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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Domains By Proxy, LLC, DomainsByProxy.com / Domain Admin, Consumer Media Network, LLC

Case No. D2018-2586

1. The Parties

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

Respondent is Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States of America (“USA”) / Domain Admin, Consumer Media Network, LLC of Houston, Texas, USA.

2. The Domain Name and Registrar

The disputed domain name <chatroulettesites.net> (the “Disputed Domain Name”) 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 13, 2018. On November 13, 2018, 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 Complainant on November 15, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 16, 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 Respondent of the Complaint, and the proceedings commenced on November 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2018. On November 21, 2018, the Center received an informal email from a third party. Respondent did not submit a response. Accordingly, on December 11, 2018, the Center notified the Parties that it would proceed with panel appointment.

The Center appointed Peter Wild as the sole panelist in this matter on December 18, 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

Complainant Andrey Ternovskiy dba Chatroulette (“Chatroulette”) owns trademark registrations for CHATROULETTE in a number of countries, e.g., the Russian Federation (Trademark Registration No. 429957 for CHATROULETTE registered on February 10, 2011) and the European Union (Trade Mark Registration No. 008944076 for CHATROULETTE registered on December 4, 2012 with filing date of March 10, 2010) and the United States Trademark Registration No. 4,445,843 for CHATROULETTE registered on December 10, 2013 with filing date of January 10, 2011).

Complainant runs an online chat website under the domain name <chatroulette.com> that pairs random people from around the world together for real-time, webcam-based conversations; it was developed in 2009 and enjoys significant user numbers of more than 4.5 million visitors per month and media attention. The domain name <chatroulette.com> was registered on November 16, 2009.

The registration date for the Disputed Domain Name is February 17, 2011, later than the first trademark applications of Complainant. Prior to the filing of the Complaint, the Disputed Domain Name redirected Internet users to websites of competitor services of Complainant. At the time of filing, the Disputed Domain Name resolved to a Godaddy parking page.

5. Parties’ Contentions

A. Complainant

According to Complainant, and supported with evidence, the trademark CHATROULETTE has been filed in the year 2009 in a number of countries, including the United States of America, the seat of Respondent. The relevant second level of the Disputed Domain Name contains the CHATROULETTE. There is no indication that Respondent is known under the name Chatroulette and Complainant states that it never authorized Respondent to use or register this name.

Finally, Complainant alleges that Respondent registered the Disputed Domain Name in bad faith, as it knew or should have known about the prior rights of Complainant. In addition, Complainant claims that Respondent registered and is using the Disputed Domain Name in bad faith by using it to direct to a website which links the Internet user to online chat websites, which are similar to and/or competitors of the Complainant.

B. Respondent

The Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant owns CHATROULETTE trademarks in a number of countries including the United States of America. This element is supplemented with the term “sites”. The only distinctive element of the Disputed Domain Name is identical to Complainant’s trademark. It is furthermore standard practice when comparing the Disputed Domain Name to Complainant’s trademarks, not to take the generic Top-Level Domain (“gTLD”) element into consideration.

The second Level Domain of the Disputed Domain Name incorporates Complainant’s CHATROULETTE trademark, resulting in a domain name that is confusingly similar to Complainant’s CHATROULETTE trademark for purposes of the Policy.

The Panel therefore holds the first element of the Policy is fulfilled.

B. Rights or Legitimate Interests

Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names.

In the instant case, after the privacy service is lifted, the pertinent WhoIs information identifies the Registrant as “Domain Admin, Consumer Media Network, LLC”, which does not resemble the Disputed Domain Name nor the Complainant’s trademark. Therefore, there is no evidence that the Respondent is commonly known by the Disputed Domain Name.

It is unlikely that the Respondent did not know of the Complainant’s trademark or rights in the name CHATROULETTE at the time of the registration. CHATROULETTE is a known trademark in the field of chat website, including at the time of the registration of the Disputed Domain Name.

The Disputed Domain Name’s website redirects Internet users to a third-party website “www.topchatsites.com” that links users to the “Chatroulette TOP10 Alternatives” and invites users to “Click an icon above and start connecting with thousands of people instantly on sites like Chatroulette”. This presents first of all evidence that Respondent was and is aware of the services offered by Complainant under CHATROULETTE. Secondly, the Respondent is not using the Disputed Domain Name to provide a bona fide offering of goods or services but to redirect Internet users to alternatives and therefore competitors of Complainant’s services.

For these reasons, the Panel decides that there is no rights or legitimate interests of Respondent evident from the file and that the second element of the Policy is met.

C. Registered and Used in Bad Faith

Complainant and its CHATROULETTE trademark are known internationally, with international trademark registrations, including in the United States of America where Respondent is based. The Complainant registered its <chatroulette.com> domain name on November 16, 2009 and established its Chatroulette service and website in the same year, clearly before the original registration of the Disputed Domain Name on February 17, 2011.

By registering the Disputed Domain Name that contains as a main element Complainant’s CHATROULETTE trademark, Respondent has created the Disputed Domain Name that is confusingly similar to Complainant’s trademark which is not a dictionary term. It is an unusual word. The reference of Respondent to Complainant’s services under CHATROULETTE is evidence that Respondent knew Complainant’s trademark at the time of registering the Disputed Domain Name. It would also have been easy to identify Complainant’s trademark as a prior right with a simple Internet search. In addition, the significant press and media reports about Complainant’s business make it unlikely that Respondent did not know of Complainant’s business and prior rights. The Panel therefore holds it much more likely than not that Respondent knew or should have known Complainant’s earlier trademark at the time when it registered the Disputed Domain Name, which is a strong indication of bad faith, see Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415. Therefore, the Panel holds that the registration of the Disputed Domain Name was effected in bad faith.

Respondent’s use of the Disputed Domain Name, namely the redirecting to a third-party website “www.topchatsites.com” which features multiple links to Complainant’s competitors is disruptive to Complainant’s business, as it attracts Internet users to chat websites by using Complainant’s known trademark. Such behavior also may cause confusion among the Internet users about the fact whether the referred websites have any commercial or other connection to Complainant. See Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556. This in itself is a strong indication of use in bad faith.

Furthermore, Respondent, at the time of initial filing of the Complaint, employed a privacy service to hide its identity, which past UDRP panels have held can support an inference of bad faith registration and use.

Also, Respondent ignored Complainant’s attempts to resolve this dispute outside of this administrative proceeding.

All this leads the Panel to the conclusion that Respondent is using the Disputed Domain Name in bad faith.
On balance of all available information, the Panel decides that the third element of the Policy is met.

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 <chatroulettesites.net> be transferred to the Complainant

Peter Wild
Sole Panelist
Date: January 1, 2019

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