WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Contact Privacy Inc. Customer 0126798307 / David Grandpierre
Case No. D2018-1386
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Contact Privacy Inc. Customer 0126798307 of Toronto, Canada / David Grandpierre of Kyoto, Japan.
2. The Domain Names and Registrar
The disputed domain names <webcam-chat-roulette.com> and <webcamchatroulette.com> are registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 21, 2018. On June 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <webcamchatroulette.com>. On June 21, 2018, the Registrar transmitted by email to the Center its verification 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 the Complainant on June 27, 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 29, 2018, which inter alia added the additional disputed domain name <webcam-chat-roulette.com>.
On July 2, 2018, the Center sent an email to the Registrar with a request for registrar verification for <webcam-chat-roulette.com>. On July 3, 2018, the Registrar transmitted by email to the Center its verification confirming that the Respondent is listed as the registrant and providing the contact details.
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 amended Complaint, and the proceedings commenced on July 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 26, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on August 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
Chatroulette is an online chat website that allows visitors to the website to make random connections with other website visitors using text, audio and video format. It was developed by the Complainant, then a high school student in Moscow, Russian Federation, and launched in December 2009. The chat site pairs users at random, and a user by "spinning" may at any time leave one chat and initiate another random connection.
The Complainant's online chat website "went viral" within a relatively brief period of time following its launch. By January 2010, one month after its launch, the Complainant's website had 50,000 visitors per day (approximately 1.5 million users per month). By February 2010 Internet traffic had grown to approximately 130,000 visitors per day (equivalent to 3.9 million monthly visits). As a result of such exponential growth, the Complainant's Chatroulette website received significant media attention, including articles in The New York Times, The New York magazine, and the New Yorker, and on television shows including Good Morning America and The Daily Show with Jon Stewart.
The Complainant is the owner of trademark registrations for CHATROULETTE in numerous jurisdictions, including the European Union (EUTM) Reg. No. 008944076, applied for on March 3, 2010, and registered on December 4, 2012; Swiss Reg. No. 600401, applied for on March 16, 2010, and registered May 14, 2010; German Reg. No. 302010003706, applied for on March 10, 2010, and registered on February 21, 2013; and United States Reg. No. 4445843, applied for on January 10, 2011, and registered on December 10, 2013, with the first use of the mark in commerce on December 5, 2009). 1
In addition, the Complainant's CHATROULETTE trademark has been recognized as a well-known mark in several UDRP panel decisions. See, e.g., Andrey Ternovskiy dba Chatroulette, WIPO Case No. D2018-0279; Andrey Ternovskiy dba Chatroulette v. A Anoniem, WIPO Case No. D2017-0940, Andrey Ternovskiy dba Chatroulette v. Alexander Ochkin, WIPO Case No. D2017-0334.
The disputed domain names <webcam-chat-roulette.com> and <webcamchatroulette.com> were registered on May 28, 2010, and February 15, 2010, respectively, according to the Registrar's WhoIs records.2 The disputed domain name <webcamchatroulette.com> currently redirects Internet users to the Complainant's website at "www.chatroulette.com". The Respondent took this action after receiving a cease and desist letter from the Complainant's representative. The disputed domain name <webcam-chat-roulette.com> resolves to the Respondent's "Website Chat Roulette" website, a random webcam-based online chat site that competes directly with the Complainant. The Respondent also has used at least one of the disputed domain names with a pay-per-click website.
The Respondent has been found in two previous UDRP cases to have registered and used domain names appropriating the Complainant's CHATROULETTE mark in bad faith. See Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / David Grandpierre webcam, WIPO Case No. D2017-1469 (<webcamchat-roulette.com>); Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / David Grandpierre, WIPO Case No. D2017-0456. The Respondent concealed his identity in both cases, as here, through the use of a privacy protection service.
5. Parties' Contentions
A. Complainant
The Complainant submits that the disputed domain names are confusingly similar to the Complainant's CHATROULETTE mark. The Complainant maintains that the addition of the generic term "webcam" in the in the disputed domain names does not dispel the confusing similarity of the disputed domain names to the Complainant's mark, and that the close association of "webcam" with the Complainant's mark further serves to underscore the confusing similarity. The Complainant similarly asserts that the inclusion of hyphens in the disputed domain name <webcam-chat-roulette.com> does not diminish the confusing similarity of the disputed domain name to the Complainant's mark. In addition, the Complainant observes that the registration of the disputed domain names prior to the Complainant's registration of the CHATROULETTE mark does not preclude standing for purposes of the first element of the Policy, which requires only that the Complainant's trademark rights were in existence when the Complaint was filed.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant represents that the Respondent is not sponsored by or affiliated with the Complainant, and confirms that the Respondent has not been licensed or authorized to use the Complainant's marks in any manner. The Complainant further observes that the Respondent is not commonly known by the disputed domain names, and submits that, lacking permission to use the Complainant's CHATROULETTE mark, no actual or contemplated bona fide use of the disputed domain names can be claimed by the Respondent.
The Complainant emphasizes that the Respondent registered and has used the disputed domain names to divert Internet users to a competing random webcam-based online chat service, and to divert Internet users to a pay-per-click website. The Complainant further notes that the Respondent, rather than responding to cease and desist letters sent by the Complainant, has redirected the disputed domain name <webcamchatroulette.com> to the Complainant's website. In view of the foregoing, the Complainant submits that the Respondent has neither used or made demonstrable preparations to use the disputed domain names with a bona fide offering of goods or services, or made a legitimate noncommercial or other fair use of the disputed domain names.
