WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Whois Foundation, Domain May be For Sale, Check Afternic.com Domain Admin
Case No. D2018-2259
1. The Parties
Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Whois Foundation, Domain May be For Sale, Check Afternic.com Domain Admin of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <chatroomroulette.com> is registered with NameKing.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 8, 2018.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on November 22, 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
Complainant, Andrey Ternovskiy d/b/a Chatroulette, is the creator and owner of an online chat website by the name of Chatroulette that pairs random people from around the world together for real-time, webcam-based conversations. Complainant created the Chatroulette website and service in 2009. Complainant is the owner of several trademark registrations for the CHATROULETTE mark in connection with Complainant’s services, including, inter alia, in the Russian Federation (Registration No. 429957), which issued on February 10, 2011 and was assigned on April 6, 2015; the European Union (Registration No. 008944076), which issued on December 4, 2012; the United States of America (Registration No. 4445843), which was filed on January 10, 2011 and issued December 10, 2013; and Switzerland (Registration No. 600401), which issued on May 14, 2010. Complainant registered the domain name <chatroulette.com> on November 16, 2009, and has thereafter used such as its primary domain name for its online chat website.
Respondent’s true identity is unknown. The disputed domain was registered by Respondent on January 6, 2010. Respondent has used, and continues to use, the disputed domain name with a website that consists of links to third party offerings, including links for “chat rooms for adults” and “free dating chatting online”.
On September 4, 2018, Complainant’s representative sent Respondent a demand letter regarding Respondent’s activities related to the disputed domain name. On September 5, 2018, Respondent sent a response rejecting Complainant’s demands. No further communications between the parties occurred thereafter.
5. Parties’ Contentions
Complainant contends that he is the exclusive owner of all rights in the CHATROULETTE mark, which he adopted and has been using since November 2009 in connection with Complainant’s online chat website. Complainant maintains that the Chatroulette service has become well known on account of its popularity and high-profile reputation internationally with fans, the media and competitors, and that as a result it is one of the most popular video chat sites in the world.
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s CHATROULETTE mark as it incorporates the CHATROULETTE mark in its entirety with the generic term “room”. Complainant further asserts that the inclusion of the term “room” in the disputed domain name increases the confusion as the term “chat room” is related to and associated with Complainant’s brand and services.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) has obtained no authorization or license from Complainant to register and use a domain name based on Complainant’s CHATROULETTE mark, (ii) is not commonly known by the disputed domain name, (iii) has not made a bona fide of the disputed domain name, as Respondent has only used the disputed domain name in connection with a website that consists of links to third-party offerings, some of which compete with Complainant’s CHATROULETTE services, (iv) has offered to sell the disputed amount for an amount in excess of Respondent’s out-of-pocket expenses in registering the disputed domain name, and acquired the domain name shortly after Complainant had registered and started using the domain name <chatroulette.com> in 2009 for his online chat services.
Complainant contends that Respondent has registered and is using the disputed domain name in bad faith as Respondent was likely aware of Complainant’s <chatroulette.com> website and related services when Respondent registered the disputed domain name on January 5, 2010 and did so after Complainant had received significant media attention. Complainant further contends that Respondent has demonstrated a nefarious intent to capitalize for profit on the fame and goodwill of the Complainant’s CHATROULETTE mark in order to increase traffic to the website at the disputed domain name that includes multiple pay-per-click links to third party offerings, some of which directly compete with Complainant’s services. Complainant also argues that Respondent’s bad faith is established by respondent’s pattern of registering and using domain names based on the marks of others, as demonstrated by prior UDRP decisions against Respondent, and by Respondent’s attempts to sell the disputed domain for an amount in excess of Respondent’s out-of-pocket expenses. Lastly, Complainant asserts that Respondent’s failure to resolve matter after the receipt of Complainant’s demand letter is further evidence of Respondent’s bad faith registration and use of the disputed domain name.
Respondent did not reply to Complainant’s contentions. Nevertheless, the Panel notes that Respondent responded to Complainant’s September 4, 2018 demand letter. In an email dated September 5, 2018, Respondent simply asserted as follows: “We believe that our domain is of a generic nature and does not infringe on the trademark. Additionally, we would like to point out that we registered our domain name prior to your client registering their trademarks.”
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006‑0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that he owns and obtained trademark registrations for the CHATROULETTE mark in multiple jurisdictions.
