WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Alexander Ivanov

Case No. D2017-1231

1. The Parties

The Complainant is Andrey Ternovskiy dba Chatroulette of Moscow, Russian Federation, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Alexander Ivanov of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <lesbianschatroulette.com> (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2017. On June 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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 June 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2017.

The Center appointed Olga Zalomiy as the sole panelist in this matter on July 26, 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

The Complainant is a Russian national, who created an online chat website in 2009 that pairs random people from around the world together for real-time, webcam-based conversations. The Complainant owns the website “www.chatroulette.com” and has used it continuously since its creation.

The Complainant owns multiple trademark registrations for the CHATROULETTE trademark.

The Respondent is a Russian national, who registered the Domain Name on May 5, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant claims that he is the owner of trademark registrations across various jurisdictions. The Complainant alleges that “Chatroulette”, which he created and owns, is an online chat website that pairs random people from around the world together for real-time, webcam-based conversations. The Complainant claims that he created “Chatoulette” in 2009 and has been using it consistently ever since. According to the Complainant, “Chatroulette” very quickly established incredible popularity and a high-profile reputation. By February 2010, the website enjoyed a 26,000% increase in traffic over the December 2009 figures. The Complainant contends that his website popularity has also been boosted by its appearance in the news and media, which confirms “Chatroulette’s” status and fame.

The Complainant alleges that the Domain Name is identical or confusingly similar to its CHATROULETTE trademark, which he owns by virtue of multiple trademark and service mark registrations across various jurisdictions. The Complainant claims that the Domain Name incorporates, in its entirety, the Complainant’s CHATROULETTE trademark. The Complainant argues that the mere addition of the generic term “lesbians” to the Complainant’s trademark does not negate the confusing similarity between the Domain Name and the Complainant’s trademark and the Domain Name must be considered confusingly similar to the Complainant’s trademark. The Complainant claims that it is well established that the addition of generic or descriptive terms is not sufficient to overcome a finding of confusing similarity pursuant to the UDRP.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant alleges that the granting of registrations by the Russian Agency for Patents and Trademarks (“ROSPATENT”), the European Union Intellectual Property Office (“EUIPO”), the German Patent and Trade Mark Office (“DPMA”) and the United States Patent and Trademark Office (“USPTO”) to the Complainant for the CHATROULETTE trademark is prima facie evidence of the validity of CHATROULETTE as a trademark, of the Complainant’s ownership of this trademark, and of the Complainant’s exclusive right to use the CHATROULETTE trademark in commerce or in connection with the goods and/or services specified in the trademark registration certificates. The Complainant alleges that the Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant claims that he has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. The Complainant further alleges that the Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests. The Complainant argues that the Respondent is using the Domain Name to direct Internet users to a website that features adult content and that such use evinces a lack of legitimate rights or interests. The Complainant contends that the Respondent registered the Domain Name on May 5, 2011, which is significantly after the Complainant’s registration of its <chatroulette.com> domain name on November 16, 2009, and significantly after the Complainant filed for registration of its CHATROULETTE trademark with ROSPATENT, EUIPO, DPMA and USPTO, and after the Complainant’s first use of the CHATROULETTE mark in 2009.

The Complainant claims that the Respondent has registered and is using the Domain Name in bad faith. The Complainant argues that his CHATROULETTE trademark is known internationally. The Complainant contends that he registered his <chatroulette.com> domain name and established its Chatroulette service and website before the Respondent’s registration of the Domain Name on May 5, 2011.

The Complainant argues that the composition of the Domain Name makes it illogical to believe that the Respondent registered the Domain Name without specifically targeting the Complainant. The Complainant claims that at the time of registration of the Domain Name, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks and that registration of the Domain Name containing the Complainant’s well-known trademarks constitutes bad faith per se. According to the Complainant, the website to which the Domain Name resolves to features sexually-explicit, pornographic content, which provides evidence of the Respondent’s bad faith registration and use of the Domain Name. The Complainant claims that the Respondent’s failure to respond to the Complainant’s cease and desist letters may properly be considered a factor in finding bad faith registration and use of the Domain Name.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

A. Identical or Confusingly Similar

Under the first UDRP element, the Complainant is required to prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has established its rights in the CHATROULETTE trademark by submitting a copy of the EUIPO trademark registration for the CHATROULETTE mark, n° 008944076, filed on August 16, 2010 and registered on December 4, 2012 and USPTO trademark registration No. 4445843, filed on January 10, 2011 and registered on December 10, 2013. Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”. Moreover, “the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element”¹ .

It is well established that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”² “Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”³ “Where trademark is recognizable within the disputed domain name, the addition of other terms … would not prevent finding of confusing similarity”.⁴

Here, the Domain Name consists of the Complainant’s CHATROULETTE trademark, the word “lesbians” and the generic Top-Level Domain (“gTLD”) suffix “.com”. A side-by-side comparison of the Domain Name shows that the Domain Name incorporates the Complainant’s trademark in its entirety and the CHATROULETTE trademark is easily recognizable in the Domain Name. As a result, the addition of the word “lesbians” does not prevent finding of confusing similarity. The addition of the gTLD “.com” is disregarded under the confusing similarity test⁵ .

