WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Whois Agent, Domain Protection Services, Inc. / Marco Carta, MC
Case No. D2018-2678
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Whois Agent, Domain Protection Services, Inc. of Denver, Colorado, United States of America (“US”) / Marco Carta, MC of Rome, Italy.
2. The Domain Names and Registrar
The disputed domain names <chatrouletteit.com> and <chatroulettestop.org> (the “Domain Names”) are registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2018. On November 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 26, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 27, 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 28, 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 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2018.
The Center appointed Ellen B Shankman as the sole panelist in this matter on January 2, 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
The date of the Domain Name registration for <chatrouletteit.com> was May 26, 2012, and for <chatroulettestop.org> November 20, 2012.
The Panel also conducted an independent search to determine that the Domain Names resolve to active webpages that appear to have identical content that promote video chats and exchange of possible pornography. Interestingly, the Panel notes that the website contains direct reference to and a disclaimer reference to Chatroulette of the Complainant. .
The Complainant is the owner of trademark registrations for the term CHATROULETTE for services in Classes 35, 38, 42, 45, inter alia, US Registration No. 4445843, registered on December 10, 2013, with first use on December 5, 2009, and European Union Trade Mark CHATROULETTE No. 008944076 registered on December 4, 2012.
5. Parties’ Contentions
The Complaint contends that the Complainant, Andrey Ternovskiy dba Chatroulette of Sliema, Malta, owns an online chat website that pairs random people from around the world together for real-time, webcam-based conversations. Mr. Ternovskiy created the Chatroulette service and website in 2009 when he was just a 17-year-old high school student in Moscow, Russian Federation. The idea for Chatroulette stemmed from Mr. Ternovskiy’s realization that, at the time of its inception, no website existed which allowed for random video chatting with other Internet users from around the world. The “Chatroulette” name that the Complainant chose for his website and business was, in part, selected after the Complainant watched a film in which American soldiers in Viet Nam played the game of Russian roulette. The Complaint alleges that by combining the term “chat,” which is one of the core purposes of the Complainant’s website, and the word “roulette,” which is associated with the thrill of unpredictability (though not inherently or naturally connected to online webcam chatting), the essence of Chatroulette is captured in its name.
The Complainant alleges that Chatroulette very quickly established incredible popularity and a high-profile reputation. Very shortly after its launch, 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 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 Chatroulette grew in popularity. In February 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. This exponential growth demonstrates the popularity that the Complainant and its Chatroulette website and business were able to achieve within mere months of its launch, as well as the type of popular following that Chatroulette has garnered. Chatroulette continues to be well-known as one of the most popular video chat sites in the world, and the website has generated significant interest and attention internationally among fans, the media, and competitors.
In creating the Domain Names, the Complaint argues that the Respondent – who initially used a proxy service, which is also an indication of bad faith – has added the arguably descriptive terms “it” for Italian and “stop” to the end of the Complainant’s CHATROULETTE trademark, thereby making the Domain Names confusingly similar to the Complainant’s trademark. The mere addition of these geographically descriptive term and generic term to the Complainant’s trademark does not negate the confusing similarity between the Domain Names and the Complainant’s trademark.
The Complainant contends that it is highly unlikely that the Respondent did not know of the Complainant’s legal rights in the name CHATROULETTE at the time of the registration. CHATROULETTE is a world famous trademark. In its websites, the Respondent posted articles about the Complainant and provided alternative Chatroulette sites. The Respondent even embedded links that would redirect users to the websites of the Complainant’s competitors as well as to adult sites when clicking on the links called “Link registrazione gratuita a sito 1, 2 and 3”. Moreover, the metadata associated with the Domain Names specifically refer to the Complainant and its trademark. Website metadata is used by search engines to link the relevancy of a user’s search term with online content. As such, the Respondent is using these metadata to increase the likelihood that an Internet user searching for the Complainant through a search engine would come across the Domain Names and subsequently becoming confused as to their source. Using metadata that specifically refers to the Complainant confirms the motive of the Respondent’s registration of the Domain Names and makes it more likely that unsuspecting Internet users will be deceived and directed to the Respondent’s Domain Names and websites.
