WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Gregory Rivera
Case No. D2018-2388
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Gregory Rivera of New York, New York, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <chatbattleroulette.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 19, 2018. On October 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 October 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on November 21, 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 or around November 2009, the Complainant created an online chat website that pairs random users from around the world for real-time, webcam-based, conversations. The Complainant chose the name “Chatroulette” for his business as he considered it captured the intentionally unpredictable nature of his video chatting service. He registered the primary domain name, <chatroulette.com>, on November 16, 2009.
The Complainant’s website proved very popular. Very shortly after its launch, it was receiving 500 visitors per day. By January 2010 this figure had increased to 50,000 visitors per day, or approximately 1.5 million visitors per month. By February 2010 the figure had increased to approximately 130,000 visitors per day, or roughly 3.9 million monthly visitors. Since 2010, the Complainant’s website has been the subject of a number of press articles and television shows and continues to be well known.
The Complainant has registered a large number of CHATROULETTE trade marks in various countries, including the following:
German trade mark, registration number 302010003706 for CHATROULETTE, applied for on March 10, 2010 and registered on February 21, 2013, in classes 35, 38 and 42;
European Union trade mark, registration number 008944076, for CHATROULETTE, applied for on March 10, 2010 and registered on December 4, 2012 in classes 35, 38 and 42;
United States trade mark, registration number 4445843, for CHATROULETTE, applied for on January 10, 2011 and registered on December 10, 2013, in classes 38 and 45.
The disputed domain name was registered on March 31, 2010. Since July 2014 (and possibly earlier) the only known website to which the disputed domain name has resolved is a parking page which has featured a variety of links to third-party websites. The links have varied from time to time but, by way of example, they have included “Meet Singles Over 50”, “Free Dating Online”, “Videochat Random” and “Live Chat Roulette”. Each iteration of the parking page has also featured the question: “Would you like to buy this domain”?
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. The fact that the disputed domain name was registered prior to the date of grant of the Complainant’s applications for its CHATROULETTE trade mark does not have any impact on the first element of the Policy, which requires only that the rights must be in existence at the time a complaint is filed; see section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). When comparing the disputed domain name to the Complainant’s trade mark, the relevant comparison is between the second-level portion of the disputed domain name (that is, “chatbattleroulette”) and the Complainant’s CHATROULETTE trade mark. The generic Top Level Domain (“gTLD”), in this case “.com”, is disregarded.
The disputed domain name contains in its entirety the Complainant’s CHATROULETTE trade mark and simply inserts the word “battle” in the middle of the trade mark. The addition of this generic term does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trade mark; see section 1.8 of the WIPO Overview 3.0.
The Complainant asserts also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant’s trade marks for CHATROULETTE, granted in many jurisdictions, give him the exclusive right to use the mark in commerce for the classes of goods and services for which it has been registered.
The fast-growing nature of the Complainant’s website has been such that, within a very short period, CHATROULETTE became distinctive of the Complainant and his services, even though the Complainant only first applied for registered trade marks in March 2010. Previous UDRP panels have acknowledged that the name of a website which has attained rapid notoriety among Internet users is capable of comprising a distinctive identifier due to its sudden surge in online popularity; see Texts From Last Night, Inc. v. WhoIs Privacy Services Pty Ltd / Wang Shaopeng, WIPO Case No. D2011-1266. Whilst the Respondent registered the disputed domain name only shortly after the Complainant filed applications for its first trade marks on March 10, 2010, the disputed domain name was registered during a period when the Complainant’s website was experiencing exponential growth in popularity. These circumstances, coupled with the fact that the terms “chat” and “roulette” do not in combination have any meaning in commerce, other than to reference the Complainant’s business, strongly imply that the Respondent’s registration was opportunistic and predatory in nature. Misleading use of this nature does not give rise to any rights or legitimate interests on the part of the Respondent.
The Respondent is not commonly known by the disputed domain name. The pertinent WhoIs information identifies him as “Gregory Rivera”, which does not resemble the disputed domain name in any manner. Moreover, the Complainant has not licensed, authorized or permitted the Respondent to register a domain name incorporating the Complainant’s trade mark.