Thus, the Domain Name is identical or confusingly similar to the Complainant’s CHATROULETTE mark and the first element of the UDRP has been satisfied.

B. Rights or Legitimate Interests

Under the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent⁶ . Once the complainant has made out the prima facie case, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name⁷ . Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.⁸

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Complainant has not authorized the Respondent to use and register the Complainant’s CHATROULETTE trademark or to register any domain names incorporating the CHATROULETTE mark. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use a complainant’s trademarks, generally no bona fide or legitimate use of the domain name could reasonably be claimed. See, LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.

The Complainant claims that the Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests. See UDRP, paragraph 4(c)(ii). The Respondent’s name, “Alexander Ivanov”, does not resemble the Domain Name in any manner – thus, there is no evidence that suggests that the Respondent is commonly known by the Domain Name.

Furthermore, the Respondent is using the Domain Name to direct Internet users to a website that features adult content. Numerous past panels have held that use of a disputed domain name that is confusingly similar to a complainant’s trademark to link to a website featuring pornographic or adult content evinces a lack of legitimate rights or interests. See, MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205 (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the complainant’s mark).

The Panel therefore finds that the Complainant has made out a prima facie case in respect to the Respondent’s lack of rights or legitimate interests in the Domain Name. Since the Respondent has failed to rebut the Complainant’s case, the Panel holds that the second element of the UDRP has been satisfied.

C. Registered and Used in Bad Faith

Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.

Pursuant to paragraph 4(b) of the UDRP, any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the 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 the respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The Panel notes that the Respondent registered the Domain Name prior to the Complainant’s CHATROULETTE trademark registrations. It’s well established, that “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: …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”. ⁹

Here, the Respondent has used the Domain Name for six years before the Complainant filed its Complaint. It is, therefore, a challenge for the Panel, to determine the Respondent’s intentions at the time of the Domain Name registration. Nevertheless, on the balance of probabilities, the Panel finds that it is more likely than not that the Respondent’s intent in registering the Domain Name was to unfairly capitalize on the Complainant’s nascent trademark rights for the following reasons:

(a) The Complainant registered its <chatroulette.com> domain name on November 16, 2009 and established its “Chatroulette” website very shortly thereafter, before the Respondent’s registration of the Domain Name on May 5, 2011. Furthermore, the Complainant began applying to register trademarks using that name in 2010, prior to the Domain Name registration.

(b) The evidence on file shows that very shortly after its launch, Complainant’s website received a lot of attention in the press. At the same time, the website began to receive 500 visitors per day while continuing to experience consistent growth, and only one month later in January 2010, this figure had increased to 50,000 visitors per day (approximately 1.5 million users per month). In February 2010, that traffic had jumped to approximately 130,000 visitors per day (3.9 million monthly visitors). The growth demonstrates the incredible popularity that the Complainant and its Chatroulette website and business were able to achieve by the time the Respondent registered the Domain Name.

The Panel also finds that the cumulative circumstances of the case indicate that the Respondent is using the Domain Name in bad faith. The Respondent appears to have provided false contact information on the WhoIs database associated with the Domain Name, as evidenced by the non-delivery report issued on July 5, 2017, whereby the courier company informed the Center that the Respondent’s address was “incomplete/wrong”. Also, the Respondent’s ignoring of cease and desist letters is considered an indication of bad faith. Finally, several prior panels have found the CHATROULETTE trademark to be well known,¹⁰ which also suggests bad faith registration and use.

All these factors cumulatively produce an overwhelming inference of bad faith registration and use and therefore the third element of the UDRP has been proven.

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 Domain Name, <lesbianschatroulette.com> be transferred to the Complainant.

Olga Zalomiy
Sole Panelist
Date: August 7, 2017

¹ Section 1.1.3, WIPO Overview 3.0.

² Section 1.7, WIPO Overview 3.0.

³ Id.

⁴ Section 1.8, WIPO Overview 3.0.

⁵ Section 1.11.1, WIPO Overview 3.0.

⁶ Section 2.1, WIPO Overview 3.0.

⁷ Id.

⁸ Id.

⁹ Section 3.8.2, WIPO Overview 3.0.

¹⁰ Andrey Ternovskiy dba Chatroulette v. Alexander Ochkin, WIPO Case No. D2017-0334; Andrey Ternovskiy dba Chatroulette v. AM F, WIPO Case No. D2017-1008; Andrey Ternovskiy dba Chatroulette v. Protection of Private Person / Aleksandr Katkov, WIPO Case No. D2017-0381; Andrey Ternovskiy dba Chatroulette v. A Anoniem, WIPO Case No. D2017-0940.