WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Transfer Service, Sedo.com, LLC
Case No. D2018-2510
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 Transfer Service, Sedo.com, LLC of Cambridge, Massachusetts, United States of America.
2. The Domain Name and Registrar
The disputed domain name <chatroulette.pro> is registered with EnCirca, Inc. (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 2, 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 7, 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 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2018. An email was received from the named Respondent on November 12, 2018. However, no formal Response was filed with the Center.
The Center appointed George R. F. Souter as the sole panelist in this matter on December 14, 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 on January 10, 2011 and registered on December 10, 2013, and European Union trademark registration number 008944076, filed March 10, 2010 and registered in December 4, 2012.
The disputed domain name was registered on December 29, 2011. Based on the historical WhoIs data of the disputed domain name, the Respondent appears to have acquired the disputed domain name on April 19, 2013. In 2013 and 2014, the disputed domain name resolved to a website that attempted to infect Internet users’ computers with viruses or malware. The disputed domain name currently resolves to a blank page.
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 generic Top-Level Domain indicator “.pro”.
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 previously resolved to a website that attempted to infect Internet users’ computers with viruses or malware. The Respondent’s website automatically saved a malicious file in a user’s computer that demonstrates that the Respondent was attempting to transmit malware and/or viruses to Internet users. The disputed domain name was registered in bad faith, and is currently being used in connection with a website resolving to a blank page.
Apart from the email receives from the named Respondent stating:
“Unfortunately we do not own or have this domain name.
The domain name was pushed into the Encirca account: CUST-27550 on the 28th of May 2013
We have no control, access or any association to the domain name.”
The Respondent did not file a formal 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 gTLD indicator is irrelevant when comparing a trademark with a disputed domain name. The Panel finds the “.pro” gTLD indicator is legally irrelevant in the circumstances of the present case.
Accordingly, the Panel finds that the disputed domain name is identical to its CHATROULETTE trademark, and 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 Complainant 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 Complainant has 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 is convinced that the disputed domain name in this case was inspired by the Complainant’s CHATROULETTE trademark, which the Panel regards as inherently distinctive. In the Panel’s opinion, the fact that the website operated under the disputed domain name has in the past been used in connection with an attempt to infect internet users’ computers with viruses or malware, giving rise to a legitimate concern on the part of the Complainant that future use of the disputed domain name could result in serious economic damage to the Complainant’s reputation. From the early days of the UDRP, it has been consistently recognized that the mere fact that a disputed domain name is not being currently used is insufficient to avoid a finding of use in bad faith. In the Panel’s opinion, the circumstances of the present case as described above amply justify a finding of use in bad faith, and the Panel so finds.
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.pro> be transferred to the Complainant.
George R. F. Souter
Date: January 9, 2019