WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Protection of Private Person / Aleksandr Katkov

Case No. D2017-0381

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 Protection of Private Person / Aleksandr Katkov of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <chatroulettelolz.com> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2017. On February 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2017, 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 in English and Russian to the Complainant on March 2, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center sent another email communication to the Parties in English and Russian on the same day regarding the language of the proceeding.

The Complainant filed an amended Complaint which included its arguments regarding the language of proceedings on March 3, 2017. The Respondent did not comment on the language of proceedings by the specified due date.

The Center verified that 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 in English and Russian, and the proceedings commenced on March 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2017.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on April 11, 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, Andrey Ternovskiy dba Chatroulette (“Chatroulette”) is the owner of trademark CHATROULETTE registrations across various jurisdictions. The trademark CHATROULETTE is registered in the Russian Federation, European Union, Germany and the United States of America (Annex 2 to the Complaint). The business under the name “Chatroulette”, created and owned by Andrey Ternovskiy, is an online chat website that pairs random people from around the world together for real-time, webcam-based conversations and is associated with, and known for providing, online video chat services and online video social introduction and networking services.

The Complainant also has a registered domain name <chatroulette.com> registered since November 16, 2009.

The disputed domain name <chatroulettelolz.com> was registered on November 15, 2016. The Respondent uses the disputed domain name in connection with adult content and competing services (to websites providing online video chat services).

5. Parties’ Contentions

A. Complainant

The Complainant created the Chatroulette service and website in 2009 when he was just a 17-year-old high school student in Moscow, Russian Federation. The novel idea for “Chatroulette” stemmed from the Complainant’s realization that, at the time of its inception, no website existed which allowed for random video chatting with other Internet users from around the world. The distinctive, unique “Chatroulette” name that the Complainant chose for his innovative website and business was, in part, selected after the Complainant watched a film in which American soldiers in Vietnam played the game of Russian roulette. By combining the term “chat”, which is one of the core purposes of the Complainant’s website, and the word “roulette”, which is associated with the thrill of unpredictability (though not inherently or naturally connected to online webcam chatting), the essence of Chatroulette is captured in this distinctive name. Thus, the Complainant coined a name that he felt encapsulated the ideas, goals, and mission of his business.

The Complainant very quickly established incredible popularity and a high-profile reputation. Chatroulette continues to be well-known as one of the most popular video chat sites in the world, and the website has generated significant interest and attention internationally among fans, the media, and competitors. Following its launch and meteoric rise in popularity, the Complainant has retained its impressive web traffic. According to the website “www.compete.com” statistics, the Complainant’s website, located at “www.chatroulette.com”, averaged over 260,000 unique monthly visitors in the 13-month period August 2015 – August 2016, earning a website popularity rank of 12,967 (annexes 6, 7 and 8 to the Complaint). Besides producing countless devotees and fans, the immense popularity of the Complainant has, unfortunately, also spawned numerous copycat, clone sites that mimic the Chatroulette website and functionality, as well as encouraged a throng of other cybersquatters that wish to exploit the popularity and goodwill of the Complainant.

In summary, the Complainant’s extensive and continuous use of the CHATROULETTE trademarks, and the fact that the Complainant has made significant investments over the years to promote and protect these trademarks and the Complainant’s business across the Internet, demonstrate that the Complainant enjoys a substantial degree of public recognition in CHATROULETTE and has seen this mark become uniquely and distinctly associated with the Complainant.

(a) Identical or Confusingly Similar

The Complainant submits that the disputed domain name is confusingly similar to the trademark CHATROULETTE.

The Complainant holds that the comparison should be made between only the second-level portion of the disputed domain name and the Complainant’s trademark (Rollerblae, Inc. v. McCrady, WIPO Case No.D2000-0429 and others.

The disputed domain name can be considered as capturing, in its entirety, the Complainant’s CHATROULETTE trademark and simply adding the generic term “lolz” to the end of the trademark. The mere addition of this generic term to the Complainant’s trademark does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark.

The Complainant refers to existing UDRP practise in defining that the addition of a generic term and generic Top-Level Domain fails to distinguish the Respondent’s disputed domain name from the Complainant’s mark; Pfizer Inc v. Intermeds, LTD/ John Velasquez, WIPO Case No.D2005-0153 which stated that “finding the domain shopviagra.com differed from the VIAGRA trademark only in the descriptive term “shop” and that “none of these integers [additional words] alone would preclude the disputed domain name from being confusingly similar”.

(b) Rights or Legitimate Interests

The Complainant submits that the trademark registration of CHATROULETTE in various jurisdictions is prima facie evidence of the validity of the term “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 on or in connection with the goods and/or services specified in the registration certificates (Annex 2 to the Complaint).

