WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC / I S, ICS INC

Case No. D2018-2532

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, of Scottsdale, Arizona, United States of America (“United States”) / I S, ICS INC of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("United Kingdom").

2. The Domain Name and Registrar

The disputed domain name <boychatroulette.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 November 5, 2018. On November 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2018, 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 to the Complainant on November 8, 2018, 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 November 9, 2018.

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 November 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2018.

The Center appointed Alejandro Touriño as the sole panelist in this matter on December 13, 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 the owner of an online chat website created in 2009 that pairs random people from around the world together for real-time, webcam-based conversations.

The Complainant is the owner of several trademark registrations CHATROULETTE across various jurisdictions since, at least, 2011.

The Complainant is the owner of the domain name <chatroulette.com> since November 16, 2009.

The Respondent registered the Disputed Domain Name on November 28, 2016. The website hosted at the disputed domain name features multiple third-party links for Internet videoing and chatting services, which directly compete with the Complainant’s own offerings.

5. Parties’ Contentions

A. Complainant

The Complainant contends to be the owner of one of the most popular video chat sites in the world named “ChatRoulette”, that has generated significant interest and attention internationally among fans, the media, and competitors.

The Complainant also states that he is the owner of several trademark registrations for CHATROULETTE across various jurisdictions, which are known internationally. In particular, the Complainant is owner, among others, of the following trademarks:

- German trademark, registration number 302010003706 for CHATROULETTE, applied for on March 10, 2010 and registered on February 21, 2013, in classes 35, 38 and 42;

- European Union trademark, registration number 008944076, for CHATROULETTE, applied for on March 10, 2010 and registered on December 4, 2012 in classes 35, 38 and 42;

- United States trademark, registration number 4445843, for CHATROULETTE, applied for on January 10, 2011 and registered on December 10, 2013, in classes 38 and 45.

In addition, the Complainant further contends to have spent a considerable amount of time and money protecting its intellectual property rights.

The trademark CHATROULETTE registered by the Complainant combines the term ‘chat,’ which is one of the core purposes of Complainant’s website, and the word ‘roulette,’ which is associated with the thrill of unpredictability. This combination clearly represents the Complainant’s business purpose.

The Complainant further asserts that 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 “Chatroulette” business across the Internet and world, 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.

The Complainant contends that the disputed domain name is identical to the Complainant’s trademark CHATROULETTE, since they coincide in the distinctive and dominant part of the disputed domain name. The Respondent’s addition of the generic term “boy” and the generic Top-Level Domain (“gTLD”) “.com” do nothing to distinguish the disputed domain name from the Complainant’s trademarks.

The Complainant further claims that he has not licensed nor otherwise permitted the Respondent to use its trademark CHATROULETTE or to apply for any domain name incorporating its registered trademark. The Respondent is not sponsored by or affiliated with the Complainant in any way.

The Complainant also asserts that the Respondent does not have any rights or legitimate interests in the disputed domain name, since the Respondent does not associate the disputed domain name with a good faith offering of goods and services and has not been commonly known by the name “Chatroulette” at any relevant time. Furthermore, the Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial fair use of the disputed domain name. On the contrary, the Respondent offers and attempts to sell video and online chatting products, which directly compete with the Complainant’s own offerings.

The Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use. The disputed domain name inevitably causes confusion amongst Internet users and disruption of the Complainant’s legitimate business – particularly since the Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. Presumably, the Respondent receives pay-per-click fees from the linked websites that are listed at the disputed domain name’s website.

Also, the Respondent uses a privacy protection service. Indeed, the WhoIs information identifies the Registrant as “Registration Private, Domains By Proxy, LLC,” which does not resemble the disputed domain name in any manner.

The Respondent did not respond to the cease and desist letters sent by the Complainant in order to reach an amicable agreement with the Respondent.

The Respondent registered the disputed domain name on November 28, 2016, which is significantly after the Complainant filed for registration of its CHATROULETTE trademarks, and also significantly after the Complainant’s first use in commerce of the CHATROULETTE trademark in 2009. Thus, it is likely 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.

