WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Kenward Law, First Orient Advisory Limited

Case No. D2019-0011

1. The Parties

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

The Respondent is Kenward Law, First Orient Advisory Limited of Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <chatroulettevr.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 January 3, 2019. On January 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2019, 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 January 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2019.

The Center appointed Mihaela Maravela as the sole panelist in this matter on February 13, 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

Chatroulette was created and is owned by the Complainant and represents an online chat website that pairs random people from around the world together for real-time, webcam-based conversations. Chatroulette is associated with, and known for providing, online video chat services and online video social introduction and networking services. Chatroulette was created by Andrey Ternovskiy in 2009 and began to receive 500 visitors per day; one month later had 50,000 visitors per day and increased over the years so that the website located at “www.chatroulette.com” averaged over 2.74 million visitors in the period June 2018-November 2018. The Complainant has made significant investments over the years to promote and protect its trademark and business across the Internet and world.

The Complainant is the exclusive owner of a number of registered trademarks consisting of the word CHATROULETTE in various jurisdictions throughout the world, including the following:

- the European Union Trademark for the word CHATROULETTE with registration number 8944976, registered on December 4, 2012,

- the United States Trademark for the word CHATROULETTE with registration number 4445843, registered on December 10, 2013.

The disputed domain name <chatroulettevr.com> was registered on May 11, 2016 and resolves at a GoDaddy parking page.

5. Parties’ Contentions

A. Complainant

The Complainant argues that it has the exclusive ownership and use of the CHATROULETTE trademark. In creating the disputed domain name, the Respondent has added the generic, descriptive term “vr” (acronym for virtual reality) to the Complainant’s trademark. The fact that such term is closely linked and associated with the Complainant’s brand and trademark only serves to underscore and increase the confusing similarity between the disputed domain name and the Complainant’s trademark. Since the Complainant’s website and business is connected to online webcam chatting, the term “virtual reality” entails a close relation to CHATROULETTE. The Complainant concludes that the disputed domain name is identical or confusing similar to its trademark.

The Complainant further contends that the Respondent is not commonly known by the disputed domain name and that the Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not licensed, authorized or permitted the Respondent to register a domain name incorporating the Complainant’s trademark. Currently, the Respondent is using the disputed domain name to redirect users to a website that resolves to a GoDaddy parking page and lacks content. The Respondent has failed to make use of the disputed domain name.

Also, the Complainant argues that its CHATROULETTE trademark is known internationally and at the time of the registration of the disputed domain name the Respondent knew, or at least should have known, of the existence of the Complainant’s trademark and that the registration of domain names containing well-known trademarks constitutes bad faith. The disputed domain name is not used, but passive holding can constitute a factor in finding bad faith registration and use according to the Policy. In addition, the Complainant argues that the Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses. And this fact demonstrates that the Respondent is engaging in a pattern of cybersquatting/typosquatting, which is evidence of bad faith registration and use. The Complainant contacted the Respondent and advised him that the unauthorized use of the CHATROULETTE trademark within the disputed domain name violated the Complainant’s rights in said trademark and requested voluntary transfer of the same. The Respondent replied stating that they were preparing an official letter of proof from the Dean’s office at one of the faculties involved in the research. The Complainant contends that it received no further answer despite the reminders it has sent to the Respondent. The Complainant concludes that the disputed domain name was registered and used in bad faith.

B. Respondent

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

6. Discussion and Findings

Noting the fact that the Respondent has not filed a Response, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

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

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

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

A. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the CHATROULETTE trademark.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights.

Numerous prior UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See, Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617.

Here the disputed domain name incorporates in its entirety the Complainant’s CHATROULETTE trademarks and the letters “vr” which are the abbreviation of the expression “virtual reality”. Such addition does not prevent a finding of confusing similarity. For a similar finding see Playboy Enterprises International, Inc. v. James H Park, WIPO Case No. D2017-1744.

It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark.

