WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. S Jon Grant

Case No. D2018-2550

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 S Jon Grant of Las Vegas, Arizona, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <wwwchatroulette.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2018. On November 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 2018, 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 November 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2018.

The Center appointed Jane Seager as the sole panelist in this matter on December 12, 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, Andrey Ternovskiy, a Russian individual based in Malta, is the developer and owner of the site “www.chatroulette.com” commonly known as “Chatroulette”. Users of the Complainant’s website are paired with random people from around the world for real-time, webcam-based conversations. The Complainant registered the domain name <chatroulette.com> on November 16, 2009, and launched its website shortly thereafter. According to the Complainant, the Complainant’s website rapidly gained widespread popularity. The Complainant states that by January 2010 the Complainant’s website was receiving some 50,000 visitors per day, rising to upwards of 130,000 visitors per day in February 2010, and in the period between March and August 2018 the Complainant received an average of 3.39 million monthly visitors.

In connection with its Chatroulette website, the Complainant owns, inter alia, the following trademarks:

- United States Trademark CHATROULETTE, Registration No. 4445843, registered on December 10, 2013; and

- European Union Trade Mark CHATROULETTE, Registration No. 008944076, registered on December 4, 2012.

The disputed domain name was registered on January 18, 2010. The disputed domain name resolves to a website displaying pay-per-click links to various third-party websites including adult video-chat websites as well as search engines relating to video chat and web-conference services. The disputed domain name is also offered for sale via the domain name sales platform at “www.afternic.com” for USD 299.

On September 4, 2018, the Complainant sent a cease-and-desist letter to the Respondent, requesting transfer of the disputed domain name to the Complainant. The Complainant sent the Respondent a second notice on September 10, 2018. The Respondent did not reply to the Complainant’s cease-and-desist letter or subsequent notice.

5. Parties’ Contentions

A. Complainant

The Complainant claims to have rights in the CHATROULETTE trademark by virtue of its registration and use as outlined in the factual background section above. The Complainant states that the disputed domain name is confusingly similar to the Complainant’s trademark, noting that the prefix “www” does nothing to distinguish the disputed domain name from the Complainant’s trademark. The Complainant further submits that the applicable generic Top-Level Domain (“gTLD”), in this case “.com”, may be disregarded for the purposes of comparison under the first element of the Policy, as it is a “standard registration requirement”.

The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. It states that the Respondent is not affiliated with the Complainant in any way. The Complainant states that it has not granted any permission to the Respondent to make use of its trademark in any manner, including in domain names. The Complainant states that the Respondent is not commonly known by the disputed domain name, noting that the Respondent’s name “S Jon Grant” bears no resemblance to the disputed domain name. The Complainant further argues that the Respondent’s use of the disputed domain name in connection with a website displaying pay-per-click links to various websites, including those that compete with the Complainant, does not amount to a bona fide offering of goods or services, but rather is an attempt to capitalize on the reputation and goodwill associated with the Complainant’s trademark. The Complainant also argues that the listing of the disputed domain name for sale for an amount that exceeds the Respondent’s out-of-pocket costs associated with the registration of the disputed domain name serves as further evidence of the Respondent’s lack of rights or legitimate interests.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. Notably, in January 2010 at the time that the Respondent registered the disputed domain name, the Complainant’s website had already experienced significant growth, with some 50,000 users per day. The Complainant asserts that by registering the disputed domain name, the Respondent unfairly sought to capitalize on the Complainant’s nascent trademark rights. In support of this argument, the Complainant cites WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.1, in particular (i) the Respondent’s likely knowledge of the Complainant’s rights, (ii) the distinctiveness of the Complainant’s trademark, (iii) the pointing of the disputed domain name to trademark‑abusive content and (iv) the Respondent’s failure to present a credible evidence-backed rationale for registering the disputed domain name. Regarding the use of the disputed domain name, the Complainant states that the Respondent’s conduct amounts to bad faith use pursuant to paragraphs 4(b)(i), 4(b)(ii) and 4(b)(iv) of the Policy, citing the Respondent’s offering of the disputed domain name for sale at a cost exceeding the Respondent’s out­of­pocket expenses, the Respondent’s pattern of abusive domain name registration, and the Respondent’s use of the disputed domain name in connection with a website displaying pay-per-click links for the Respondent’s pecuniary gain. The Complainant asserts that the Respondent’s failure to reply to the Complainant’s cease-and-desist communications is further evidence of the Respondent’s bad faith.

The Complainant requests transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to succeed, the Complainant must demonstrate, on the balance of probabilities, that the elements listed in paragraph 4(a) of the Policy have been satisfied, specifically:

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

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

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

Paragraph 15(a) of the Rules provides that the Panel shall decide a 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. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.

In addition, paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel notes that the Respondent has failed to respond to the Complaint. The Respondent’s failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules, see WIPO Overview 3.0, section 4.3.

