WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Domain Administrator, Fundacion Privacy Services LTD
Case No. D2018-1644
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD of Panama City, Panama.
2. The Domain Names and Registrar
The disputed domain names <chateroulette.com>, <chatoroulette.com>, <chatrolet.com>, <chatrollet.com>, <chatrouelette.com>, <chatroutte.com>, <chatrroulette.com>, <chatrulett.com>, <chatrullete.com>, <chattroulet.com>, and <chattroulett.com> are registered with Media Elite Holdings Limited dba Register Matrix (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 20, 2018. On July 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 23, 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 July 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 21, 2018.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on August 24, 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 is Mr. Andrey Ternovskiy dba Chatroulette ("Chatroulette"). The mark Chatroulette identifies an online chat website that pairs random people from around the world together for real-time, webcam-based conversations.
Mr. Ternovskiy created the Chatroulette service and website in 2009 when he was just a 17-year-old high school student in Moscow, Russian Federation. Chatroulette is associated with, and known for providing, online video chat services and online video social introduction and networking services. The immediate success of the service and website led the mark to be rapidly known throughout the world.
The Respondent is protected by a privacy shield and obtained the 11 disputed domain names between January and February 2010. They were all transferred to the current registrar between December 17, 2017 and January 18, 2018.
5. Parties' Contentions
The Complainant started using the mark CHATROULETTE to identify its services and website in 2009. The service provided was innovative and for that reason was successful. The mark identifies the services from the Complainant all over the world.
The Complainant is the owner of trademark registrations obtained in different jurisdictions, as stated in Annex 2 of the Complaint, which presents registrations issued by the United States of America's Patent and Trademark Office ("USPTO"), European Union Intellectual Property Office, Swiss registrars, and German registrars.
CHATROULETTE is not a dictionary word, rather a creation of the Complainant, a creative agglutination of the words "chat" and "roulette".
Some of the disputed domain names direct to an inactive website, while others redirect Internet users to a website featuring links to third parties' websites, some of which directly compete with the Complainant's business. The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names and that the disputed domain names were registered and used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Policy, in its paragraph 4(a), determines that three elements must be presented and duly proven by a complainant to obtain relief. These elements are:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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 disputed domain names are, indeed, confusingly similar to the CHATROULETTE trademark. While four of them show the Complainant's mark with the addition of a letter, which can be seen as an example of typosquatting, the remaining ones consist of expressions clearly inspired or copied from the referred mark, either by suppressing one or more syllabi, or by contracting them, but resulting in a term that is phonetically similar to the mark of the Complainant.
The Complainant has presented consistent evidence of ownership of the trademark CHATROULETTE in jurisdictions throughout the world, by presenting international registrations for it, as well as comprehensive evidence of the use of the trademark to identify the original services as of 2009.
The use of the trademark either with the addition of extra "t", "c", 'e" or other letters in the disputed domain names does not differentiate them from the trademark. Further, the additional letters, or even the contraction of the term can be also considered a common mistyping, a fact which typosquatters normally take profit from by giving Internet users the impression that the disputed domain names belong to the Complainant.
Given the above, the Panel concludes that the disputed domain names are confusingly similar to the registered trademark of the Complainant.
B. Rights or Legitimate Interests
Given the clear evidence that the trademark CHATROULETTE is widely known as identifying the Complainant's activities, and is registered in the Complainant's name; given also that the Complainant has not licensed this trademark to the Respondent, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response, the Respondent has not rebutted such prima facie case.
It has also been shown that the Respondent is either not making any direct use of the disputed domain names, likely having registered them to create a likelihood of confusion with the Complainant's mark, or is using it to redirect Internet users to a website featuring links to third parties' websites, some of which directly compete with the Complainant's business - and the use of domain names to host parked pages comprising PPC links does not represent a bona fide offering.
The Panel, thus, finds for the Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
Given the circumstances of this case, the facts outlined in sections A and B above can also evidence the Respondent's bad faith in the registration and use of the disputed domain names.
The disputed domain names were registered to clearly mislead the consumers – either with the extra letters in the trademark, or with confusingly similar terms. The Respondent intended to give an overall impression that each of the disputed domain names is associated with the Complainant, and the Panel accepts that the disputed domain names may be intended for unlawful purposes.
The current passive holding of some of the disputed domain names, in the context of typosquatting, does not prevent a finding of bad faith registration and use.
Further, using other disputed domain names for websites where various services in the same line as the one offered by the Complainant is also a clear act of bad faith.
All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant and that the Respondent registered and is using the disputed domain names in bad faith.
The Panel finds that the Complainant has also proved the third element 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 names <chateroulette.com>, <chatoroulette.com>, <chatrolet.com>, <chatrollet.com>, <chatrouelette.com>, <chatroutte.com>, <chatrroulette.com>, <chatrulett.com>, <chatrullete.com>, <chattroulet.com>, and <chattroulett.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Date: September 5, 2018