With Complainant’s rights in CHATROULETTE mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s CHATROULETTE mark as the disputed domain name fully incorporates the CHATROULETTE mark in the disputed domain name. The addition of the term “room” between the terms “chat” and “roulette” does not prevent a finding of confusing similarity, as the term “room” and “chatroom” are likely to be viewed by consumers as linked or part of the same type of service provided by Complainant. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s CHATROULETTE mark and in showing that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Respondent is currently using the disputed domain name with a website that features links for third-party offerings, including for chat related services such as “chat rooms for adults” and “free dating chatting online.” These links in turn resolve to further links that promote various chat related services, some of which either compete with Complainant and its services and/or could be seen by consumers as an extension of Complainant’s existing services. As the relevant time for the assessment of whether a respondent has rights and legitimate interests is a disputed domain name is the date of the complaint (WIPO Overview 3.0 at section 2.11), Respondent’s actions in registering and using a disputed domain name that is closely akin to Complainant’s CHATROULETTE mark for the likely purpose of monetizing web traffic that flows through the disputed domain to a website replete with links to third party offerings, including links for offerings related to those offered by Complainant, does not amount to a bone fide use and does not provide Respondent with a legitimate interest in the disputed domain name.
Given that Complainant has established with sufficient evidence that it owns rights in the CHATROULETTE mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of Paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
Under Paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent registered and used the disputed domain name in bad faith. The assessment of whether a disputed domain name was registered in bad faith has to be assessed at the time of the registration of the disputed domain name.
Here, there is a question regarding the rights Complainant had in the CHATROULETTE mark at the time the disputed domain name was registered by Respondent on January 5, 2010. At that time, Complainant owned no trademark registrations for the CHATROULETTE mark and had yet to file any trademark applications for the CHATROULETTE mark (Complainant started filing applications for the CHATROULETTE mark in March 2010). Consequently, the issue before the Panel is whether, and to what extent, Complainant had common law or unregistered rights in CHATROULETTE, based on the evidence submitted, as of January 5, 2010 when Respondent registered the disputed domain name. WIPO Overview 3.0 at section 1.3.
Based on the evidence submitted in this proceeding, it appears that Complainant registered the domain name <chatroulette.com> on November 16, 2009 and thereafter started using it in connection with Complainant’s nascent Chatroulette service. Articles and web analytic documents provided by Complainant, none of which are contested by Respondent who has not filed a response, establish that Complainant’s Chatroulette service had a few hundred users in early December and then substantially increased in a short period of time to one million users at some point in January 2010 (and had at least 50,000 to 100,000 users by the beginning January 2010), and over 3 million users in February 2010. In addition, there is evidence that the <chatroulette.com> website was receiving at least 20,000 visits a day by early February 2010 and over a million visits a day just a month later. The evidence also shows that by early February 2010 major publications, such as the New York Times and New York Magazine were writing articles about the Chatroulette website and that there was some coverage regarding the <chatroulette.com> website on popular television shows such as The Daily Show. There is also evidence that the <chatroulette.com> website after its launch in November 2009 received much attention in web forums and blogs. Given that by Complainant’s own admissions in contemporaneous articles from 2010 there was little or no advertising for the Chatroulette website, the growth can only be attributed to word-of-mouth communications between web users and what looks to be significant attention that the <chatroulette.com> website received from a number of publications, programs, blogs, and web forums. In sum, by January 5, 2010, when Respondent registered the disputed domain name, there was already quite a “buzz” about the <chatroulette.com> website amongst consumers and the media, and, accordingly, Complainant had developed some unregistered trademark rights in the CHATROULETTE mark and name. WIPO Overview 3.0 at section 1.3.
In view of the significant growth of users of the <chatroulette.com> website and service over a very short period of time after November 2009, it is probable that Respondent was aware of the <chatroulette.com> website and service given Respondent’s registration of a disputed domain name closely akin to the CHATROULETTE mark. Respondent has an established pattern of registering and using domain names based on third party marks and names in connection with linking portals for profit and has been found in at least five prior UDRP decisions to have registered and used domain names in bad faith. Such pattern makes it more likely than not that Respondent registered the disputed domain name on account of its likely association with Complainant’s growing Chatroulette service. While the strength of Complainant’s common law rights in CHATROULETTE in January 2010 might have been limited at that time, the evidence before the Panel suggests that at the very least Respondent likely registered the disputed domain name, which is confusingly similar to the CHATROULETTE mark, on account of the growing popularity of the <chatroulette.com> website and to opportunistically take advantage of such growing popularity for Respondent’s own profit. Simply put, Respondent’s actions based on the preponderance of the evidence before the Panel appear to be somewhat anticipatory and in bad faith.
In that regard, it should be noted that although Respondent responded to Complainant’s cease-and-desist letter dated September 4, 2018, Respondent chose not to participate in this proceeding and did not submit any arguments or evidence to support any of the assertions made by Respondent in its September 5, 2018 email response. Such failure to participate suggests that Respondent’s contentions may have been pretextual in nature. At the very least, what Complainant’s cease-and-desist letter and Respondent’s failure to participate in this proceeding show, is that Respondent was aware of Complainant’s demands, ignored such, and continued using the disputed domain name for profit by promoting links to offerings that compete with Complainant’s services.
The Panel thus finds that Complainant succeeds under this 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 name, <chatroomroulette.com> be transferred to Complainant.
Date: December 6, 2018