WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Privacy Administrator, Anonymize, Inc / Michele Dinoia, Macrosten LTD
Case No. D2019-0780
1. The Parties
The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Privacy Administrator, Anonymize, Inc of Washington, United States of America (“United States”) / Michele Dinoia, Macrosten of Nicosia, Cyprus.
2. The Domain Name and Registrar
The disputed domain name <chatroulette3d.com> is registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2019. On April 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 6, 2019, 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 May 12, 2019 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 May 15, 2019.
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 April 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2019.
The Center appointed Marina Perraki as the sole panelist in this matter on May 14, 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
According to the Complaint, Chatroulette is an online chat website service that pairs random people from around the world together for real-time, webcam-based conversations (Chatroulette). Chatroulette is known for online video chat services and online video social introduction and networking services. It was created in 2009 by Complainant, when he was just a 17-year-old high school student in Moscow, Russia. Chatroulette very quickly established significant popularity. Per Complaint, shortly after its launch, Chatroulette began to receive 500 visitors per day and 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, per Complaint, a 10,000% increase in traffic over just one month. In February 2010, that traffic had increased to approximately 130,000 visitors per day (3.9 million monthly visitors), which, per Complaint, is a 26,000% increase in traffic over the December 2009 figures.
Chatroulette also immediately attracted the attention of international media. It was featured in a number of publications including “The New York Times” on February 13, 2010, “The New Yorker” on May 17, 2010, “New York” magazine on February 5, 2010, “Spiegel On Line” on May 3, 2010, as well as on television shows including “Good Morning America” and “The Daily Show with Jon Stewart”.
Chatroulette continues to be one of the most popular video chat sites in the world, as per Complaint.
Complainant currently holds numerous trademark registrations for the CHATROULETTE mark in a number of countries and territories, including, for example, the European Union trademark registration No. 008944076, filed on March 10, 2010, registered on December 4, 2012, for services in International Classes 35, 38, and 42. Complainant also holds the United States Trademark Registration No. 4,445,843, filed on January 10, 2011, registered on December 10, 2013, for services in International Classes 38 and 45. At the time when the Domain Name was registered, Complainant was the holder of the above mentioned United States trademark application, which was subsequently registered. Complainant acquired the said trademark application from its initial holder on October 20, 2011.
Complainant is also the owner of the domain name <chatroulette.com> under which Chatroulette operates, registered on November 16, 2009.
The Domain Name was registered on November 4, 2011 and, at the time of filing of the Complaint, resolved to a parking page, in which a “Make an Offer” button was included. By clicking on it appeared a pop up box where a user could submit information and an “Offer Price” for the Domain Name.
Prior to that, per Complaint, the Domain Name was used for a website which contained links to third-party websites, including sites which directly competed with Complainant’s business. Per Complainant, content found on the website operating under the Domain Name in 2014, for example, featured multiple third-party links, such as “3D Chat” and “3D Roulette”, as well as links to Russian sites calling themselves “Chat Community” (ЧАТ 3НАКОМСТВА)”, or “Sex dating” (секс знакомства). These links either offered competing services or drew an unwelcome association to adult content.
On November 20, 2018, November 26, 2018 and March 18, 2019, Complainant sent cease and desist letters to Respondent to which Respondent did not reply.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated rights through registration and use on the CHATROULETTE mark.
The Panel finds that the Domain Name <chatroulette3d.com> is confusingly similar with the CHATROULETTE mark of Complainant.
The Domain Name incorporates the said mark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The number “3” and the letter “d” which are added in the Domain Name do not avoid a finding of confusing similarity as they are non-distinctive terms (Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin1 , WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic top-level domain (“gTLD”) “.com” is disregarded, as TLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
The Panel finds that the Domain Name <chatroulette3d.com> is confusingly similar to the CHATROULETTE mark of Complainant.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complaint, Respondent was not authorized to register the Domain Name.
Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. On the contrary, as Complainant has demonstrated, the Domain Name leads to a web parking page, where the user is also able to make an offer to purchase the Domain Name.
Furthermore, Complainant demonstrated that the Domain Name at different times in the past resolved to websites which contained multiple links to, inter alia, Complainant’s competitors. This indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry competitors (Safepay Malta Limited v. ICS Inc., WIPO Case No. D2015-0403). The diversion of Internet users to competitors of Complainant does not give rise to any rights or legitimate interests in the Domain Name on the part of Respondent within the meaning of paragraph 4(c)(i) of the Policy.
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant’s CHATROULETTE mark is well known for video-chat services and has gained immediate success within only a few weeks upon its launching. Because the CHATROULETTE mark had been widely used at the time of the Domain Name registration by Complainant, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search and also due to Complainant’s nature of business, namely online services, wide use and immediate success of the CHATROULETTE mark on the Internet and in particular the website “www.chatroulette.com” (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
Furthermore, the Domain Name incorporates in whole Complainant’s mark plus the additional characters “3d”, short for three-dimensional, which relate to a characteristic of the Chatroulette services, namely the webcam-based operation. Use of the Domain Name therefore creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Name. It also indicates knowledge of Complainant and its field of business.
As regards bad faith use, Complainant demonstrated that the Domain Name leads to an inactive site. The non-use of a domain name would not prevent a finding of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Société Air France v. Domain Administrator, See PrivacyGuardian.org / Steve David, Kamran Khan, Muhammad Faisal, supra; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Clerical Medical Investment Group Limited v. Clericalmedical.com, WIPO Case No. D2000-1228; Accor, So Luxury HMC v. Youness Itsmail, WIPO Case No. D2015-0287; Crédit industriel et commercial S.A. v. Registration Private, Domains By Proxy, LLC, WIPO Case No. D2016-2447; WIPO Overview 3.0, section 3.3).
In the past, per Complaint, the Domain Name was used to host websites which contained links to third-party websites, including sites which directly competed with Complainant’s business or drew an unwelcome association to adult content. Presumably, Respondent received pay-per-click fees from the linked websites that were listed at the Domain Name’s website.
Lastly, as Complainant has demonstrated, at the time of the filing of the Complaint, the Domain Name was registered with a privacy shield service to hide the registrant’s identity, whereas Respondent did not reply to any of the cease and desist letters sent by Complainant.
Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
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 <chatroulette3d.com> be transferred to the Complainant.
Date: May 28, 2019