WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. 1&1 Internet Inc / David Grandpierre
Case No. D2018-2237
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is 1&1 Internet Inc of Pennsylvania, Unites States of America (“United States”) / David Grandpierre of Kyoto, Japan.
2. The Domain Names and Registrar
The disputed domain names <chat-roulettewebcam.com>, <chat-webcam-roulette.com>, <chat‑webcamroulette.com>, <chatwebcam-roulette.com>, and <webcam-chat-roulette.net> are registered with 1&1 Internet SE (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2018. On October 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 12, 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 October 24, 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 October 29, 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 October 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2018.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on November 30, 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 Chatroulette is an online chat website that pairs random people from around the world together for real-time, webcam-based conversations. The Complainant is associated with, and known for providing, online video chat services and online video social introduction and networking services.
The Complainant created the Chatroulette service and website in 2009 when he was a seventeen-year-old student in Moscow. The complainant chose the name Chatroulette after watching the film “The Deer Hunter” in which American soldiers in Vietnam played a game of Russian roulette. The Complainant combined the term “chat”, which is the main purpose of the Complainant’s website and the word “roulette”, which is associated with the thrill of unpredictability.
Very shortly after its launch, the Chatroulette website began to receive 500 visitors per day and continued to experience consistent growth. By January 2010, the number of visitors per day had increased to approximately 50,000 which means 1.5 million users per month.
The Complainant is the owner of numerous trademark registrations across various jurisdictions for the term CHATROULETTE including, among others:
- CHATROULETTE (Russia), Registration No. 429957, filed on 2010 and registered on 2011;
- CHATROULETTE (European Union), Registration No. 008944076, filed in 2010 and registered in 2012;
- CHATROULETTE.TO (European Union), Registration No. 008946352, filed in 2010 and registered in 2012;
- CHATROULETTE (Deutsches), Registration No. 302010003706, filed in 2010 and registered in 2013; and
- CHATROULETTE (United States), Registration No. 4445843, filed in 2011 and registered on 2013.
Moreover, the Complainant is the owner of the domain name <chatroulette.com> which was registered on November 16, 2009.
The Respondent registered the following Disputed Domain Names:
<chat-webcamroulette.com> registered on June 27, 2011;
<chatwebcam-roulette.com> registered on June 28, 2011;
<chat-roulettewebcam.com> registered on July 1, 2011;
<chat-webcam-roulette.com> registered on June 25, 2011; and
<webcam-chat-roulette.net> registered on May 9, 2014.
The Disputed Domain Names are currently inactive. However, the Complainant provided evidence that some of the Disputed Domain Names called themselves Webcam Chatroulette and they claimed to be a platform to meet new friends from around the world.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant alleges that the Disputed Domain Names fully incorporate the Complainant’s registered Trademark coupled with the generic term “webcam” at the beginning, middle and end of the Complainant’s Trademark. The addition of these generic terms does not serve to remove the confusing similarity. Furthermore, the term “webcam” is closely linked and associated with the Complainant’s trademark, increasing the confusingly similarity.
Moreover, the addition of a “hyphen” to the Disputed Domain Names does not diminish the confusing similarity of the Disputed Domain Names to the Complainant’s CHATROULETTE trademark.
Rights or legitimate interests
The Complainant submits that the Respondent is not sponsored by or affiliated with the Complainant in any way, nor the Complainant has given the Respondent permission to use its trademark.
Moreover, the Respondent is not known by the Disputed Domain Names, the WhoIs information identifies the Registrant as “David Grandpierre” which does not resemble any of the Disputed Domain Names in any manner. Furthermore, the Complainant has not licensed, authorized, or allowed the Respondent to register domain names incorporating the Complainant’s trademark.
The Complainant states that there is no bona fide offering of goods or services for the following reasons:
The Respondent is not making use of the following Disputed Domain Names, <chat-webcamroulette.com> and <chat-roulettewebcam.com> which resolve to parking pages, this behaviour evidence the lack of rights or legitimate interests in the Disputed Domain Names. Thus, no actual or contemplated bona fide use of the Disputed Domain Names can be claimed by the Respondent.
The Respondent registered the Disputed Domain Names between 2011 and 2014, after the Complainant filed for registration of it CHATROULETTE trademark with the United States Patent and Trademark Office (“USPTO”) and also significantly after the Complainant’s first use in commerce of its trademark in 2009 and the registration of its <chatroulette.com> domain name on November 16, 2009.
Registration and use in bad faith
The Complainant states the CHATROULETTE trademark is known internationally and registered across numerous countries. The Complainant alleges that it registered the domain name <chatroulette.com> on November 16, 2009, before the Respondent’s registration of the Disputed Domain Names.
The Complainant contends that the Respondent created a likelihood of confusion with the Complainant and its trademark CHATROULETTE by registering domain names which incorporated the Complainant trademark in its entirety with the generic descriptive term “webcam” and the punctuation mark “hyphen”, this attitude demonstrates that the Respondent is using the Disputed Domain Names to confuse unsuspecting Internet users looking for the Complainant’s services and to mislead Internet users as to a source of domain name and website. Thus, the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the Disputed Domain Name’s website for the Respondent’s own pecuniary gain.
The following Disputed Domain Names: <chatwebcam-roulette.com>, <chat-roulettewebcam.com>, and <chat-webcamroulette.com> currently resolve to inactive sites and are not being used, the passive holding of the Disputed Domain Names constitutes a factor in finding bad faith in the registration and use.
