WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Albert Rhodes
Case No. D2019-0710
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Albert Rhodes of United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <chatroulettecockmap.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2019. On March 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 April 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2019.
The Center appointed Eduardo Machado as the sole panelist in this matter on May 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
The Complainant is the creator and owner of the online chat service Chatroulette, in which users from around the world are paired randomly to be able to chat via webcam-based conversations and messaging.
The Complainant created the service in 2009 and holds trademark registrations of CHATROULETTE in various jurisdictions, including the European Union, the United States of America and Germany (e.g., European Union trademark registration number 008944076, registered on December 4, 2012).
The Complainant’s website experienced rapid growth since its creation, reaching 3.9 million monthly visitors in February 2010, making it a worldwide web phenomenon.
The disputed domain name was registered on May 3, 2017. According to the evidence provided by the Complainant, the disputed domain name previously resolved to content for Kate Spade products previously, and it does not resolve to any active website now.
The Complainant’s domain name <chatroulette.com> was registered on November 16, 2009.
The Complainant's authorized representative contacted the Respondent with a cease-and-desist letter, to which the Respondent did not respond.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name contains the Complainant’s trademark CHATROULETTE in its entirety and simply adds descriptive terms to the trademark.
The Complainant also argues that the disputed domain name is confusingly similar to the Complainant’s CHATROULETTE trademark.
The Complainant says that the Respondent is not sponsored or affiliated with the Complainant.
Further on, the Complainant argues that it has not licensed, authorized or permitted the Respondent to register the disputed domain name and that the Respondent is not commonly known by the disputed domain name.
In addition to that, the Complainant notes that the Respondent is using the disputed domain name to direct Internet users to a blank page and lacks content, which evidences a lack of legitimate rights or interests.
The Complainant also claims that the Respondent would be practicing “bait-and-switch”, taking into consideration that the disputed domain name, previously, pointed to content of Kade Spade products.
The Complainant also argues that the Respondent selected the disputed domain name to intentionally confuse unsuspecting Internet users into visiting its website.
The Complainant alleges that the disputed domain name currently resolves to an inactive site and is not being used.
Finally, the Complainant seeks to have the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name;
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns various trademark registrations for the CHATROULETTE trademark, in different jurisdictions, therefore holding rights in the CHATROULETTE mark.
The disputed domain name incorporates the CHATROULETTE trademark in its entirety, with the mere addition of descriptive terms “cock” and “map”.
Also, the mere addition of the generic Top-Level Domain (gTLD) “.com” to the disputed domain name does not constitute an element in the disputed domain name so as to avoid confusing similarity with the Complainant’s trademark for purposes of the Policy. Its use is purely for Internet technical registration purposes. See The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031.
In view of all of the above, the Panel concludes that the disputed domain name is indeed confusingly similar to the Complainant’s registered trademark CHATROULETTE.
Therefore, the Panel concludes that the Complainant has established the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademark CHATROULETTE and there is no evidence that the Respondent has been or is commonly known by the disputed domain name or is using it in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use.
The Panel finds that the Complainant has established a prima facie case that none of the three circumstances establishing rights or legitimate interests mentioned above applies. As stressed by many UDRP panels, in such a case, the burden of production then shifts to the respondent to rebut the complainant’s prima facie case.
By not submitting a Response, the Respondent has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the disputed domain names under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Complainant has established paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Considering the wide recognition of the Complainant’s trademark for online chat systems and all the evidence presented by the Complainant, it is clear that the Respondent was aware of the Complainant’s trademark when it chose the disputed domain name.
As a matter of fact, when the disputed domain name was registered by the Respondent, the trademark CHATROULETTE was already registered and widely used in connection to the Complainant's activities.
Thus, the Panel finds that the Respondent has intentionally registered the disputed domain name with the sole objective of making a connection with the Complainant’s trademark and its online video chat service.
Regarding use, in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel found that bad faith use could be established where a respondent had been entirely inactive. Not all the grounds which supported a bad faith finding in that case are present in the facts as set out in the Complaint. However, considering the notoriety of the Complainant’s mark, the failure by the Respondent to provide any evidence of actual or contemplated good faith use of the disputed domain name and the fact that the disputed domain name previously resolved to a website promoting a third party’s products, it is not possible to conceive of any active use of the disputed domain name which would amount to good faith use. All of the above supports a finding by the Panel that the Respondent is using the disputed domain name in bad faith.
Therefore, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has established the third element of paragraph 4 (a) 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 disputed domain name <chatroulettecockmap.com> be transferred to the Complainant.
Date: May 23, 2019