Since its registration, the disputed domain name has resolved to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business, as well as a link that directly references the Complainant and its business. Presumably, the Respondent receives per-per-click fees from the linked websites that are listed. Prior decisions under the Policy have consistently held that respondents who monetize domain names using pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a domain name; see section 2.0 of the WIPO Overview 3.0.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The timing and circumstances of the Respondent’s registration of the disputed domain name provides evidence of bad faith registration. The fact that the disputed domain name was registered during a period when the Complainant’s website was widely popular suggests that the Respondent knew, or at least should have known, of the existence of the Complainant’s <chatroulette.com> website and unfairly sought to capitalize on the Complainant’s nascent trade mark rights. At the time of registration of the disputed domain name, the Complainant’s website was being widely discussed in the media. Previous panels have found that the registration of a domain name related to, and shortly after, an announcement or an event by a complainant constitutes an opportunistic bad faith registration. Section 3.8.2 of the WIPO Overview 3.0 states that panels have been prepared to find that a respondent has acted in bad faith when a domain was registered prior to a trade mark being filed but after “significant media attention”.
Further, while constructive notice may sometimes alone be regarded as insufficient to support a finding of bad faith, numerous past panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant’s marks and thus having registered the domain name in bad faith where the complainant’s mark is well known and the circumstances support such a finding. Furthermore, CHATROULETE is so closely linked and associated with the Complainant that the Respondent’s use of a minor variation of this mark implies bad faith; see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.
In addition, the presence of third-party pay-per-click links at the Respondent’s website is evidence of bad faith registration and use. This applies irrespective of whether the links have been inserted at the direct instigation of the Respondent or by the Registrar. Finally, the correspondence between the Complainant’s representative and the Respondent exchanged prior to the filing of the Complaint indicates that the Respondent was willing to sell the disputed domain name to the Complainant but was seeking a sum in excess of his out-of-pocket costs. It is well established that seeking to profit from the sale of a confusingly similar domain name that incorporates a third party’s trade mark demonstrates bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its trade mark registrations for CHATROULETTE, details of three of these marks having been set out above. These establish its rights in the mark.
For the purpose of considering whether the disputed domain name is identical or confusingly similar to CHATROULETTE, the gTLD “.com” is disregarded as this is a technical requirement of registration. The disputed domain name comprises the Complainant’s trade mark in full but with the word “battle” inserted between “chat” and “roulette”.
As explained at section 1.7 of the WIPO Overview 3.0: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Section 1.8 of the Overview also comments that; “Where the relevant trademark is recognizable 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”.
The Complainant’s mark is a coined term comprising two words that would not readily be associated with each other and is accordingly distinctive. It is recognizable within the disputed domain name notwithstanding the insertion of the word “battle” between its two elements, and this word does not serve to prevent the disputed domain name from being confusingly similar to the Complainant’s trade mark.
The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely;
(i) before any notice to it of the dispute, it had used or made 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) it had been commonly known by the domain name, even if it had acquired no trade mark or service mark rights; or
(iii) it was making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Dealing with these grounds in reverse order, paragraph 4(c)(iii) is inapplicable; the use of the disputed domain name to point to a directory page containing pay-per-click links coupled with an offer to sell the disputed domain name is not noncommercial in character. Paragraph 4(c)(ii) is also inapplicable; there is no evidence that might suggest that the Respondent is commonly known by the disputed domain name.
As to whether the use to which the disputed domain name has been put might amount to a bona fide offering of goods and services, the WIPO Overview 3.0 explains at section 2.9 that “[a]pplying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. The inclusion on the parked page to which the disputed domain name points of links such as “Videochat random”, “Talk to Random Strangers” and “Live Chat Roulette” is apt to redirect many Internet users who were seeking the Complainant, towards competing services. The website does not therefore comprise a bona fide offering of goods and services on the basis of the links it contains, nor does offering the disputed domain name for sale meet this requirement. See, by way of example, Ruby’s Diner, Inc. v. Joseph W. Popow, WIPOCase No. D2001-0868, in which the panel found that registering a domain name and doing no more with it than to advertise that it is for sale, does not support a respondent’s legitimate interest under the Policy.
As outlined at section 2.1 of the WIPO Overview 3.0, once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden.