Moreover, the Respondent registered numerous domain names which infringe the Complainant’s trademark, this demonstrates the Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use.
The Respondent has previously been involved in other UDRP cases with the Complainant, which provides evidence of the pattern of cybersquatting in which the Respondent is engaging.
Additionally, the Complainant submits that the Respondent’s bad faith is evidenced by the Respondent’s employment of a privacy protection service at the time of initial filing of the Complaint and the Respondent’s failure to respond to the Complainant’s cease and desist letters.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Substantive Matters
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Names at issue in this case:
(i) The Disputed Domain Names are 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 Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in CHATROULLET as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
The Disputed Domain Names <chat-roulletewebcam.com> and <webcam-chat-roullete.com>, contains the Complainant’s CHATROULLETE trademark in its entirety. The addition of the generic word “webcam” and the hyphen does not prevent a finding of confusing similarity under paragraph 4 (a)(i) of the Policy.
As for the Disputed Domain Names <chat-webcamroulette.com>, <chatwebcam-roullete.com> and
<chat-webcam-roulette.com> the Panel is of the view that these Disputed Domain Names reproduce the Complainant’s trademark in its entirety with the addition of the word “webcam” and “hyphen” inserted between the two parts of the trademark. These additions have the effect of dividing the trademark in two parts. However, it is the view of the Panel that the Complainant’s trademark is still recognizable in the Disputed Domain Names.
Previous Panels have held that the addition of a word between the two terms that form a trademark does not eliminate the confusing similarity (See Wikimedia Foundation Inc. v. Jamie Wells, WIPO Case No. D2010-0269, <wikimobipedia.org> and <wikimobipedia.com> are confusingly similar toWIKIPEDIA; GoDaddy Operating Company, LLC v. ranjan kumar ram, technext technosoft pvt. ltd., WIPO Case No. D2015-1569, <gowedaddy.com> is confusingly similar to GODADDY; Victoria’s Secret Stores Brand Management, Inc., Victoria’s Secret Stores, LLC, and Victoria’s Secret Direct, LLC v. Sharon Brown and Kenneth Brown, WIPO Case No. D2006-0556, <victoriashotsecret.biz>, <victoriashotsecret.com>, <victoriashotsecret.info>, <victoriashotsecret.net>, and <victoriashotsecret.org>are confusingly similar to the VICTORIA’S SECRET trademark).
Thus, the panel finds that the addition of these generic terms between the two parts of the Complainant’s trademark does not prevent a finding of confusing similarity.
Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Names:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the trademark in the Disputed Domain Names. Furthermore, the Respondent is not known by the Disputed Domain Names.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names. Instead, the Panel finds that the Respondent was using the Disputed Domain Names to disrupt the Complainant’s business and for commercial gain.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Names. Besides, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
Based on the evidence submitted, the Complainant registered the domain name <chatroulette.com> on November 16, 2009 and established its Chatroulette service and website very shortly after; the Complainant’s website began to receive 500 visitors per day, in February 2010, the traffic increased to 130,000 visitors per day. Taken all this elements into consideration, the Panel considers that it is likely that the Respondent knew of the Chatroulette service of the Complainant prior to the Respondent’s registration of the Disputed Domain Names. Thus, the Respondent knew or at least should have known of the Complainant’s trademark and service.
The fact that the Disputed Domain Names are identical to the Complainant’s trademark, with the mere addition of a “hyphen” and the generic term “webcam” which is connected to the Complainant’s business, establishes that the Respondent was aware of the Complainant’s trademark when registering the Disputed Domain Names. Besides, in this case, the additional word “webcam” contribute to the likelihood of confusion, since it is related to the service offered by the Complainant. Moreover, while some of the Disputed Domain Names were inactive, others redirected to a website identified as “Webcam Chatroulette” that claimed to be a platform to meet new friends from around the world.
This is clear evidence that all of the registrations were made in order to attempt to attract Internet users to their own websites and to divert potential consumers of the Complainant to their own profit. This conduct confirms that the Respondent knew the Complainant, and that this is a clear case of use in bad faith according to paragraph 4(b) (iv) of the Policy.
In addition, the Complainant provided evidence that the Respondent has engaged in a pattern of abusive registrations since the Respondent registered several domain names including the Complainant’s CHATROULETTE trademark.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 3.1.2 provides “UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner. A pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners. Panels have however been reluctant to find a pattern of abuse where a single UDRP case merely contains two domain names registered simultaneously by the same respondent directed at a single complainant mark”.
The Respondent has a clear history of bad faith registration of domain names incorporating the Complainant’s trademark. See Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC / David Grandpierre, WIPO Case No. D2017-0456; and Andrey Ternovskiy dba Chatroulette v. Contact Privacy Inc. Customer 0126798307 / David Grandpierre, WIPO Case No. D2018-1386. And in this case, the Respondent has registered five domain names incorporating the Complainant’s trademark. Therefore, the Panel concludes that this constitutes also bad faith registration and use of the domain names under paragraph 4(b)(ii) of the Policy.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondents have registered and used the Disputed Domain Names in bad faith.
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 <chat-roulettewebcam.com>, <chat-webcam-roulette.com>, <chat‑webcamroulette.com>, <chatwebcam-roulette.com>, and <webcam-chat-roulette.net> be transferred to the Complainant.
Pablo A. Palazzi
Date: December 17, 2018