Finally, the Respondent is currently offering to sell the disputed domain name, which constitutes bad faith as long as the Respondent has demonstrated an intent to sell, rent, or otherwise transfer the disputed domain name for valuable consideration in excess of his out-of-pocket expenses.

In view of the above, the Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a 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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has a clearly established right in the trademark CHATROULETTE, including several trademark registrations in different jurisdictions since, at least, 2011. The Complainant’s trademark is a coined term comprising two words, “chat” and “roulette” that would not readily be associated with each other and is accordingly distinctive. The disputed domain name wholly includes the Complainant’s trademark, the addition of the term “boy” and the gTLD “.com” does not avoid a finding of confusing similarity. It is recognizable within the disputed domain name notwithstanding the insertion of both elements, that do not serve to prevent the disputed domain name from being confusingly similar to the Complainant’s trademark, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

As explained at section 1.7 of the WIPO Overview 3.0: “while each case is judged on its own merits, in cases 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”. Section 1.8 of the WIPO Overview 3.0 also comments that: “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

The Panel therefore finds that the disputed domain name is confusingly similar to the CHATROULETTE trademark in which the Complainant has rights.

The first requirement of paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

The Complainant has not licensed or otherwise authorized the Respondent to use the disputed domain name, which fully incorporates the Complainant’s registered trademark CHATROULETTE. The Respondent is not commonly known by the name “Chatroulette” and there is no evidence of any other basis upon which the Respondent might claim rights or legitimate interests in the disputed domain name.

It is the Panel’s view that the Respondent certainly registered the disputed domain name in order to divert Internet users to the Respondent’s pay-per-click parking page. Under the present circumstances, this does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of the Policy. Indeed, prior panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.

In view of the foregoing, the Panel accepts and adopts the Complainant’s submission that it is not possible to conceive circumstances in which the Respondent could legitimately use the disputed domain name. The Complainant has established a prima facie case which the Respondent has not sought to rebut and accordingly the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, see WIPO Overview 3.0, section 2.1.

Furthermore, the Respondent has not provided any explanation for the use of the Complainant’s trademark in the disputed domain name and the Panel cannot find anything in its favor, therefore the Panel concludes that the Respondent has registered and used the disputed domain name trying to capitalize on the Complainant’s goodwill in the mark in order to mislead Internet users.

The second requirement of paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

Taking into consideration the circumstances at hand, it is likely that the Respondent knew of the existence of the Complainant’s trademark when it registered the disputed domain name, as it comprises of the Complainant’s trademark in full. In addition to this, the Respondent has registered the disputed domain name under a privacy service and refused to participate in the present proceeding in order to put forward relevant arguments in its support. Furthermore, the Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business, presumably receiving pay-per-click fees. It is the Panel’s view that the Respondent’s registration and use of the disputed domain name constitutes a disruption of the Complainant’s business.

Accordingly, the Panel concludes that the provisions of paragraph 4(b)(iv) of the Policy which provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” applies in the present case and is evidence of registration and use in bad faith. Internet users searching for the Complainant would access the website corresponding to the disputed domain name believing it belongs or is somehow associated with or endorsed by the Complainant.

The Panel cannot find any justification for the registration and use of the disputed domain name in such circumstances except to find that the Respondent registered and is using the disputed domain name for the purpose of selling the disputed domain name for valuable consideration in excess of the Respondent’s documented out-of-pocket costs and/or to disrupt the Complainant’s business.

The Panel has also viewed the Respondent’s use of a privacy or proxy service as an indication of bad faith.

Finally, the Respondent is currently offering to sell the disputed domain name, which constitutes bad faith under Section 4(b)(i) because the Respondent has demonstrated an intent to sell, rent, or otherwise transfer the disputed domain name for valuable consideration in excess of his out-of-pocket expenses.

Having examined all the circumstances of the case the Panel finds that the Respondent registered and is using the disputed domain name in bad faith as per paragraph 4(b)(iv) of the Policy. See section 3.1.4 of the WIPO Overview 3.0. Based on the evidence, the Panel has no hesitation in finding so.

The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.

The third requirement of paragraph 4(a) of the Policy is therefore 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 name <boychatroulette.com> be transferred to the Complainant.

Alejandro Touriño
Sole Panelist
Date: December 26, 2018