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks of the and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it 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.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established that it holds rights over the trademark CHATROULETTE and claims that the Complainant has not licensed or authorized the Respondent to use such trademark.

There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Virgin Enterprises Limited v. Name Redacted, WIPO Case No. D2018-0970.

In a response to the cease and desist letter sent by the Complainant before this UDRP proceeding, the Respondent argued that “the Domain Name you are referring to was officially registered via Go Daddy services several years ago. It was a part of an international scientific project and extensive research on the use of virtual reality in the purposes of corporate CSR and sustainable development. That is why it has “vr” at the end of the name. The research with case studies and relevant results would be published soon for the EU.” In a subsequent correspondence, following a reminder by the Complainant to the cease and desist letter, the Respondent answered as follows: “Sorry for our late answer but we are preparing an official letter of proof from the Dean's office at one of the faculties involved in the research and would get back to you soon.”

The Complainant argues that no other response or document was received.

In the absence of a response or defense by the Respondent in the current proceedings, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given to the Respondent to use the trademark CHATROULETTE.

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

Having in view the evidence put forward by the Complainant on the extensive use and reputation quickly obtained since the launch of the CHATROULETTE project, the Panel considers that the Respondent has registered the disputed domain name with knowledge of the Complainant’s trademark CHATROULETTE. See for similar findings on the reputation of the CHATROULETTE trademark e.g. Andrey Ternovskiy dba Chatroulette v. Above.com Domain Privacy / Shu Lin, WIPO Case No. D2018-2713; Andrey Ternovskiy dba Chatroulette v. Whois Agent, Domain Protection Services, Inc. / Marco Carta, MC, WIPO Case No. D2018-2678.

The fact that the disputed domain name is confusingly similar with the Complainant’s trademarks and that the said trademarks are extensively used indicates not only that the Respondent was aware of the Complainant’s business and trademark at the time of registration, but also that it registered the disputed domain name to mislead Internet users into thinking it is in some way connected, sponsored, endorsed by or affiliated with the Complainant’s services.

The Complainant provided un-rebutted evidence that the Respondent has registered numerous domain names that incorporate well known trademarks that include the descriptive term “vr”, such as <bacardivr.com>, <chevronvr.com>, <coldplayvr.com>. Some of these other domain names are also parked with GoDaddy.com and include sponsored links to services in the relevant field for each trademark, others are inactive. This evidence of a pattern is further indication of bad faith. See Washington Mutual, Inc. v. Ashley Khong, WIPO Case No. D2005-0740.

The Respondent has failed to make to date any genuine use of the disputed domain name. The absence of any bona fide use of the domain name at the very least results in a failure to rebut the inference noted above. See for a similar finding Guinness World Records Limited v. Solution Studio, WIPO Case No. D2016-0186.

With regard to the use of the disputed domain name, the Complainant adduced evidence that currently it is parked with GoDaddy.com and various sponsored links appear on the website in the field of web chat activity. The provisions of paragraph 4(b)(iv) of the Policy have a direct bearing in this case, since the Respondent misleads and confuses Internet users by making them believe that the websites resolved from the links are associated with or recommended by the Complainant. For a similar finding see Credit Industriel et Commercial S.A. v. Jeongyong Cho, WIPO Case No. D2013-1263; Intesa Sanpaolo S.p.A. v. Whois Privacy Protection Service, Inc./ Ferdinando Santovito, WIPO Case No. D2014-0104.

Additional factors retained by the Panel as indicative of bad faith registration and use of the disputed domain name include:

- the Respondent’s failure to provide any evidence of bona fide registration and use (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210);

- also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain name;

- in response to a cease and desist letter from the Complainant, the Respondent mentioned they were able to offer the Complainant to buy the disputed domain name through Go Daddy official service; even if no specific amount was provided for such sale. This action in light of the case circumstances supports a finding of bad faith under paragraph 4(b)(i) of the Policy.

In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.

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 <chatroulettevr.com> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: February 27, 2019