WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Domain Administrator, See PrivacyGuardian.org / Zhichao Yang

Case No. D2019-0792

1. The Parties

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

The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Zhichao Yang of Hefei, Anhui, China.

2. The Domain Names and Registrar

The disputed domain names <chatroulwtte.com> and <xhatroulette.com> (“Disputed Domain Names”) are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2019. On April 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 8, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 10, 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 April 11, 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 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2019.

The Center appointed Gabriela Kennedy 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 a Russian individual based in Malta who created and owns the online chat website “www.chatroulette.com”, commonly known as “Chatroulette” which pairs random Internet users from around the world for real-time, webcam-based video conversations. In addition to online video chat services, Chatroulette also provides online social introduction and networking services.

The Complainant created Chatroulette in 2009 when he was 17 years old after noticing that no website existed which allowed random video chatting amongst Internet users around the world. According to the Complainant, the name “Chatroulette” is a creative amalgamation of the words “chat”, which embodies one of the core purposes of the Complainant’s website, and “roulette”, which represents the thrill of unpredictability in a game of Russian roulette. The Chatroulette website rapidly gained immense popularity across the world shortly after its launch. According to the most recent website analytics report in February 2019, the Chatroulette website received over 2,5 million visitors between September 2018 and February 2019.

The Complainant owns several trade mark registrations for the CHATROULETTE trade mark across various jurisdictions, including, inter alia:

(i) United States Trade Mark CHATROULETTE, registration No. 4445843, registered on December 10, 2013;

(ii) European Union Trade Mark CHATROULETTE, registration No. 008944076, registered on December 4, 2012; and

(iii) Swiss Trade Mark CHATROULETTE, registration No. 600401, registered on May 14, 2010.

The Respondent is an individual based in China who registered the Disputed Domain Names in February 2018 through a WhoIs privacy service. The Disputed Domain Names redirect Internet users to a page with pay-per-click links to third party adult content.

5. Parties’ Contentions

A. Complainant

The Complainant’s primary contentions can be summarised as follows:

(a) Given that the Disputed Domain Names differ from the Complainant’s registered trade mark by just one letter, the Disputed Domain Names is a typical example of typosquatting, whereby the Respondent intentionally takes advantage of Internet users who inadvertently misspell the Complainant’s trade mark when typing in the website address. As such, the Disputed Domain Names are identical or confusingly similar to the Complainant’s registered trade mark CHATROULETTE;

(b) the Respondent is not commonly known by the Disputed Domain Names and used a WhoIs privacy service to register the Disputed Domain Names. Moreover, the Disputed Domain Names redirect to a page with pay-per-click links to various third party adult websites. Therefore, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(c) the Respondent’s registration of the Disputed Domain Names that misspell the Complainant’s registered trade mark CHATROULETTE demonstrates that the Respondent is using the Disputed Domain Names to intentionally confuse unsuspecting Internet users looking for the Complainant’s services, thereby supporting the fact that the Respondent is acting in bad faith.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) the Disputed Domain Names have been registered or are being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the CHATROULETTE trade mark, based on its multiple trade mark registrations across various jurisdictions and its evidence of continuous use since 2009.

It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain (“gTLD”) extension “.com” may be disregarded. See paragraph 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Disputed Domain Names incorporate the Complainant’s CHATROULETTE mark almost in its entirety, save for the replacement of the letter “c” with the letter “x” in the Disputed Domain Name<xhatroulette.com>, and the replacement of the letter “e” with the letter “w” in the other Disputed Domain Name <chatroulwtte.com>. The fact that the letter “x” is directly adjacent to the letter “c” and that the letter “w” is also directly adjacent to the letter “e” on the keyboard strongly suggests that these were deliberate misspellings of the Complainant’s mark, which were intended to be confusing by design so as to mislead Internet users. The Panel accepts the Complainant’s submission that the Disputed Domain Names are a typical example of typosquatting behavior, which takes advantage of Internet users who inadvertently mistype an address when attempting to access the trade mark owner’s website. See paragraph 1.9 of the WIPO Overview 3.0.

As such, the Panel finds that the Disputed Domain Names are identical or confusingly similar to the Complainant’s CHATROULETTE mark and accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See paragraph 2.1 of the WIPO Overview 3.0.

The Panel accepts that the Complainant has not authorized the Respondent to use the CHATROULETTE mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the CHATROULETTE mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Names. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

The Disputed Domain Names redirect to the parking page <myfreeadult.com> which displays pay-per-click links to various third party adult websites, some of which purport to compete with the Complainant’s business. This suggests that the Respondent is using the Disputed Domain Names to capitalise on the reputation and goodwill of the Complainant’s trade mark. There is no evidence to suggest that the Disputed Domain Names have been used in connection with any legitimate non-commercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy. The Panel therefore accepts the Complainant’s contention that the Respondent’s use of the Disputed Domain Names to host a parking page comprising of pay-per-click links do not represent a bona fide offering of goods or services. See paragraph 2.9 of WIPO Overview 3.0.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In light of the circumstances set out in sections A and B above, it is clear that the Respondent intentionally registered the Disputed Domain Names for its own commercial gain by creating a likelihood of confusion with the Complainant’s CHATROULETTE mark. The Panel finds that the use of the Disputed Domain Names to redirect Internet users to a parking page displaying pay-per-click links to third party adult websites, some of which compete with the Complainant’s business, amount to bad faith use.

The Panel notes that the Respondent has been named in multiple UDRP proceedings, including several filed by the Complainant. See Andrey Ternovskiy dba Chatroulette v. Domain Administrator, See PrivacyGuardian.org / Zhichao Yang, WIPO Case No. D2018-1664 (in relation to the domain names <chatroulerte.com>, <chatrouletye.com> and <chatrouleyte.com>) and Andrey Ternovskiy dba Chatroulette v. Domain Administrator, See PrivacyGuardian.org / Zhichao Yang, WIPO Case No. D2018-2588 (in relation to the domain name <vhatroulette.com>). The above cases, amongst many others, are typo-squatting cases, involving single-letter keyboard misspellings of the respective trade marks in question. The Panel therefore finds that the Respondent has been engaging in a pattern of bad faith conduct as demonstrated by its many abusive domain name registrations.

In addition, the Respondent’s failure to respond to the Complainant’s contentions combined with the fact that the Respondent used a WhoIs privacy service to register the Disputed Domain Names further demonstrate that the Disputed Domain Names are registered and used in bad faith.

In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Names in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.

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 Names <chatroulwtte.com> and <xhatroulette.com> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: May 22, 2019