The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
As at the time of registration of the disputed domain name on March 31, 2010, the Complainant had applied for trade marks for CHATROULETTE, but none had yet been granted. Section 3.8.1 of the WIPO Overview 3.0 explains that, subject to a number of exceptions; “where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent”.
The Complainant has established that, as at February 2010, its website at “www.chatroulette.com” was very popular and was receiving approximately 130,000 hits per day. It is plainly arguable that the pace of expansion of the Complainant’s business was such that he had, in fact, acquired unregistered trade mark rights in CHATROULETTE as the date of registration of the disputed domain name. But, in any event, section 3.8.2 of the WIPO Overview 3.0 explains that “in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalise on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent acted in bad faith”.
It is appropriate to make such a finding where there is clear evidence that the reputation of the complainant has grown very quickly and, even in the absence of any registered trade mark rights, the only tenable explanation is that the domain name had been registered by the respondent in order to capitalise unfairly on the complainant’s reputation. See, by way of example; Khloe Kardashian, Whalerock Celebrity Subscription, LLC, Khlomoney, Inc. v. Private Registrations Aktien Gesellschaft / Privacy Protection Service Inc. d/b/a Privacyprotect.Org, WIPO Case No. D2015-1113, where the domain name <khloekardashian.com> was registered two weeks after the complainant first appeared on Keeping up with the Kardashians. The panel found that “[there is] little doubt that the Respondent must have had the Complainant and its rights in the KHLOE KARDASHIAN name in mind when it registered the Domain Name. Furthermore, it is not possible to conceive of any legitimate, bona fide reason for the registration of the Domain Name. The circumstances of registration and the use to which the Domain Name has been put (to indicate that it was available for sale, no doubt for a sum significantly in excess of out-of-pocket expenses for registering the Domain Name), represent paradigmatic bad faith registration and use with a view to financial gain”.
Similar circumstances are present in these proceedings. The Complainant was very widely known by March 2010. The name “chatroulette” is distinctive and the likelihood that the Respondent registered the disputed domain name for a reason other than that he had become aware of the Complainant’s website “www.chatroulette.com” and hoped to profit in some manner from acquiring a domain name which might be perceived as associated with the Complainant’s CHATROULETTE business is remote. It is not possible to conceive of a good faith basis for the Respondent’s registration and the Panel finds his registration to have been in bad faith.
Whilst the use of a domain name to point to parking pages hosting pay-per-click sponsored links is not inherently objectionable, it has been well established in previous decisions under the Policy that such conduct can constitute bad faith use if the combination of the characteristics of a domain name and the nature of the links on the website to which it points are intended to mislead Internet users. See, for example, Yahoo! Inc. v. Hildegard Gruener, WIPO Case No. D2016-2491, in which the panel considered similar parking pages, and, in finding bad faith registration and use, explained that “the use, to which the disputed domain names are put, namely parking pages featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links”. Moreover, as explained at section 3.5 of the WIPO Overview 3.0, “[p]articularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests)”. The majority of the pay-per-click links on the Respondent’s parking pages ostensibly relate to services similar to those provided by the Complainant and, having regard to the similarity between the disputed domain name and the Complainant’s CHATROULETTE trade mark, the Respondent is deriving income from the confusion he is causing to Internet users.
Paragraph 4(b) of the Policy sets out circumstances which, without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out at paragraph 4(b)(iv) of the Policy is if, by using a domain name, a respondent has intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website.
The circumstance set out at paragraph 4(b)(i) is if a domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent’s out-of-pocket costs directly related to the domain name.
Whilst it is unclear in this case whether the dominant motive of the Respondent in registering the disputed domain name was to sell it to the Complainant for a sum in excess of his out-of-pocket costs or to derive income from the links which featured on the parking page to which the disputed domain name resolves, his conduct falls within the circumstance set out at paragraph 4(b)(i) and/or that set out at paragraph 4(b)(iv) of the Policy.
For these reasons, the Panel therefore finds that the disputed domain name was registered and is being used in bad faith. The Complainant’s additional submissions do not therefore require consideration.
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 <chatbattleroulette.com> be transferred to the Complainant.
Date: December 7, 2018