Taking the aforementioned provisions into consideration, the Panel finds as follows:

A. Identical or Confusingly Similar

Under paragraph 4(a) of the Policy, the Complainant must first establish that it has rights in a trademark. The Panel finds that the Complainant has established rights in the CHATROULETTE trademark in light of its registration and use, details of which are set out in section 4 above.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s CHATROULETTE trademark in its entirety, altered only by the addition of “www” as a prefix. The Panel finds that the addition of “www”, an abbreviation for “World Wide Web”, does not prevent a finding of confusing similarity with the Complainant’s trademark which is clearly recognizable in the disputed domain name. See WIPO Overview 3.0, section 1.8. The Panel accepts the Complainant’s submission that the applicable gTLD, in this case “.com” may be disregarded under the first element confusing similarity test, as it viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.

In light of the foregoing, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:

(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark 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 trademark or service mark at issue.

Based on the statements and evidence put forward by the Complainant, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Panel finds that the Respondent is not making a bona fide use of the disputed domain name within the meaning of paragraph 4(c)(i) of the Policy. Previous UDRP panels have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of a complainant’s trademark or otherwise mislead consumers. See WIPO Overview 3.0, section 2.9. In the present case, the very nature of the domain name indicates that the Respondent intends to capture Internet traffic meant for the Complainant. Internet users who mistakenly type the disputed domain name <wwwchatroulette.com> into a web browser omitting the dot between “www” and “chatroulette.com” will be led to the Respondent’s website. The presence of pay­per­click links pointing to competitors of the Complainant, as well as to websites displaying adult content, from which the Respondent (or a third party) presumably derives revenue, does not confer any rights or legitimate interests on the Respondent. Not only does the Respondent seek to capitalize on the goodwill associated with the Complainant’s trademark as a result of the diversion of Internet traffic – the Respondent also intends to profit from the sale of the disputed domain name comprising the Complainant’s trademark by offering the disputed domain name for sale at “www.afternic.com” for USD 299.

The Respondent is not commonly known by the disputed domain name, nor can the Respondent be said to be making any legitimate noncommercial or fair use of the disputed domain name. As such, none of the provisions of paragraph 4(c) of the Policy appear to apply.

In the absence of any reply to the Complainant’s contentions above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel notes that the registration of the disputed domain name pre-dates the accrual of the Complainant’s registered trademark rights. Subject to limited circumstances, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. As an exception, 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, UDRP panels have been prepared to find that the respondent has acted in bad faith. See WIPO Overview 3.0, section 3.8.

In light of the circumstances immediately prior to the registration date of the disputed domain name, it can be inferred that the Respondent had the Complainant in mind when registering the disputed domain name. As mentioned above, in January 2010, when the disputed domain name was registered, the Complainant’s website was already experiencing a relatively high volume of Internet traffic, with some 50,000 daily visitors. While the Complainant’s CHATROULETTE trademark is composed of two dictionary words, namely “chat” and “roulette”, the Panel does not consider that these two terms would ordinarily be associated with one another – rather, the combination of these words is, to the Panel’s knowledge, exclusively associated with the Complainant and its website. On this basis, the Panel finds it more likely than not that the Respondent had knowledge of the Complainant, and its website, and registered the disputed domain name in order to capture Internet traffic meant for the Complainant. In support of this finding, the Panel notes that the disputed domain name constitutes a typical example of typosquatting, i.e., the omission of a dot between “www” and the second level portion of the domain name, the inclusion of which would otherwise lead Internet users to the Complainant’s website. In light of the foregoing, the Panel finds that the Respondent registered the disputed domain name in bad faith.

The Panel further finds that the Respondent is using the disputed domain name in bad faith. The Panel notes that the disputed domain name is listed for sale at “www.afternic.com” for USD 299. The website at the disputed domain name is essentially undeveloped, other than displaying sponsored pay-per-click links. Based on the available record the Panel finds that such an amount exceeds the Respondent’s demonstrable out-of-pocket costs associated with the registration of the disputed domain name, and finds that the Respondent most likely registered the disputed domain name for the purpose of selling it at a profit to the Complainant or a competitor of the Complainant. See paragraph 4(b)(i) of the Policy.

The Panel also finds that the use of the disputed domain name, which wholly incorporates the Complainant’s trademark, in connection with a website displaying pay-per-click links that divert Internet users to competitors of the Complainant, as well as to adult-entertainment websites, amounts to use of the disputed domain name in bad faith. The Respondent, or a third party, is deriving financial gain as a result of misdirection of Internet users seeking the Complainant’s Chatroulette website. See paragraph 4(b)(iv) of the Policy.

Finally, the Panel notes that this is not the first instance that the Respondent has been named as a respondent in a UDRP Complaint brought by the Complainant. See Andrey Ternovskiy dba Chatroulette v. S Jon Grant, WIPO Case No. D2018-1110 (regarding the domain name <livechatroulette.net> registered on February 13, 2014). As such, the Panel considers that the Respondent appears to be engaged in a pattern of abusive domain name registration targeting the Complainant’s trademark. See WIPO Overview 3.0, section 3.1.2.

For reasons set out above, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <wwwchatroulette.com> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: December 26, 2018