WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Isaac Paul

Case No. D2018-0459

1. The Parties

The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Isaac Paul of Asheville, North Carolina, United States of America ("United States").

2. The Domain Name and Registrar

The disputed domain name <chatroullette.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 28, 2018. On February 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 2018, 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 March 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 27, 2018.

The Center appointed Alexandre Nappey as the sole panelist in this matter on April 6, 2018. 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 Andrey Ternovskiy who created in 2009 and owns the "Chatroulette" ("www.chatroulette.com") website, an online chat website that pairs random people from around the world together for real-time, webcam-based conversations.

The Complainant is the owner of many CHATROULETTE trademarks registrations among which:

- Unites States trademark registration no. 4445843 CHATROULETTE, registered since December 10, 2013 for goods and services in classes in class 38 and 45;

- European Union Trade Mark registration no. 008944076 CHATROULETTE, registered since December 4, 2012 for goods and services in classes 35, 38 and 42.

The disputed domain name <chatroullette.com> was registered by the Respondent on November 19, 2009.

The disputed domain name redirects to a website at "www.chaturbate.com" that features adults chats and live sex cam services.

5. Parties' Contentions

A. Complainant

(1) The Complainant first alleges that the disputed domain name <chatroullette.com>, is similar to its earlier trademark CHATROULETTE, to the point of creating confusion.

This disputed domain name <chatroullette.com> is a purposeful misspelling of the Complainant's CHATROULETTE trademark: it varies by only one letter, the Respondent simply added a letter "l".

(2) Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Prior to the Respondent's registration of the disputed domain name, and the Complainant's filing of trademark applications for CHATROULETTE, the Complainant's "Chatroulette" website and video-chat services went viral immediately after its launch, and saw a meteoric rise in popularity.

The Respondent, identified as "Isaac Paul", is not commonly known by the disputed domain name and does not resemble the disputed domain name in any manner.

The Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant's trademark.

Furthermore, the Respondent has continuously used the disputed domain name to redirect Internet users to a website that features adult chats and live sex cam services: that evinces a lack of legitimate rights or interests.

Lastly, the Respondent registered the disputed domain name on November 19, 2009, a period that falls suspiciously close to the Complainant's registration of its <chatroulette.com> domain name on November 16, 2009. As traffic to the Complainant's <chatroulette.com> domain name increased by 10,000 percent between its launch and January 2010, it means that Chatroulette's popularity was immediate, and had obviously gained significant popularity (and common law trademark rights) by the time that the Respondent registered the disputed domain name.

These circumstances, coupled with the fact that the terms "chat" and "roulette" in combination do not have any meaning in commerce other than to reference the Complainant's business, strongly implies that Respondent's registration was opportunistic and predatory in nature.

(3) Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith.

The Complainant alleges that the Respondent should be considered to have known of the existence of the Complainant's website due to the timing and circumstances surrounding the Respondent's registration of the disputed domain name, which provides evidence of bad faith registration.

As the Complainant's website "www.chatroulette.com" was an instant hit, the Respondent's registration of the disputed domain name three days after the Complainant registered its domain name, strongly suggests that the Respondent knew of the Complainant and only registered the disputed domain name in response to the publicity generated and received by the Complainant.

The disputed domain name redirects to a website found at "www.chaturbate.com", which features adult chats and live sex cam services. This provides evidence of the Respondent's bad faith use of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Notwithstanding the lack of a response from the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel "shall draw such inferences therefrom as it considers appropriate".

Taking into consideration the Complainant's contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel's findings on each of the above mentioned elements are the following:

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the registered CHATROULETTE trademark owned by the Complainant.

Indeed, the disputed domain name <chatroullette.com> incorporates the entirety of the Complainant's CHATROULETTE trademark.

The only difference between the trademark CHATROULETTE and the disputed domain name is the addition of the letter "l".

This minor misspelling does not avoid the confusing similarity between the trademark CHATROULETTE and the disputed domain name.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's mark under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Considering the difficulty to demonstrate a negative, UDRP panels generally find that if the complainant raises a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy and then the burden shifts to the respondent to demonstrate its rights or legitimate interests. See De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-1465.

Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its CHATROULETTE trademark.

It results from the circumstances that the Respondent does not own any right in the trademark CHATROULETTE nor is it commonly known by the disputed domain name.

The Complainant has made out a strong prima facie case that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.

The use made of the disputed domain name by the Respondent for a commercial website providing adult content does not indicate any such rights.

The Respondent has chosen not to respond to the cease and desist letter sent by the Complainant, nor to the Complaint nor to counter the prima facie case established by the Complainant.

In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

See Khloe Kardashian, Whalerock Celebrity Subscription, LLC, Khlomoney, Inc. v. Private Registrations Aktien Gesellschaft / Privacy Protection Service Inc. d/b/a Privacyprotect.Org, WIPO Case No. D2015-1113.

The Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name.

It provides that:

"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

The Panel considers that the denomination CHATROULETTE is distinctive to refer to the Complainant's business as it does not have any meaning in commerce.

The circumstances of the present case raise the question of whether the disputed domain name was registered in bad faith, since it was registered prior to the existence of the Complainant's trademark registrations.

Relevant to this case, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 3.8 address this question: "Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?"

"3.8.1 Domain names registered before a complainant accrues trademark rights

Subject to scenarios described in 3.8.2 below, where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent. (This would not however impact a panel's assessment of a complainant's standing under the first UDRP element.)

Merely because a domain name is initially created by a registrant other than the respondent before a complainant's trademark rights accrue does not however mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant's trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name.

3.8.2 Domain names registered in anticipation of trademark rights

As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent's intent in registering the domain name was to unfairly capitalize on the complainant's nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.

Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent's insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant's filing of a trademark application."

Since the Complainant's registered its domain name <chatroulette.com> on November 16, 2009 and its "chatroulette" website went viral immediately, and since there is no evidenced relationship between the Parties, it is highly likely that the Respondent was aware of the Complainant's website at the time it registered the disputed domain name.

Moreover, the Complainant submitted printouts showing that the disputed domain name resolves to a website that features adults chats and live sex cam services.

It appears therefore that the Respondent, by making reference to the "chatroulette" website, is trying to create a likelihood of confusion in order to attract, for commercial gain, Internet users.

The Panel finds that the Respondent's use of the disputed domain name cannot therefore constitute use of the disputed domain name in a bona fide offering of goods or services.

Conversely, the Panel finds that the Respondent registered the disputed domain name with the Complainant in mind and with the intention of capitalizing on the reputation of the Complainant within the meaning of paragraph 4(b)(iv) of the Policy.

See INTERTEX, Inc. v. Shant Moughalian, Contess, Inc., WIPO Case No. D2017-0480.

The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) of the Policy.

7. Decision

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 <chatroullette.com> be transferred to the Complainant

Alexandre Nappey
Sole Panelist
Date: April 20, 2018