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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd

Case No. D2018-2529

1. The Parties

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

The Respondent is Above.com Domain Privacy of Beaumaris, Australia / Host Master, Transure Enterprise Ltd of Wilmington, Delaware, United States of America.

2. The Domain Name and Registrar

The disputed domain name <chatroulette18.com> (the “Disputed Domain Name”) is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2018. On November 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 7, 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 the same date 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 9, 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 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2018.

The Center appointed Tobias Malte Müller as the sole panelist in this matter on December 12, 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

It results from the Complainant’s undisputed allegations that the Complainant is a Russian individual who created in 2009 a chat website under the name Chatroulette that pairs random people from around the world together for real-time, webcam-based conversations. According to statistics supported by evidence, the Chatroulette website, located at <chatroulette.com>, averaged over 3.39 million monthly visitors in the period March 2018 – August 2018 and has a global popularity rank of 19,388.

It further results from the undisputed evidence provided by the Complainant that he is the registered owner of several trademarks consisting of the term “chatroulette”, covering amongst others the European Union and the United States of America (the “United States”), where the Respondent is located, e.g. (i) United States Reg. No. 4445843 filed on January 10, 2011 and registered on December 10, 2013 for services in classes 38 and 45 and (ii) European Union Trademark Registration No. 008944076 filed on March 10, 2010 and registered on December 4, 2012 for services in classes 35, 38 and 42. The domain name <chatroulette.com> was created on November 16, 2009.

According to the WhoIs extract submitted by the Complainant the Disputed Domain Name was created on September 24, 2012. Furthermore, the undisputed evidence provided by the Complainant proves that the Disputed Domain Name currently resolves to a website featuring multiple links to third-party websites, some of which directly compete with the Complainant’s business.

On September 19, 2018, the Complainant’s representatives sent a cease and desist letter to the email address provided in the WhoIs, asking for the voluntary transfer of the Disputed Domain Name. In the absence of any reaction, the Complainant sent a second and final notice to the email address provided in the WhoIs on September 24, 2018, again without any response.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Disputed Domain Name is confusingly similar to its CHATROULETTE trademarks, since it entirely captures said mark and simply ads the number “18”, which he considers a generic or descriptive term, to the end of the trademark.

The Complainant further contends that the Respondent has no prior rights or legitimate interests in the Disputed Domain Name. In particular, the Complainant states that (i) the Respondent is not sponsored by or affiliated with the Complainant in any way; (ii) that it has not given the Respondent any permission to use his trademarks in any manner, including in domain names; (iii) that the Respondent is not commonly known by the Disputed Domain Name; and (iv) the Complainant presumes that the Respondent receives pay-per-click (“PPC”) fees from the linked websites that are listed on the website to which the Disputed Domain Name currently resolves which cannot be considered a bona fide offering of goods or services that would give rise to rights or legitimate interests in the Disputed Domain Name.

Finally, the Complainant contends that the Respondent registered the Disputed Domain Name in bad faith. According to the Complainant, the Respondent particularly creates a likelihood of confusion with the Complainant and its trademarks by registering a domain name that incorporates the Complainant’s CHATROULETTE trademark in its entirety and simply adding the number “18” to the end. In the Complainant’s view, this behavior demonstrates that the Respondent is using the Disputed Domain Name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the Disputed Domain Name and website. In addition, the Complainant contends that the Respondent has engaged in a bad faith pattern of “cybersquatting” since it has been involved in numerous previous UDRP cases between 2008 and 2018 on the one hand, and currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses on the other side.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the Disputed Domain Name should be transferred or cancelled:

(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.

The Panel is satisfied that the registrant of record for the Disputed Domain Name is the Respondent and will, therefore, proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

It results from the evidence provided that the Complainant is the registered owner of various trademarks for CHATROULETTE. Reference is made to the United States Reg. No. 4445843 filed on January 10, 2011 and registered on December 10, 2013 for services in classes 38 and 45 and the European Union Trademark Registration No. 008944076 filed on March 10, 2010 and registered on December 4, 2012 for services in classes 35, 38 and 42. The Disputed Domain Name includes this trademark in its entirety and merely adds the number “18”. The Panel holds that this addition does not avoid a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark CHATROULETTE for the following reasons:

Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where it incorporates the complainant’s trademark in its entirety (e.g., “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Elliot Elliot, WIPO Case No. D2018-0213; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt, WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464). The Panel shares this view and notes that the Complainant’s registered trademark CHATROULETTE is fully included in the Disputed Domain Name. The number “18” is not susceptible to call into question this finding. It is rather commonly used in the online business to indicate a website with content directed to users of at least 18 years. Therefore, the Panel has no doubts that in a side-by-side comparison of the Disputed Domain Name and the relevant trademark CHATROULETTE, the mark is clearly recognizable within the Disputed Domain Name.

In light of the above, the Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the Disputed Domain Name. In the Panel’s view, based on the allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.

First, no evidence or information has been provided that could lead the Panel to conclude that the Respondent is commonly known by the Disputed Domain Name pursuant to paragraph 4(c)(ii) of the Policy. In addition, the Respondent has no connection or affiliation with the Complainant who has not granted the Respondent any license or consent, express or implied, to use the Complainant’s trademark in domain names or in any other manner.

Second, it results from the evidence provided by the Complainant that the Disputed Domain Name is currently connected to a website displaying sponsored links amongst others for websites that are competing with the Complainant services. Such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy. In fact, this Panel shares the view of previous panels holding 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 (see section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”).

It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name. Since the Respondent failed to come forward with any allegations or evidence in this regard, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the Disputed Domain Name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the Disputed Domain Name’s registration and use in bad faith.

One of those circumstances are those specified in paragraph 4(b)(iv), i.e. where the domain name is used to intentionally attempt to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. In the Panel’s view, the Respondent has intentionally registered the Disputed Domain Name which identically contains the Complainant’s trademark CHATROULETTE. By the time the Disputed Domain Name was registered, it is unlikely that the Respondent did not have knowledge of the Complainant. The Complainant also proved that the Respondent is using the Disputed Domain Name to lead to a parking page, with sponsored links – amongst others – to the Complainant’s competitors. These facts confirm that the Disputed Domain Name is used to intentionally attempt 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 Respondent’s website.

Finally, the further circumstances surrounding the Disputed Domain Name’s registration and use confirm the findings that the Respondent has registered and is using the Disputed Domain Name in bad faith: (1) The Respondent originally used a privacy service to hide its identity; (2) the Respondent did not react on two communications sent by the Complainant’s representatives to the email address indicated in the WhoIs before starting the present UDRP proceedings; (3) the Respondent did not provide any formal response with conceivable explanation of its behavior so that no legitimate use of the Disputed Domain Name by the Respondent is actually conceivable for the Panel; (4) the Respondent has been involved in more than 200 UDRP cases as a respondent over the past 10 years and (5) the fact that the Respondent currently holds further domain names appearing to be respectively a misappropriation of well-known brands and businesses.

In the light of the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) 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 <chatroulette18.com> be transferred to the Complainant.

Tobias Malte Müller
Sole Panelist
Date: December 26, 2018

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