Before starting the present proceeding, the Complainant made some efforts to resolve this matter amicably. On July 3, 2018, the Complainant sent a cease-and-desist letter to the Respondent via registered letter on the basis of its trademark rights requesting the Respondent to transfer the Domain Names to the Complainant. A second reminder was sent to the Respondent on July 9, 2018 but no reply was obtained.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark CHATROULETTE, in respect of online chat website. The Domain Names are confusingly similar to the trademark owned by the Complainant. The addition of the arguably generic terms “it” or “stop” in the respective Domain Names does not prevent a finding of confusing similarity. Therefore, the Domain Names <chatrouletteit.com> and <chatroulettestop.org> could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Domain Names were registered and are being used in bad faith. That continued use of the Domain Names would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registration and use of the Domain Names constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6 Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) That the Domain Names have been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for CHATROULETTE.
The Panel finds that the Domain Names are confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of the terms “it” and “stop” respectively, does not change the overall impression of the designation as being connected to the trademark of the Complainant, and does not prevent a finding of confusing similarity between the Domain Names and the Complainant’s trademark and if anything, suggests the offer of the Complainant’s services online in Italian (which is relevant for the third element below). See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Names are identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of either of the Domain Names and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Names.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Names, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trademark and the reputation that the Complainant speedily obtained, together with the direct references to the Complainant, even by way of disclaimer, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Names with full knowledge of the Complainant’s trademark CHATROULETTE and uses it for the purpose of misleading and diverting Internet traffic. Further, the Panel finds that the addition of the term “it” enhances the connection to suggest the offer of the Complainant’s products online in Italian to mislead. The addition of the term “stop” is no less misleading.
The Panel finds that the Respondent has attempted to monetize the Domain Names by competing with and/or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users. Even to the untrained-in-Italian eye, the clear reference to the Complainant appears in the very first paragraph of the Respondent’s website, as well as in using a disclaimer. Accordingly, the Panel finds that the Respondent’s actions are done with the apparent full knowledge of the Complainant by the Respondent.
Thus, the Panel agrees with the Complainant that the Respondent’s use of the Domain Names creates confusion as to the source of the Domain Names in an attempt to trade on the goodwill associated with the Complainant’s trademark. A respondent’s use of a complainant’s mark – for said respondent’s commercial benefit – to attract Internet users otherwise seeking said complainant evinces a finding of bad faith per Policy paragraph 4(b)(iv) and is consistent in this case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 3.1.4 which states:
“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.”)
Further, the Panel finds that the presence of a disclaimer on the Domain Name <chatrouletteit.com> website makes it abundantly clear that the Respondent knew of the Complainant when registering and using this Domain Name, and in the circumstances of this case is not sufficient to avoid confusion by unsuspecting Internet users. The Panel also notes the heading at the website at the Domain Name <chatrouletteit.com> that said “Chatroulette – Chat Roulette – It Recensioni e alternative a Chatroulette.com.” The Panel agrees with the Complainant that the Respondent acknowledges the likelihood of confusion with the Complainant by voluntarily placing such wording on the bottom of the website. As such, the Panel holds that the Respondent has intentionally misappropriated the Complainant’s trademark as a way of redirecting Internet users searching for the Complainant to the Domain Name’s website, only to then offer a disclaimer and content unrelated to, and not approved by, the Complainant. This “bait-and-switch” tactic has been held to be evidence of bad faith registration and use by other UDRP panels. See World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642 (The panel found that the respondent’s choice of the domain name has created a likelihood of confusion between the domain name and the complainant’s mark, of the kind commonly referred to as “initial interest confusion”. Confusion of this kind cannot be “cured” by posting a “fine print” disclaimer on the respondent’s website. The disclaimer comes too late to negate the effect of the browser’s initial mistaken impression and does not affect the conclusion that the respondent has registered and used the domain name in bad faith.)
In addition, the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP panels have held serves as further evidence of bad faith registration and use. See Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc and Sabatino Andreoni, WIPO Case No. D2003-0230. See also WIPO Overview 3.0 at section 3.6 (“Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith.”).
Given the evidence of the Complainant’s rights in the trademark, the fastly obtained reputation of the Complainant, the timing of the registration of the Domain Names with apparent full knowledge by the Respondent of the Complainant, the direct reference or competition with the Complainant and the Respondent’s failure to reply to the Complainant’s request for voluntary transfer of the Domain Names, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under 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 Domain Names <chatrouletteit.com> and <chatroulettestop.org> be transferred to the Complainant.
Ellen B Shankman
Date: January 14, 2019