WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Above.com Domain Privacy / Shu Lin
Case No. D2018-2713
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 / Shu Lin of Zhongshan District, China.
2. The Domain Name and Registrar
The disputed domain name <chatroulette-deutsch.com> (the “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 26, 2018. On November 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 27, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 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 December 3, 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 December 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 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 was July 3, 2012.
The Panel also conducted an independent search to determine that the Domain Name is currently active, and redirects to “www.chatroulette-deutsch.com” which appears to be a ‘parking page’ with links to advertisements and references, inter alia, to “Chat Roulette”, “Chat Free” and “Free Flirting”.
The Complainant is the owner of trademark registrations for the term CHATROULETTE for services in Classes 35, 38, 42, 45, inter alia, United States of America (“US”) Registration No. 4445843, registered on December 10, 2013 and European Union Trademark CHATROULETTE No. 008944076 registered on December 4, 2012.
5. Parties’ Contentions
The Complaint contends that the Complainant, Andrey Ternovskiy dba Chatroulette of Sliema, Malta, is 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 incredible 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 Name, the Complaint argues that the Respondent - who initially used a proxy service, which is also an indication of bad faith - has added a hyphen along with the generic, descriptive term “deutsch” to the end of the Complainant’s CHATROULETTE trademark, thereby making the Domain Name confusingly similar to the Complainant’s trademark.
The Respondent is using the Domain Name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. For instance, the website at which the Domain Name resolves features multiple third-party links for free chat services, free web cam chats and online video chat services. Further, the Respondent’s website also features a link that directly references Complainant and its business. Presumably, the Respondent receives pay-per-click fees from the linked websites that are listed at the Domain Name’s website.
Before starting the present proceeding, the Complainant made some efforts to resolve this matter amicably. On September 19, 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 Name to the Complainant. A second reminder was sent to the Respondent on September 24, 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 an online chat website. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the arguably generic term “deutsch” does not prevent a finding of confusing similarity. Therefore, the Domain Name <chatroulette-deutsch.com > 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 Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name 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 Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
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 Name registered by the Respondent is 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 Name; and
(iii) That the Domain Name has 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 Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of the term “deutsch” 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 Name and the Complainant’s trademark and if anything, affirms it to suggest the offer of the Complainant’s products online in German (which is analyzed under 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 Name is 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, 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 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 the Domain Name <chatroulette-deutsch.com> 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 trademark.
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 Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, 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 quickly obtained, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name 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 “deutsch” enhances the connection to suggest the offer of the Complainant’s products online in German to mislead.
The Panel finds that the Respondent has attempted to monetize the Domain Name using pay-per-clink links that compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users. In addition, the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past 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., WIPO Case No. D2003-0230 (WIPO May 16, 2003). See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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 Name with apparent full knowledge by the Respondent of the Complainant, the PPC links based on 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 Name, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name 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 Name <chatroulette-deutsch.com> be transferred to the Complainant.
Ellen B Shankman
Date: January 14, 2019