WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andrey Ternovskiy dba Chatroulette v. Domain Administrator, See PrivacyGuardian.org / Hank Foster, Hank Media LLC
Case No. D2017-0418
1. The Parties
Complainant is Andrey Ternovskiy dba Chatroulette of Moscow, Russian Federation, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“USA” or “United States”) / Hank Foster, Hank Media LLC of Nashville, Tennessee, USA.1
2. The Domain Name and Registrar
The disputed domain name <pornchatroulette.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2017. On March 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 March 6, 2017, 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 March 7, 2017.
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 March 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 30, 2017.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on April 6, 2017. 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 is active in the online industry providing online video chat services as well as online video social introduction and networking services. Complainant has produced evidence that it is the registered owner of various trademarks relating to the designation “Chatroulette” including, inter alia:
- Word mark CHATROULETTE, United States Patent and Trademark Office (USPTO), Registration No.: 4445843, Registration Date: December 10, 2013, Status: Active;
- Word mark CHATROULETTE, European Union Intellectual Property Office (EUIPO), Registration No.: 008944076, Registration Date: December 4, 2012, Status: Active.
Respondent appears to reside in the United States. The disputed domain name was registered on April 15, 2015. As of the time of the rendering of this decision, it resolves to a website at “www.pornchatroulette.com” that indicates that the disputed domain name is parked free and offered for sale at a minimum price of USD 250. Complainant submitted evidence indicating that the website at the disputed domain name previously displayed pornographic content.
Complainant’s authorized representative contacted Respondent with cease and desist letters sent by email on December 6, 2016, on December 20, 2016, as well as on January 4, 2017, to which Respondent did not reply.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant contends to have created the Chatroulette service and website already in 2009. The name “Chatroulette” was invented by combining the term “chat”, which is one of the core purposes of Complainant’s website, with the word “roulette”, which is associated with the thrill of unpredictability, thus capturing the essence of Chatroulette in a distinctive name. Moreover, Complainant states that it has meanwhile achieved incredible popularity and a high-profile reputation under the Chatroulette brand with over 260,000 monthly visitors between August 2015 and August 2016.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s CHATROULETTE trademark as it incorporates the latter in its entirety with the mere addition of the generic term “porn” to the beginning of the trademark.
Moreover, Complainant asserts that Respondent has no rights or legitimate interests with respect to the disputed domain name since (1) Complainant has not given Respondent permission to use Complainant’s trademark in any manner, including domain names, (2) Respondent is not commonly known by the disputed domain name, (3) Respondent is using the disputed domain name to direct Internet users to a website that features adult content, and (4) the disputed domain name is being offered for sale in an amount that far exceeds Respondent’s out of pocket expenses in registering the disputed domain name.
Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) the combination of Complainant’s CHATROULETTE trademark with the generic term “porn” demonstrates that Respondent registered the disputed domain name with full knowledge of Complainant’s CHATROULETTE trademark and, thus, is specifically targeting Complainant, (2) the website under the disputed domain name features sexually-explicit, pornographic content, (3) Respondent offers to sell the disputed domain name at a minimum price of USD 250, (4) Respondent, at the time of the initial filing of the Complaint, had employed a privacy service to hide its true identity and, finally, (5) Respondent has ignored Complainant’s attempt to resolve this dispute outside of this administrative proceeding.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel may decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <pornchatroulette.com> is confusingly similar to the CHATROULETTE trademark in which Complainant has rights.
The disputed domain name incorporates the CHATROULETTE trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9), that the addition of a descriptive term to a trademark in a domain name is normally insufficient in and of itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the term “porn” does not dispel the confusing similarity arising from the incorporation of Complainant’s CHATROULETTE trademark in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant’s CHATROULETTE trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the name “Chatroulette”. In fact, Complainant has explained that his CHATROULETTE trademark was invented by combining the term “chat”, being one of the core purposes of Complainant’s business and website, and the term “roulette” which is associated with the thrill of unpredictability, yet another feature of Complainant’s online video services. In turn, there is no reasonable explanation apparent from the case file that would explain as to why Respondent needed to rely on the term “Chatroulette” in order to offer pornographic content (videos and tweets) on the Internet, and by the same time listing the disputed domain name for sale via the Sedo domain name platform at a minimum price of USD 250. Such making use of the disputed domain name, therefore, neither qualifies as bona fide within the meaning of paragraph 4(c)(i) of the Policy nor as noncommercial or fair without intent for commercial gain as set forth by paragraph 4(c)(iii) of the Policy.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests with respect to the disputed domain name. Having done so, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating such rights or legitimate interests (see WIPO Overview 2.0, paragraph 2.1). Given that Respondent has defaulted, he has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. That the disputed domain name previously resolved to a website at “www.pornchatroulette.com” displaying pornographic content, and offering videos and tweets in a similar manner as does, in part, Complainant’s official website, is disruptive for Complainant. Such use tarnishes Complainant’s trademark, and is evidence of Respondent’s bad faith use of the disputed domain name.
While it is not immediately clear whether the website previously appearing at the disputed domain name was commercial in nature, the presence of what appear to be links to other pornographic websites that are likely to be commercial in nature supports a finding that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website or other online location by creating a likelihood of confusion with Complainant’s CHATROULETTE trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel further notes that the listing for sale of the disputed domain name, which is confusingly similar to Complainant’s CHATROULETTE trademark at a minimum price of USD 250, may be considered evidence that Respondent likely registered the disputed domain name primarily for the purpose of selling the disputed domain name to Complainant, or to a competitor of Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs associated with the disputed domain name within the meaning of paragraph 4(b)(i) of the Policy.
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent not only made use of a WhoIs privacy shield, apparently in an attempt to conceal its true identity, but also provided false WhoIs contact information, since the delivery of the written notice of the Complaint sent to Respondent via courier on March 9, 2017, failed due to an apparent invalid postal address. These facts at least throw a light on Respondent’s behavior which supports the conclusion of registration and use of the disputed domain name in bad faith.
Taking into consideration the facts and circumstances set out above, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by 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 disputed domain name <pornchatroulette.com> be transferred to Complainant.
Stephanie G. Hartung
Date: April 19, 2017
1 It is evident from the case file that Domain Administrator, See PrivacyGuardian.org is a privacy protection service and that Hank Foster, Hank Media LLC is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel to refer to the latter underlying registrant only.