WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC / VMI INC
Case No. D2018-2535
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / VMI INC of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <dirtychatroulette.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 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 November 8, 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 Nicolas Ulmer as the sole panelist in this matter on December 10, 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, d/b/a Chatroulette, is a Russian person, resident in Malta, and the founder and operator of an online chat website that links random people from around the world for real-time, webcam based conversations. According to the Complaint, the Complainant created the Chatroulette service and website in 2009, and it very quickly established its reputation; it became a very popular video chat sites in the world, with its website now receiving millions of visitors each month. The Complainant also submits articles, data and media mentions that, it asserts, testify to the high profile and renown of its website and business.
The Complaint lists and documents that the Complainant holds the following German, United States, Russian Federation and European Union trademarks, together with dates and classes;
CHATROULETTE DE / DPMA 3020100037067, registered on February 21, 2013 in classes 35, 38, 42;
CHATROULETTE US / USPTO 4445843, registered on December 10, 2013 in classes 38, 45;
CHATROULETTE RU/ ROSPATENT 429957, registered on April 6, 2015 in classes 35, 38, 42;
CHATROULETTE EM / EUIPO 008944076, registered on December 4, 2012 in classes 35, 38, 42;
CHATROULETTE.TO EM / EUIPO 008946352, registered on August 19, 2012 in classes 35, 38, 42A.
The dispute domain name was registered on January 19, 2014. The Complainant asserts and submits evidence that the disputed domain name has resolved to a standard registrar parking website with pay-per-click links redirecting Internet users to third-party websites that may compete with the Complainant’s business; and that the disputed domain name is also offered for sale. The Complainant has issued cease-and-desist letters to the hosting provider of the disputed domain name, but has received no reply.
Little is known of the Respondent, who apparently uses a privacy service which masks its identity.
5. Parties’ Contentions
The Complainant alleges that the Respondent is making deliberately improper use of its well-known trademarks and business name in order to profit from the Complainant’s extensive investment and renown.
In particular the Complainant asserts and submits evidence that the disputed domain name has been used to redirect Internet users to third-party websites for commercial gain, and that the disputed domain name is being offered for sale at a price that exceeds the Respondent’s out-of-pocket costs. The Complainant has sent cease-and-desist letters to the hosting provider of the disputed domain name, but has received no reply.
The Complainant alleges that the disputed domain name is confusingly similar to its trademarks, and that the Respondent does not have any legitimate interest or right in the disputed domain name. The Respondent has moreover registered the disputed domain name in bad faith with knowledge of the Complainant and its trademark and then proceeded to use the disputed domain name in bad faith, notably by seeking improperly to attract Internet users for the Respondent’s commercial gain.
Thereupon the Complainant asks that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name recites the entirety of the Complainant’s trademark, preceded by the word “dirty”.
The addition of this descriptive prefix – apparently to imply that that the chat is to be salacious or “dirty” –does not here diminish confusing similarity, or prevent a finding of such similarity. See Pfizer Inc. v. Intermeds, LTD/John Velasquez, WIPO Case No. D2005-0153; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition 3.0 (“WIPO Overview 3.0”), at section 1.8.
The Panel therefore determines that the Complainant has proven the element of paragraph 4(a)(iii) of the Policy
B. Rights or Legitimate Interests
The Complainant has made clear that that the Respondent is not in any way sponsored or affiliated with it, and that it has never given the Respondent any permission or license to use its trademarks in the disputed domain name or otherwise. It is evident that the Respondent is not known as “Chatroulette” or “Dirtychatroulette”. Finally, there is no evidence or indicia in the file of this case which suggests the Respondent has or has acquired any rights of legitimate interests in the disputed domain name.
UDRP case law and jurisprudence provides that a complainant should establish at least a prima facie case that the respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Where such a prima facie case is made, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Meizu Technology Co., Ltd. v. “osama bin laden”, WIPO Case No. DCO2014-0002; H & M Hennes & Mauritz AB v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo, WIPO Case No. D2014-0225.
The Complainant has here established at least such a prima facie case, and there is nothing in the case file that would rebut or contradict it, the Complainant has, accordingly, met its burden of proof under paragraph 4 (a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name cannot reasonably be said to have been registered without knowledge of the Complainant’s trademarks and prior rights. This is because the disputed domain name was registered when the Complainant’s business and marks were registered and well-known and, especially, because the disputed domain name specifically invokes the Complainant’s trademarks and a variation on its business.
The facts and circumstances here also point to bad faith use. The evidence submitted suggests that the disputed domain name has been used to attract Internet users for commercial gain, notably by pay-per-click mechanisms. There are furthermore indications that the Respondent has sought to sell the disputed domain name for profit. In both cases the intent of Respondent was to profit from or in some fashion exploit the Complainant’s trademarks and renown. This behaviour is constitutive of bad faith. See elements brought forward by WIPO Overview 3.0 at section 3.1.1. The failure to reply to cease-and-desist letters is further indicia of bad faith.
It follows from the foregoing that the elements of 4(a)(iii) of the Policy are also established.
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 <dirtychatroulette.com> be transferred to the Complainant.
Date: December 19, 2018