WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Domain Administrator, See PrivacyGuardian.org / Zhichao Yang
Case No. D2018-1664
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 Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America / Zhichao Yang of Hefei, China.
2. The Domain Names and Registrar
The disputed domain names <chatroulerte.com>, <chatrouletye.com> and <chatrouleyte.com> are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2018. On July 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 26, 2018, the Registrar transmitted by email to the Center its verification response 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 July 26, 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 July 31, 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 August 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2018.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on September 10, 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 Complainant is owner of various trademark registrations, for example European Union Trade Mark No. 8944076 CHATROULETTE, registered on December 4, 2012.
The Respondent obtained the disputed domain names on March 7, 2018. All three disputed domain names redirect to a website that offers links to pages with adult content.
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 Federal Institute of Intellectual Property, and German Patent and Trademark Office.
“Chatroulette” is not a dictionary word, rather a creation of the Complainant, a creative agglutination of the words “chat” and “roulette”.
The disputed domain names direct to a page with several links to third parties’ adult websites. The Complainant alleges that such proceeding is clearly calculated to mislead consumers and tarnish the Complainant’s trademark. Further, the Complainant alleges that there is no coincidence in the adoption of the disputed domain names, being the choice a pretext for commercial advantage.
The Complainant tried to contact the Respondent by addressing cease-and-desist (“C&D”) letters by email, but no response was ever received to this correspondence.
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. They clearly show the Complainant’s mark with the addition/replacement of a letter that normally is placed beside the correct one in the keyboard, which can be seen as an example of typosquatting.
The Complainant has presented consistent evidence of ownership of the trademark CHATROULETTE in various jurisdictions, by presenting international registrations for it, as well as evidence of the use of the trademark to identify the original services as of 2009.
The use of the trademark either with the substitution of letters in the disputed domain names does not differentiate them from the trademark. Further, the additional letters can also be considered to be produced by mistyping, a conduct which typosquatters take profit from.
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 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 or has not otherwise permitted the use of the disputed domain names, 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 names. In the absence of a Response, the Respondent has not rebutted such prima facie case.
It has also been shown that the Respondent redirects the disputed domain names to a page with several links to third parties’ adult websites. The Complainant alleges that such proceeding misleads consumers and tarnishes the Complainant’s trademark, as the Respondent is using the disputed domain names to redirect Internet users to a website featuring links to a third party’s website. The Panel finds that hosting parked pages comprising 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 Panel finds that the disputed domain names were registered to mislead consumers, with the additional letters inserted in the Complainant’s trademark. The Respondent’s intention appears to have been to give the impression that each of the disputed domain names is associated with the Complainant.
Further, the Respondent’s lack of responding to several attempts of communication from the Complainant can be considered as further evidence of bad faith.
The Panel considers that using the disputed domain names for a website that offers links to pages with adult content further suggests bad faith.
All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant at the time of registration of the disputed domain names 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 <chatroulerte.com>, <chatrouletye.com> and <chatrouleyte.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Date: September 24, 2018