WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Domains By Proxy, LLC / Don Mcintosh

Case No. D2018-2239

1. The Parties

The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Don Mcintosh of Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <bearchatroulette.com> is registered with GoDaddy.com, LLC (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 name. On October 3, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 4, 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 8, 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 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2018.

The Center appointed Adam Taylor as the sole panelist in this matter on November 6, 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

In December 2009, the Complainant set up the “Chatroulette” service via a website at “www.chatroulette.com”, enabling random video chat amongst Internet users. The business grew very quickly. By January 2010, the Complainant’s website was receiving approximately 50,000 visitors per day. By February 2010, the Complainant had some 4 million users.

The Complainant’s service has received significant worldwide media coverage.

The Complainant owns a number of registered trade marks for the term CHATROULETTE including United States trade mark no. 4445843, filed on January 10, 2011, registered on December 10, 2013, in classes 38 and 45. The trade mark claims a “first use in commerce” date of December 5, 2009.

The disputed domain name was registered in February 26, 2010.

The Respondent has used the disputed domain name for a website branded with a roulette wheel imprinted with a paw print plus the slogans “100% Free” and “100% Random”. The site invites users to “[I]nstantly connect and video-chat with Bears, Cubs and Chasers from all over the world.”

The Complainant sent cease and desist letters to the Respondent on July 3 and 9, 2018. No response was received.

5. Parties’ Contentions

A. Complainant

The Complainant’s service is well-known as one of the most popular video chat services in the world.

The immense popularity of the Complainant’s site has spawned many infringements including clone sites and cybersquatting.

The Complainant enjoys substantial public recognition in the term “Chatroulette” whereby the term has become uniquely associated with the Complainant.

The disputed domain name is confusingly similar to the Complainant’s trade mark. The disputed domain name includes the Complainant’s trade mark in its entirety, simply adding the generic term “bear” which is insufficient to negate confusing similarity.

The Respondent’s use of the disputed domain name to target the Complainant contributes to the likelihood of confusing similarity.

The Respondent lacks rights or legitimate interests in the disputed domain name.

The Complainant has not authorised the Respondent to use the Complainant’s trade mark in any manner.

The Respondent is not commonly known by the disputed domain name.

The Respondent is directly competing with the Complainant’s service. This does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial fair use of the disputed domain name.
The disputed domain name was registered and used in bad faith.

The Complainant’s service was established before the Respondent registered the disputed domain name in 2010. Although the Complainant had no registered trade marks at that time, the Respondent knew, or at least should have known, of the existence of the Complainant’s website, given that the Complainant was already a worldwide phenomenon by February 2010.

By simply adding the generic term “bear” to the Complainant’s trade mark, the Respondent demonstrated a knowledge of the Complainant’s brand.

The Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business under paragraph 4(b)(iii) of the Policy.

The use of privacy service supports an inference of bad faith registration and use.

The Respondent’s failure to respond to the Complainant’s cease and desist letters is further evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established rights in the mark CHATROULETTE by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.

Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, would not prevent a finding of confusing similarity under the first element.

Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the descriptive term “bear” is insufficient to avert a finding of confusing similarity.

For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.

Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.

The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel notes the following:

1. The disputed domain name includes the Complainant’s trade mark, which itself comprises a non-obvious combination of the terms “chat” and “roulette”.

2. While the disputed domain name was registered only a few months after the Complainant started trading, the Complainant has demonstrated that its business grew exponentially from inception and that, by the date of registration of the disputed domain name, it had already garnered a substantial worldwide userbase.

3. The Respondent has used the disputed domain name for a website offering services similar to those of the Complainant, namely random video chat – albeit in an adult context.

4. The Respondent has not appeared in these proceedings to deny the Complainant’s assertions or to offer any legitimate explanation for its selection and use of the disputed domain name.

The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 name <bearchatroulette.com> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: November 20, 2018