WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. S Jon Grant
Case No. D2018-1110
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is S Jon Grant of Las Vegas, Arizona, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <livechatroulette.net> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2018. On May 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2018, the Registrar transmitted by email to the Center its verification response confirming that the 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 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2018.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on June 28, 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 operates an online website that pairs random people for real-time web-cam based conversations.
The Complainant is the owner of following trademark registrations:
- Russian Federation Trademark Registration No. 429957 for CHATROULETTE, filed on March 11, 2010, registered on February 10, 2011, in classes 35, 38 and 42;
- European Union Trademark Registration No. 008944076 for CHATROULETTE, filed on March 10, 2010, registered on December 4, 2012, in classes 35, 38 and 42;
- Germany Trademark Registration No. 3020100037067 for CHATROULETTE, filed on March 10, 2010, registered on March 28, 2013, in classes 35, 38 and 42;
- United States of America Trademark Registration No. 4445843 for CHATROULETTE, filed on January 10, 2011, registered on September 24, 2013, in classes 38 and 45;
The disputed domain name is <livechatroulette.net> and was registered on February 13, 2014. The disputed domain name resolves to a parked webpage displaying sponsored links, some of which relate to the Complainant’s competitors.
5. Parties’ Contentions
The Complainant asserts that he created the website <chatroulette.com> on November 16, 2009, when no website which allowed for video chatting with random Internet users from around the world existed. The combination of the terms “chat” and “roulette” which is associated with the thrill of unpredictability resulted in a name that encapsulated the mission of his business which has seen exponential growth and impressive popularity.
According to the Complainant, having been depicted by numerous publications such as The New York Times, The New Yorker, New York Magazine and television shows such as Good Morning America and The Daily Show with John Stewart led its website to a meteoric rise in popularity, having reached over 270,000 unique monthly visitors in the month of December 2017 as indicated by Alexa.com statistics.
Under the Complainant’s view, such promotion and investments over the years to promote the CHATROULETTE trademark demonstrate that the Complainant’s website enjoys a substantial degree of public recognition and his mark has become uniquely and distinctively associated with the Complainant.
As to the disputed domain name the Complainant asserts that the addition of the generic, descriptive term “live” before the Complainant’s CHATROULETTE trademark makes it confusingly similar therewith, given that such term is closely linked and associated with the Complainant’s online, real-time services.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent is not sponsored by or affiliated with the Complainant in any way;
(ii) the Respondent has not been granted permission to use the Complainant’s trademark in any manner;
(iii) the Respondent has not been commonly known by the disputed domain name;
(iv) the Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-parties websites, some of which are direct competitors of the Complainant, what cannot be considered a bona fide offering of goods and services; and
(v) the Complainant has been using his website since 2009, having registered the CHATROULETTE trademark in various countries well before the disputed domain name was registered.
The Complainant contends that the registration of the disputed domain name was done clearly in bad faith given that the Respondent knew or at least should have known of the Complainant’s well-known trademark. Moreover, the Respondent appears to be a cyber squatter, having been named respondent in the prior UDRP panel, Tata Motors Limited v. S Jon Grant, WIPO Case No. D2015-0092, where such pattern of bad faith conduct has also been recognized. In addition to that, the Respondent appears to be the owner of other domain names which relate to or reproduce famous marks such as <createfacebookaccount.com>, <fb-facebook.com>, <google-video.top> and <googletrans.com> (Annex 11 to the Complaint).
Lastly, the fact that the Respondent chose not to reply to the cease-and-desist letter sent to him before this procedure is a further indication of his bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name.
A. Identical or Confusingly Similar
The Complainant has established rights in the CHATROULETTE trademark, duly registered in various jurisdictions.
The Panel finds that the disputed domain name <livechatroulette.net> merely reproduces the Complainant’s mark with the addition of a generic prefix, the term “live”, that relates to the Complainant’s business and which is insufficient to avoid any likelihood of confusion, not impacting the overall impression of the disputed domain name which is dominated by the Complainant’s trademark.
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that the Respondent is not sponsored by or affiliated with the Complainant in any way, nor has he been granted permission to use the Complainant’s trademark in any manner.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Two other elements to be considered in this case are the indication that the Respondent has engaged in a pattern or registering domain names that relate to third parties and is possibly using them to earn revenues from sponsored links and pay-per-click advertisements such as the ones available at the website that resolves from the disputed domain name. Such use does not characterize bona fide offering of goods or services under the Policy.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring them to the complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the complainant; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The registration and use of the disputed domain name can be found in the present case in view of the following circumstances:
(i) the Complainant’s trademark is well-known;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name;
(iii) the Respondent appears to have engaged in a pattern of registering domain names that incorporate third parties well-known trademarks;
(iv) the Respondent appears to have provided a false or inexistent address; and
(v) the Respondent did not reply to the Complainant’s cease-and-desist letter sent prior to the filing of this procedure.
For the reasons stated above, the Respondent’s conduct amounts, in this Panel’s view, to bad faith registration and use of the disputed domain name.
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 <livechatroulette.net> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: July 11, 2018