The Respondent is not sponsored by or affiliated with the Complainant in any way.

The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in the disputed domain name.

The Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests. In the instant case, the pertinent Whois information identifies the Registrant as “Aleksandr Katkov/ Protection of Private Person,” which does not resemble the disputed domain name in any manner – thus, where no evidence suggesting that the Respondent is commonly known by the disputed domain name. Therefore, the Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name.

The Respondent is using the disputed domain name to direct Internet users to a website that features adult content. Numerous past UDRP panels have held that use of a disputed domain name that is confusingly similar to a complainant’s trademarks to link to a website featuring pornographic or adult content evinces a lack of legitimate rights or legitimate interests (MatchNet plc v. MAC Trading, WIPO Case No.D2000-0205 holds the 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 trademark.

(c) Registered and Used in Bad Faith

The Complainant and its CHATROULETTE trademark are known internationally, with trademark registrations across numerous countries. The Complainant registered its <chatroulette.com> domain name on November 16, 2009 and established its Chatroulette service and website very shortly thereafter, before the Respondent’s registration of the disputed domain name on November 15, 2016.

At the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. In addition to the numerous trademarks filed in connection with the Complainant’s business prior to the Respondent’s registration of the disputed domain name, the Complainant has retained impressive web traffic since its inception. According to Compete.com statistics, the Chatroulette website, averaged over 260,000 unique monthly visitors in the 13-month period August 2015 – August 2016, earning a website popularity rank of 12,967, which demonstrates the Complainant’s fame.

The website of the disputed domain name features sexually-explicit, pornographic content, which provides evidence of the Respondent’s bad faith registration and use of the disputed domain name. Past UDRP panels have consistently held that a respondent’s use of a confusingly similar domain name to direct unsuspecting Internet users to adult content, as here, is evidence of bad faith registration and use of that domain name (see also Microsoft Corp. v. Horner, WIPO Case No. D2002-0029) holding respondent’s use of complainant’s mark to post adult-oriented photographs and publish links to additional adult-oriented websites evidenced bad faith use and registration).

The Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP panels have held serves as further evidence of bad faith registration and use (see Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc., WIPO Case No. D2003-0230, and others finding that the respondent’s efforts to hide its true identity through the use of a “proxy” domain registrar are evidence of bad faith registration.

The Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Past UDRP panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name (see Encyclopedia Britannica v. Zuccarini, WIPO Case No. D2000-0330 which found that failure to positively respond to a demand letter provides “strong support for a determination of ‘bad faith’ registration and use”).

Finally, on balance of the facts set forth above, it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark, and the Respondent should be found to have registered and used the disputed domain name in bad faith (see Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754.

B. Respondent

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

6. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules both in electronic and paper forms.

However, the Respondent failed to file a response to the Complaint and has not sought to answer to the Complainant’s assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case and finds no exceptional circumstances indicating why it could not do so; the Panel will proceed to a decision based on the Complaint in accordance with paragraph 5(f) of the Rules.

The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must prove that the three following elements are satisfied:

(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 was registered and is being used in bad faith.

Pursuant to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.

A. Language of Proceedings

Paragraph 11 of the Rules states that the language of the proceeding shall be the language of the Registration Agreement unless the Panel determines otherwise. The Registrar has confirmed that the language of the Registration Agreement is Russian. The Complainant has requested English as the language of proceeding quoting as the reasons, among others, that disputed domain name is comprised of the Latin characters and the website is presented in English.

The Complainant will incur undue hardship and delay the proceeding if it was required to translate the Complaint into Russian. Furthermore, the Respondent was properly notified about the language of the proceedings in both English and Russian and the Respondent has not objected to the Complainant’s language request.

In the present circumstance, the Panel finds it fair to accept the Complainant’s Complaint filed in English, while allowing the Respondent to respond in Russian. The Center correspondence to the Respondent was communicated both in English and Russian. Given that the Respondent has not filed any submission, the Panel proceeds to a decision in English.

B. Identical or Confusingly Similar

By virtue of its trademark registrations the Complainant has rights in CHATROULETTE registered particularly, in the Russian Federation where the Respondent is located.

The Complainant has registered the CHATROULETTE trademark in numerous other jurisdictions, including the European Union, Germany and the United States of America. The Complainant submits that the disputed domain name is identical or confusingly similar to its trademark.

The disputed domain name <chatroulettelolz.com> is capturing, in its entirety, the Complainant’s CHATROULETTE trademark and simply adding the descriptive term “lolz” to the end. The term “lolz” is habitually used in English as equivalent of fun, laughter, or amusement.

The Panel refers to a number of past UDRP decisions, which confirm 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 (Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802). The mere addition of a descriptive term to the Complainant’s trademark does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark (see Pfizer Inc v. Intermeds, LTD/ John Velasquez, WIPO Case No. D2005-0153).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark CHATROULETTE.

