WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC / Nanci Nette, Name Management Group
Case No. D2018-2508
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 Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Nanci Nette, Name Management Group, of Los Angeles, California, United States.
2. The Domain Name and Registrar
The disputed domain name <chatroulette-tokens.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 November 2, 2018. On November 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 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 November 6, 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 November 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 November 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2018.
The Center appointed George R. F. Souter as the sole panelist in this matter on December 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
The Complainant operates an online chat website that pairs random people from around the world together for real-time, webcam-based conversations, under its trademark CHATROULETTE. Very shortly after its launch in November 2009, the CHATROULETTE website began to receive 500 visitors per day while continuing to experience consistent growth, and only one month later in January 2010, this figure had astonishingly increased to 50,000 visitors per day (approximately 1.5 million users per month). This represented a 10,000% increase in traffic over just one month, which is exceptional, and demonstrates just how quickly the CHATROULETTE website service grew in popularity. By 2010, that traffic had jumped to approximately 130,000 visitors per day (3.9 million monthly visitors), which is a 26,000% increase in traffic over the December 2009 figures.
The Panel has been supplied with details of evidence of trademark registration of the Complainant’s CHATROULETTE trademark, including US Federal trademark registration number 4445843, filed in 2011 and registered in 2013, and European Union trademark registration number 008944076, filed 2010 and registered in 2012.
The disputed domain name was registered on December 29, 2011, and the disputed domain name resolves to a website with a pay-per-click facility to other websites offering various services and products.
5. Parties’ Contentions
The Complainant alleges that the disputed domain is confusingly similar to its CHATROULETTE trademark, containing its trademark in its entirety, with the mere addendum of a hyphen followed by the descriptive or non distinctive word “tokens”.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name; in particular that, so far as the Complainant has been able to establish, the Respondent is not generally known by the disputed domain name, and the Complainant has never authorized the Respondent to use its CHATROULETTE trademark for any purpose.
The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in connection with a website offering pay-per-click access to various services and products unauthorized by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well-established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) indicator is irrelevant when comparing a trademark with a disputed domain name. The Panel finds the “.com” gTLD indicator is legally irrelevant in the circumstances of the present case.
The disputed domain name contains the Complainant’s CHATROULETTE trademark in its entirety, and differs from the Complainant’s CHATROULETTE trademark by the mere addendum of a hyphen followed by the word “tokens”. In the circumstances of the present case, the Panel is of the view that both the hyphen and the verbal element “tokens” are clearly descriptive or non distinctive elements. It is well-established in prior decisions under the Policy that the mere addition of a descriptive or non distinctive element or elements to a trademark in which the Complainant has rights is insufficient to avoid a finding of confusing similarity between a trademark and a disputed domain name. The Panel agrees with the prior decisions in this matter, and finds that the disputed domain name is confusingly similar to the Complainant’s trademark in the circumstances of the present case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel considers the submissions put forward by the Complainants as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. In the circumstance of the present case, where the Complainant’s trademark has been incorporated in its entirety in the disputed domain name, leading to a strong suspicion by the Panel that the disputed domain name was inspired by the Complainant’s trademark due to its considerable usage and concomitant reputation prior to the registration of the disputed domain name, the Panel finds it appropriate to find that the disputed domain name was registered in bad faith.
It is well-established in prior decisions under the Policy that use of a disputed domain name in bad faith can be deduced where the panel is convinced that the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website. The Panel’s conviction that the disputed domain name in this case was inspired by the Complainant’s trademark, and the fact that the website operated under the disputed domain name contains a money-generating pay-per-click facility to other websites, make it appropriate for the Panel in this case to find that the disputed domain name is being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the dual requirements of paragraph 4(a)(iii) 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 <chatroulette-tokens.com> be transferred to the Complainant.
George R. F. Souter
Date: December 19, 2018