The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. The Complainant submits that its CHATROULETTE mark is known internationally and registered across numerous countries. The Complainant explains that it registered the domain name <chatroulette.com> on November 16, 2009, and shortly thereafter launched its Chatroulette service and website several months prior to the Respondent's registration of the disputed domain names. The Complaint concludes that the Respondent would have been aware of the Complainant's Chatroulette.com website due to its exponential growth and significant media attention, and asserts that the Respondent registered the disputed domain names seeking to target and unfairly capitalize on the Complainant's nascent trademark rights by launching a directly competing website.
The Complainant contends that the Respondent registered and has used the disputed domain names in an intentional attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of the Respondent's website or the product or service offered on the website. The Complainant maintains that the Respondent also sought to profit from and exploit the popularity of the Complainant's mark to divert Internet traffic to a pay-per-click website.
The Complainant asserts that the Respondent has engaged in a bad faith pattern by registering multiple domain names to prevent the Complainant from registering domain names reflecting its CHATROULETTE mark, citing the UDRP cases Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / David Grandpierre webcam, WIPO Case No. D2017-1469; and Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / David Grandpierre, WIPO Case No. D2017-0456. Additionally, the Complainant submits that the Respondent's bad faith is evinced by the Respondent's employment of a privacy protection service and the Respondent's failure to respond to the Complainant's cease and desist letters.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term "cybersquatting" is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain names
<webcam-chat-roulette.com> and <webcamchatroulette.com> are confusingly similar to the Complainant's CHATROULETTE mark, in which the Complainant has demonstrated rights based on registration and use in commerce. In considering this issue, the first element of the Policy serves essentially as a standing requirement.3 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant's trademark and the disputed domain name.
In this case, the Complainant's CHATROULETTE mark is clearly recognizable in the corresponding disputed domain names. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.4 Additionally, Top-Level Domains (TLDs) generally are disregarded when evaluating the identity or confusing similarity of the complainant's mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.5
While the Policy makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. Accordingly, the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant's standing to file a UDRP case, nor a panel's finding of identity or confusing similarity under the paragraph 4(a)(i) of the Policy.6
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain names are confusingly similar to the Complainant's CHATROULETTE mark, and it is undisputed that the Respondent has not been authorized to register or use the Complainant's mark. The Complainant's Chatroulette website was launched in December 2009, and quickly "went viral", experiencing exponential growth in January and February of 2010, generating significant media attention and publicity. The disputed domain names were registered on February 15, 2010, and May 28, 2010. The record reflects the Respondent's use of the disputed domain names to divert Internet visitors to an online chat website that competes with the Complainant's Chatroulette website, and use with a pay-per-click website. Given the attendant circumstances, the record supports an inference that the Respondent was aware of the Complainant's existing or nascent rights in the Complainant's CHATROULETTE mark when registering the disputed domain names.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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 he has acquired no trademark 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.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the "safe harbors" of paragraph 4(c) of the Policy.
The Respondent has not brought forward any evidence of rights or legitimate interests in the disputed domain names. To the contrary, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Internet users diverted to the Respondent's websites are likely to believe they have arrived at the Complainant's website, or a website that is sponsored, affiliated or endorsed by the Complainant, when such. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain names within the contemplation of paragraph 4(c)(iii) of the Policy. As noted above, the Respondent has not been authorized to use the Complainant's mark, and there is nothing in the record to suggest that the Respondent has been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. Having regard for the totality of facts and circumstances in the record, the Panel considers it likely that the Complainant had established common law or unregistered trademark rights in the CHATROULETTE mark prior to the Respondent's registration of the disputed domain names. Nevertheless, assuming arguendo that the Respondent registered the disputed domain names prior to the Complainant acquiring trademark rights in CHATROULETTE, a finding of bad faith is not precluded in the circumstances of this case.
As previously discussed, the Complainant registered the domain name <chatroulette.com> on November 16, 2009, and launched the Chatroulette website shortly thereafter in December 2009. The Complainant's website "went viral" and experienced exponential growth in January and February 2010, which served to attract significant media attention and publicity, and which evidently attracted the Respondent's attention as well. The Respondent's opportunistic registration and use of the disputed domain names clearly reflects the Respondent's intent to exploit or otherwise capitalize on the Complainant's existing or nascent trademark rights, and is indicative of the targeting of the Complainant's mark by the Respondent. See WIPO Overview 3.0, section 3.8.2. The Panel thus concludes that the Respondent registered and is using the disputed domain names in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
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 names <webcam-chat-roulette.com> and <webcamchatroulette.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: August 17, 2018
1 The Complainant also presents a Russian trademark for CHATROULETTE, Russian Federation Reg. No. 429957, applied for on March 11, 2010, and registered on February 10, 2011. However, the trademark registration is not in the name of the Complainant, and the Complainant has offered no explanation. See Andrey Ternovskiy dba Chatroulette v. Contact Privacy Inc. Customer 0146570411 / Andrei Tyukalov, Private Person, WIPO Case No. D2018-0864.
2 Because the Respondent concealed his identity through use of a privacy service, it is unclear whether the Respondent was the initial registrant of the disputed domain names or whether the Respondent subsequently acquired the disputed domain names from a prior registrant.
3 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.
4 See WIPO Overview 3.0, section 1.8 and cases cited therein.
5 See WIPO Overview 3.0, section 1.11 and cases cited therein. The meaning of a particular TLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.
6 See WIPO Overview 3.0, section 1.1.3 and cases cited therein.