The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a) of the Policy as to the first element of the Policy.

C. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed a response to the Complaint and has not contested the Complainant’s assertions, the Panel will need to consider whether the Respondent’s use of the disputed domain name would indicate the Respondent’s rights or legitimate interests in the disputed domain name.

According to paragraph 4(c) of the Policy, the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.

A respondent may show its rights or legitimate interests by producing evidence to support the circumstances under paragraphs 4(c)(i)-(iii) of the Policy.

By not responding to the Complainant’s contentions, the Respondent in this proceeding has not attempted to demonstrate its rights or legitimate interests.

The Panel further notes that there is no evidence that before any notice of the dispute with the Complainant, that the Respondent was using the disputed domain name for a bona fide offering of goods or services. Instead, the Respondent redirects Internet users to pornographic websites, which should and could not be considered a bona fide offering of goods or services under the present circumstances.

The above-described use of the disputed domain names proves that the Respondent was not involved in a bona fide offering of goods and services in respect of the disputed domain name under paragraph 4(c)(i) of the Policy.

As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.

The Panel recalls that the Respondent registered the disputed domain name on November 15, 2016. The Complainant asserts that the Complainant’s activity under its trade name Chatroulette has continued since 2009 and CHATROULETTE has been registered as a trademark shortly after and is widely known and recognized as a trademark within its industry.

The disputed domain name has been registered years after the registration of the Complainant’s trademark; it is highly unlikely that the Respondent known as Alexander Katkov has been commonly known by the disputed domain names as provided in paragraph 4(c)(ii) of the Policy.

Moreover, the Complainant confirmed that the Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in the disputed domain name.

There is no further evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. In particular, linking of the disputed domain name incorporating the Complainant’s mark to pornographic websites does not constitute any legitimate or fair use. Therefore, the Panel concludes that the paragraph 4(c)(iii) of the Policy does not apply.

The Panel finds the Complainant has established its prima facie case to show that the Respondent has no rights or legitimate interests in the disputed domain name and, accordingly, the Complainant has satisfied the requirement under paragraph 4(a) of the Policy as to the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or has 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 the complainant, for valuable consideration in excess of its 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 online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name has been registered with the Respondent’s knowledge of the Complainant’s trademark and reputation.

The Complainant’s first use and first registration of its CHATROULETTE mark predate any use the Respondent may have made of disputed domain name as a trade name, domain name or common name. The disputed domain name was registered on November 15, 2016, years after the Complainant first used its CHATROULETTE marks. Additionally, the Complainant registered its domain names and began operating its websites at “www.chatroulette.com” many years before the Respondent registered the disputed domain name in this case. The Respondent was more likely aware of the Complainant’s trademarks, domain names and websites associated with the same at the time the Respondent registered the disputed domain name.

In addition, the Complainant’s CHATROULETTE trademark is well known as a popular chat site and has been for many years. The Respondent’s registration of the disputed domain name wholly incorporating a third-party mark is indicative of bad faith.

It is the Panel’s view, under the present circumstances, that the Respondent most likely registered the disputed domain name with full awareness of the Complainant’s trademark as well as the goodwill associated with it. In addition, the Panel finds that the Respondent registered the disputed domain name with the purpose to profit from the notoriety of the Complainant’s mark.

It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain name could be directly associated with the Complainant’s trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327).

Additionally, the Complainant draws attention to the fact of Respondent’s use of the disputed domain name contributes to redirect users to a pornographic website, which leads to the confusion of the Internet users. In the Panel’s view, it confirms that the Respondent intends to use the similarity of the domain name to the trade mark to attract the Internet users.

The Panel finds that the Respondent’s registration of the disputed domain name shows the Respondent’s intent to rely on a risk of confusion with the Complainant’s activity and trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name and any website associated with it.

The Panel is not aware of the Respondent conducting any legitimate business activity using the disputed domain name. These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith.

The Respondent’s failure to reply to the Complainant cease-and-desist letter is a further indication of bad faith by the Respondent. UDRP practice is consistence in holding the failure to respond to a cease-and-desist letter to be a factor in finding bad faith registration and use of a domain name (see Encyclopedia Britannica v. Zuccarini, supra).

Furthermore, the Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and causes tarnishment to the Complainant’s reputation and trademark, which should be considered as bad faith registration and use of the disputed domain name.

The Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP panels have held serves as further evidence of bad faith registration and use (see Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc., supra).

The Panel finds that the Respondent registered and used the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the requirements of paragraph 4(a) of the Policy as to the third element 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 <chatroulettelolz.com> be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist
Date: April 26, 2017