WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Contact Privacy Inc. Customer 0126789266 / Matthew Allan, Injektion Media Ltd
Case No. D2018-1184
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Contact Privacy Inc. Customer 0126789266 of Toronto, Canada / Matthew Allan, Injektion Media Ltd of Vancouver, Canada.
2. The Domain Name and Registrar
The disputed domain name <gaychatroulette.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2018. On May 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 29, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name(s) which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 7, 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 June 12, 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 the Respondent of the Complaint, and the proceedings commenced on June 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on July 16, 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
Chatroulette, created and owned by the Complainant is an online chat website that pairs random people from around the world together for real-time, webcam-based conversations.
The Complainant created the Chatroulette service and website in 2009 and shortly after its launch it began to receive 500 visitors per day while continuing to experience consistent growth. Only one month after its launch the number of visitors grew to 50,000 per day, approximately 1.5 million per month.
The Complainant owns a number of trademark registrations for the word mark CHATROULETTE, including for example United States of America Trademark Registration No. 4445843 with priority of January 10, 2011, and European Union Trademark Registration No. 008944076 with priority of March 10, 2010. These trademarks are referred to as the “CHATROULETTE trademark” in this decision.
Since November 16, 2009 the Complainant has owned the domain name <chatroulette.com> which is linked to the principal website for his Chatroulette service.
The Disputed Domain Name was registered on January 1, 2010 and it redirects to a website which provides what it describes as “random video chat for gay guys”.
Prior to filing its Complaint the Complainant sent a cease-and-desist letter to the Respondent requesting cessation of any use of the Disputed Domain Name and transfer of it to the Complainant. The Respondent did not reply to the Complainant’s cease-and-desist letter.
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Name is confusingly similar to his CHATROULETTE trademark since it reproduces the trademark in its entirety and addition of the descriptive term “gay” is not sufficient to distinguish the Disputed Domain Name from the Complainant’s trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant states that the Respondent incorporated his CHATROULETTE trademark in the Disputed Domain Name with the obvious intent to capitalize on the reputation of it by diverting Internet users seeking the Complainant’s services to the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel notes that no Response has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may thereby draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(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.
A. Identical or Confusingly Similar
The Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s CHATROULETTE trademark. It is established that the addition of a descriptive term (such as here “gay”) to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not generally affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
On the evidence before it, the Panel finds “chatroulette” to be a term in relation to which the Complainant has developed, in a short time, a substantial reputation for its online business.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the CHATROULETTE trademark. The Complainant has prior rights in the CHATROULETTE trademark which precede the Respondent’s registration of the Disputed Domain Names. In this respect the Panel notes that the Complainant’s registered trademarks have priority dates after the date of registration of the Disputed Domain Name. The Panel is however satisfied that the Complainant had by the time the disputed domain was registered developed his business to the extent where unregistered trademark rights applied (see further the discussion below). The Complainant has therefore established a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
The distinctive nature of the CHATROULETTE trademark, and in particular the evidence as to the extent of the reputation the Complainant enjoyed in the CHATROULETTE trademark, in combination with the timing of the Respondent’s registration of the Disputed Domain Name and the Respondent’s use thereof, suggest to the Panel registration and use in bad faith. This conclusion is reinforced by the fact that the Disputed Domain Name combines the CHATROULETTE trademark with a descriptive term, and by the lack of any credible explanation from the Respondent as to why he registered the Disputed Domain Name lead the Panel to conclude the registration and use were in bad faith.
The website currently linked to the Disputed Domain Name offers a video chat service which in broad terms has some similarity to the Complainant’s service. The Disputed Domain Name was registered at a time when the evidence shows the Complainant’s service was becoming increasingly popular and experiencing exponential growth. The Panel infers that the Respondent’s motive was to capitalise on the Complainant’s popularity by adopting a confusingly similar name for his own service. As such that is within the Policy, paragraph 4(b)(iv), as evidence of the registration and use of a domain name in bad faith:
“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 the 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”.
In reaching this conclusion the Panel is aware of the discussion in another case involving the Complainant and concerning <chatroulette.org> (Andrey Ternovskiy dba Chatroulette v. Domain Hostmaster, CustomerID: 61529007151882, Whois Privacy Services Pty Ltd / Xedoc Holding SA, WIPO Case No. D2018-0201).
In that case the panel concluded that the complainant had not discharged its burden of proof that the domain name concerned had been registered in bad faith in November 2010, the respondent contending that as at that date it was unaware of the complainant and his chatroulette service. The panel stated
“resolution of this matter would be better addressed by a court where discovery and examination can better get at the Respondent's motives and knowledge. The Panel finally notes that both Parties' various pleadings in this matter (not to mention the failure to reach an amicable settlement) have in certain respects been difficult to understand and that the competing claims dealt with through various supplemental submissions and panel orders illustrate a case that pushes the UDRP to its outer limits for resolving the disputes for which it was designed”.
The Panel is satisfied in the present complaint that the Complainant has established a prima facie case that the Respondent’s registration of the Disputed Domain Name was prompted by the rapidly growing reputation which the Complainant had established in the name “Chatroulette” as at the relevant date. In the latter regard, the Complaint notes:
“The Complainant registered its <chatroulette.com> domain name on November 16, 2009 and established its Chatroulette service and website very shortly thereafter, before the registration of the Disputed Domain Name on January 1, 2010 [….].
Very shortly after its launch, the Chatroulette website began to receive 500 visitors per day while continuing to experience consistent growth, and only one month later in January 2010, this figure had astonishingly increased to 50,000 visitors per day (approximately 1.5 million users per month). This represented a 10,000% increase in traffic over just one month, which is exceptional and demonstrates just how quickly Chatroulette grew in popularity. Perhaps even more incredibly, in February 2010, that traffic had jumped to approximately 130,000 visitors per day (3.9 million monthly visitors), which is a 26,000% increase in traffic over the December 2009 figures”.
On February 13, 2010 the New York Times carried an article about the Complainant and his service, commenting on the “suddenly popular new website”. This to the Panel’s mind further supports the Complainant’s case that the Respondent would have been aware of the Complainant’s success when the Respondent registered the Disputed Domain Name – and indeed sought to free-ride on that obvious reputation.
Accordingly the Panel considers it appropriate to draw the inference that Respondent was aware of the Complainant’s recently launched service and deliberately adopted a confusingly similar name for his own service. The Respondent has failed to rebut that inference.
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all 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 <gaychatroulette.com> be transferred to the Complainant.
Date: July 30, 2018