WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Inanna Koreman

Case No. D2018-2583

1. The Parties

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

The Respondent is Inanna Koreman of Bietigheim-Bissingen, Germany.

2. The Domain Name and Registrar

The disputed domain name <chatroulette4all.com> is registered with RegistryGate GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 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 23, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On November 23, 2018, the Center sent an email in English and German to the Parties regarding the language of the proceeding. The Complainant filed an amended Complaint on November 26, 2018, and requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2018.

The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on January 9, 2019. 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

Chatroulette is an online chat website that allows visitors to make random connections with other website visitors using text, audio and video format. It was developed by the Complainant, then a high school student in Moscow, Russian Federation, and was launched in December 2009. This website pairs users at random, and a user may at any time leave one chat and initiate another random connection.

The Complainant’s service “went viral” within a brief period of time following its launch. By January 2010, one month after its launch, the Complainant’s website had 50,000 visitors per day (approximately 1.5 million users per month). By February 2010 Internet traffic had grown to approximately 130,000 visitors per day (equivalent to 3.9 million monthly visits). As a result of such exponential growth, the Complainant’s Chatroulette website received significant media attention, including articles in The New York Times on February 13, 2010, and March 12, 2010, The New York magazine on February 5, 2010, and the New Yorker on May 17, 2010, and on television shows including Good Morning America and The Daily Show with Jon Stewart.

The Complainant is the owner of trademark registrations for CHATROULETTE in numerous jurisdictions, including European Union Trade Mark (“EUTM”) registration no. 008944076, applied for on March 10, 2010, and registered on December 4, 2012; EUTM registration no. 008946352, applied for on March 11, 2010, and registered on August 19, 2012; German trademark registration no. 302010003706, applied for on March 10, 2010, and registered on February 21, 2013; and United States of America trademark registration no. 4445843, applied for on January 10, 2011, and registered on December 10, 2013, with the first use of the mark in commerce on December 5, 2009.

The disputed domain name was registered on September 10, 2012, according to the Registrar’s WhoIs records. The disputed domain name currently resolves to a website featuring links to third-party websites.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s CHATROULETTE mark. The Complainant maintains that the addition of the generic terms “4” and “all” (denoting “for all”) in the disputed domain name does not dispel its confusing similarity to the Complainant's mark.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant represents that the Respondent is not sponsored by or affiliated with the Complainant, and confirms that the Respondent has not been licensed or authorized to use the Complainant’s marks in any manner. The Complainant further observes that the Respondent is not commonly known by the disputed domain name, and submits that, lacking permission to use the Complainant’s CHATROULETTE mark, no actual or contemplated bona fide use of the disputed domain name can be claimed by the Respondent.

The Complainant emphasizes that the Respondent registered and is using the disputed domain name to divert Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business. The Complainant contends that the Respondent presumably receives pay-per-click revenue from links that are listed at the disputed domain name’s website.

In view of the foregoing, the Complainant submits that the Respondent has neither used or made demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services, or made a legitimate noncommercial or other fair use of the disputed domain name.

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that its CHATROULETTE mark is well known internationally and registered across numerous jurisdictions. The Complainant explains that it registered the domain name <chatroulette.com> on November 16, 2009, and shortly thereafter launched its Chatroulette service and website several years prior to the Respondent’s registration of the disputed domain name. The Complaint concludes that the Respondent would have been aware of the Complainant’s website due to its exponential growth and significant media attention, and asserts that the Respondent registered the disputed domain name seeking to target and unfairly capitalize on the Complainant’s trademark rights.

The Complainant contends that the Respondent registered and has used the disputed domain name in an intentional 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 source, sponsorship, affiliation, or endorsement of the Respondent’s website or the product or service offered on the website. The Complainant maintains that the Respondent also sought to profit from and exploit the popularity of the Complainant’s mark to divert Internet traffic to pay-per-click websites.

Additionally, the Complainant submits that the Respondent’s bad faith is evinced by the Respondent’s failure to respond to the Complainant’s cease and desist letters.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is German.

The Complainant requested that the language of the proceeding be English.

Thus, the general rule is that the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise, having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties, taking into consideration matters such as command of the language, time, and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in its abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

(i) The disputed domain name is in the English language;

(ii) To require the Complainant to translate the Complaint and all other supporting documents in German would cause an unnecessary burden to the Complainant and unnecessary delay the proceeding;

(iii) The Complainant may be unduly disadvantaged by having to conduct the proceeding in the German language;

(iv) The website found at the disputed domain name features various phrases in the English language;

(v) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.

Upon considering the above, the Panel determines that English be the language of the proceeding.

B. Delay in bringing the Complaint

The Panel notes the time between the creation of the disputed domain name (2012) and the filing of the Complaint in 2018. However, previous UDRP panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case nor from potentially prevailing on the merits (Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma, WIPO Case No. D2010-2256; Billards Toulet v. Damon Nelson - Manager, Quantec LLC/Novo Point, LLC, WIPO Case No. D2016-2502; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.17).

C. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner (VKR Holding A/S v. Li Pinglong, WIPO Case No. D2016-2269; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1). While the Policy makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. Accordingly, the fact that a domain name may have been registered before the trademark rights of a complainant have been registered does not preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the paragraph 4(a)(i) of the Policy.

The Complainant is the owner of the trademark registrations for the CHATROULETTE mark. In the present case, the disputed domain name, <chatroulette4all.com>, integrates the Complainant’s CHATROULETTE trademark in its entirety.

It is well established that a domain name is confusingly similar to a complainant’s trademark where the domain name incorporates the complainant’s trademark in its entirety and that adding descriptive terms such as “4” and “all” is insufficient to give any distinctiveness to the domain name (e.g., Facebook, Inc. v. Mirza Azim, WIPO Case No. D2016-0950; 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; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, WIPO Case No. D2015-1320; KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-1910). The Panel finds that this is the case in the present proceedings where the Complainant’s registered trademark is fully included in the disputed domain name.

The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

D. Rights or Legitimate Interests

Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (WIPO Overview 3.0, section 2.1).

The Panel finds that the Complainant has established a prima facie case in this regard and the Respondent has failed to assert any such rights or legitimate interests. In the absence of any license or permission from the complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the domain name would ordinarily be found. (Groupe Auchan v. Gan Yu, WIPO Case No. D2013-0188; LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138; Andrey Ternovskiy dba Chatroulette v. Wang Lian Feng, WIPO Case No. D2018-1445). In this case, the Complainant owns various trademark registrations of the CHATROULETTE trademark. The Respondent is not known by the Complainant’s mark nor did the Complainant license or otherwise permit the Respondent to use its trademark (Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875; Andrey Ternovskiy dba Chatroulette v. Wang Lian Feng, WIPO Case No. D2018-1445). The Respondent is also not commonly known as “Chatroulette” but is identified as “Inanna Koreman” in the WhoIs data.

Further, the disputed domain name only resolves to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business. 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.

The Respondent failed to provide any response which would demonstrate any attempt to make legitimate use of the disputed domain name, and the Respondent has not asserted any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

E. Registered and Used in Bad Faith

The Complainant must also show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Panel finds that the Complainant’s first use and first application for trademark protection of its CHATROULETTE mark significantly predates the registration of the disputed domain name. The Complainant registered its domain name and began operating its website at “www.chatroulette.com” in 2009. Shortly after that and before the registration of the disputed domain name the Complainant’s website attracted millions of visitors a month and received significant international media attention. Therefore, the Complainant's CHATROULETTE mark became well-known long before the Respondent registered the disputed domain name.

The Complainant's CHATROULETTE trademark has also been recognized as a well-known mark in several UDRP panel decisions. See, e.g. Andrey Ternovskiy dba Chatroulette v. A Anoniem, WIPO Case No. D2017-0940; Andrey Ternovskiy dba Chatroulette v. Alexander Ochkin, WIPO Case No. D2017-0334; Andrey Ternovskiy dba Chatroulette v. David Grandpierre, WIPO Case No. D2018-1386; Andrey Ternovskiy dba Chatroulette v. Andrei Gurbanov, WIPO Case No. D2018-0279. Previous UDRP panels have ruled that in appropriate circumstances, bad faith is established where the Complainant’s trademark has been shown to be well-known or in wide use at the time of registering a domain name, see, e.g. Société des Produits Nestlé S.A. v. Sonia de Ferrero, WIPO Case No. D2016-1300; Andrey Ternovskiy dba Chatroulette v. Andrei Gurbanov, WIPO Case No. D2018-0279.

Moreover taking into account that the Respondent registered the disputed domain name, that incorporates the CHATROULETTE trademark in its entirety, and based on the evidence provided by the Complainant, the Panel holds the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the CHATROULETTE trademark when it registered the disputed domain name.

Accessing the disputed domain name, Internet users would most likely presume that the disputed domain name is related to or associated with the Complainant and the Complainant’s service. Incorporation of internationally famous trademark in the disputed domain name for the purpose of attracting the users to an inactive website cannot be considered as fair use or use in good faith. With reference to the foregoing, and considering the totality of the circumstances, the Panel concludes that the Respondent has registered the disputed domain name intending to target the goodwill and reputation of the Complainant’s well-known trademark.

In addition, the Complainant provided evidence showing that the Respondent is also offering to sell the disputed domain name at USD 10,000. Under the specific circumstances of this case, this constitutes another indication of bad faith registration and use on the part of the Respondent as it demonstrates an intent to sell, rent or otherwise transfer the disputed domain name for valuable consideration in excess of his out-of-pocket expenses and thereby seeking to profit from the sale of a confusingly similar domain name that incorporates a third party’s trademark.

Additionally, the Respondent failed to respond to the Complainant’s cease-and-desist letters, and ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding, also leading the Panel to the conclusion that the Respondent has registered and has used the disputed domain name in bad faith.

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 <chatroulette4all.com> be transferred to the Complainant.

Christian Gassauer-Fleissner
Sole Panelist
Date: January 23, 2019