has also been featured in newspapers such as The New York Times and The New Yorker.
Respondent registered the disputed domain name, <chatroulette.cam>, with Name.com, Inc. on February 25, 2018. The disputed domain name resolves to an active website containing a link to begin a video chat with a random Internet user. The link leads to another site at the domain name <freeomegle.com> which offers a video chat service similar to the service that Complainant offers. On March 1, 2018, two weeks before receiving a cease-and-desist letter from Complainant on March 14, 2018, Respondent requested permission from Complainant to use his camera module on the disputed domain name.
5. Parties’ Contentions
Complainant alleges that the disputed domain name is identical or confusingly similar to its CHATROULETTE marks because it consists of Complainant’s mark in its entirety, accompanied only by the generic Top-Level Domain (“gTLD”) “.cam.”
Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name because Complainant has not given Respondent permission to use the CHATROULETTE mark, Respondent is not affiliated with Complainant, Respondent is not commonly known by the disputed domain name, and Respondent is not engaged in the bona fide offering of goods or services.
Complainant alleges Respondent demonstrated a “pattern of trademark-abusive domain registrations” by utilizing well-known trademarks in which Respondent has no rights or legitimate interests. Complainant alleges these past bad faith registrations demonstrate that Respondent has no legitimate rights or interest in the disputed domain name and that Respondent registered and used the disputed domain name in bad faith.
Finally, Complainant alleges that Respondent has registered and used the disputed domain name in bad faith because Respondent knew or should have known of Complainant’s mark when registering the disputed domain name. Complainant contends that Respondent has intentionally tried to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, which is evidence of bad faith.
Respondent’s reply did not address Complainant’s contentions or contain any contentions relevant to a decision under the Policy.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has demonstrated rights to the CHATROULETTE marks. The mark was first used in commerce on December 5, 2009, and was first registered as a trademark on October 2, 2011 in Russian Federation. The mark has been in continuous use and Complainant subsequently registered the mark in the European Union, Germany, and the United States. See Disney Enterprises, Inc. v. Paul Kudrna c/o The Finest Group, NAF Claim No. 686103 (finding that complainant’s registration of a mark with the USPTO prior to respondent’s registration of the disputed domain name is sufficient to prove that complainant has rights to the mark pursuant to paragraph 4(a)(i) of the Policy).
The disputed domain name is identical to Complainant’s CHATROULETTE marks since it incorporates the entirety of the marks with no changes. The addition of the gTLD “.cam” does not have a distinguishing effect. Furthermore, the gTDL is generally not considered when determining the similarity between a domain name and a trademark. See Virgin Enterprises Limited v. Cesar Alvarez, WIPO Case No. D2016-2140 (“It is well established that the addition of a gTLD extension (such as ‘.shop’ in this case) is generally irrelevant … [e]specially when the new gTLD represents an obvious addition to the relevant Complainant’s trademark.”); Google Inc. v. Nijat Hassanov, WIPO Case No. D2011-1054 (“[T]he mere addition of the letters ‘x’ and ‘xxx’ and the suffix ‘com’ was held to be an irrelevant distinction which did not prevent the likelihood of confusion in the minds of Internet visitors.”).
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Once Complainant makes a prima facie case that none of the circumstances described in paragraph 4(c) of the Policy applies to Respondent, Respondent bears the burden of production to demonstrate rights to or legitimate interests in the disputed domain name. See Linode LLC v. Dennis H. Doss, WIPO Case No. D2014-1532. Complainant’s rights in its CHATROULETTE marks are clearly established by their registration and continued use. Complainant alleges that Respondent has not used the disputed domain name with Complainant’s authorization, nor is Respondent sponsored by or affiliated with Complainant. Furthermore, Complainant alleges that Respondent is not commonly known by the disputed domain name and that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or a legitimate noncommercial use. As a result, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. In its reply, Respondent failed to point to any evidence demonstrating otherwise and, therefore, has not met its burden of production.
The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant has established that Respondent registered and used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, which states there is evidence of bad faith if, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Respondent is highly likely to have had actual knowledge of Complainant’s CHATROULETTE mark, as evidenced by Respondent’s use of Complainant’s mark in full in the disputed domain name and Respondent’s request to use Complainant’s cam module on Respondent’s website at the disputed domain name. The fact that Respondent registered a domain name incorporating a well-known trademark associated with a highly-visited website is alone sufficient to give rise to an inference of bad faith. See, e.g., Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487 (finding it was inconceivable that respondent was unaware of a mark owned and used by an internationally-known company). Complainant further points to Respondent’s chosen gTLD of “.cam” as a clear reference to webcam related services as an indication that Respondent intended to attract Internet users to the website by creating a likelihood of confusion with Complainant’s mark.
Additionally, Respondent is using the disputed domain name to provide a web-based chat service in direct competition with Complainant’s services. Respondent’s website contains a link to a website that competes directly with Complainant’s website. Given the similarity of the website offerings, and that the disputed domain name is identical to Complainant’s mark, it is clear that Respondent had Complainant’s mark in mind when registering the disputed domain name.
Additionally, Respondent has engaged in a pattern of bad faith registrations. Respondent also registered other domain names that incorporate the marks of third parties, such as <omeglecams.info> which incorporates the mark of Omegle and <redbullenergydrinks.com> which incorporates Red Bull’s mark. See Rolls-Royce PLC v. Ragnar Kallaste, WIPO Case No. D2014-2218 (holding that where respondent engaged in a pattern of registering domain names corresponding to well-known marks, there was evidence of bad faith under paragraph 4(b) of the Policy); Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 (finding bad faith where respondent engaged in a pattern of depriving trademark owners of the ability to register domain names reflecting their marks).
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 name <chatroulette.cam> be transferred to Complainant.
Michael A. Albert
Date: June 20, 2018