WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC / C. Bergenhenegouwen

Case No. D2018-2552

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”) / C. Bergenhenegouwen of the Hague, Netherlands.

2. The Domain Names and Registrar

The disputed domain names <adultschatroulette.com> and <sex-chatroulette.com> are 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 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 names. On November 8, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 9, 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 12, 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 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2018.

The Center appointed Jane Seager as the sole panelist in this matter on December 24, 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 names were both registered on June 9, 2011. The disputed domain names resolve to websites lacking any content, other than the message “This domain is currently not approved for CashParking.”

On September 25, 2018, the Complainant sent a cease-and-desist letter to the privacy service through which the disputed domain names had been registered, requesting transfer of the disputed domain names to the Complainant. The Respondent did not reply to the Complainant’s cease-and-desist letter.

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 names are confusingly similar to the Complainant’s trademark, noting that the addition of the terms “sex-” and “adults” does not negate the confusing similarity between the disputed domain names and the Complainant’s trademark. The Complainant further submits that the addition of a hyphen in the disputed domain name <sex-chatroulette.com> does nothing to distinguish the disputed domain name from the Complainant’s trademark. The Complainant submits that the applicable Top-Level Domain (“TLD”), 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 names. 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 names, noting that the name of the underlying registrant “C. Bergenhenegouwen” bears no resemblance to the disputed domain names. The Complainant submits that the disputed domain names resolve to websites that lack content. As such, the Complainant asserts that the Respondent has not attempted to make legitimate use of the disputed domain names.

The Complainant submits that the disputed domain names were registered and are being used in bad faith. The Complainant states that its CHATROULETTE trademark is known internationally, with registrations in numerous countries. The Complainant notes that the disputed domain names were registered on June 9, 2011, subsequent to the Complainant’s registration of its domain name <chatroulette.com> on November 16, 2009, and the launch of its Chatroulette website shortly thereafter. The Complainant states that the disputed domain names are passively held in bad faith, citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Complainant states that by registering two domain names that both infringe upon the Complainant’s CHATROULETTE trademark, the Respondent has engaged in a pattern of cybersquatting. The Complainant further states that the Respondent’s use of a privacy service to hide its identity supports an inference of bad faith.

The Complainant requests transfer of the disputed domain names.

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 names are 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

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 names are confusingly similar to the Complainant’s trademark. The disputed domain names incorporate the Complainant’s CHATROULETTE trademark in its entirety, altered only by the addition of the terms “adults” and “sex-” (with a hyphen) as prefixes. The Panel finds that such additions do not prevent a finding of confusing similarity with the Complainant’s trademark which is clearly recognizable in the disputed domain names. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The Panel accepts the Complainant’s submission that the applicable TLD, in this case “.com”, may be disregarded under the first element confusing similarity test, as it is 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

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. See WIPO Overview 3.0, section 2.1.

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.

The Panel finds that the Respondent is not making bona fide use of the disputed domain names within the meaning of paragraph 4(c)(i) of the Policy. The disputed domain names resolve to websites that lack content other than the message “This domain is currently not approved for CashParking”. The Respondent has not come forward with any evidence of preparations to use the disputed domain names, and there is no other apparent use being made of the disputed domain names that would give rise to rights or legitimate interests under paragraph 4(c)(i) of the Policy.

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

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 names. As such, the burden of production shifts to the Respondent. The Respondent has not come forward with any statements or evidence to rebut the Complainant’s prima facie case.

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 names, 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 names 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, UDRP 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 names, it can be inferred that the Respondent had the Complainant in mind when registering the disputed domain names. As mentioned above, shortly after its launch the Complainant’s website was already experiencing a relatively high volume of Internet traffic, with upwards of 130,000 visitors per day in February 2010. While the Complainant’s CHATROULETTE trademark is composed of two dictionary words, namely “chat” and “roulette”, the combination of these words does not form any descriptive phrase and the words are not readily associated with one another. As such, the Complainant’s trademark is a coined word that 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 names in order to capture Internet traffic meant for the Complainant. In support of this finding, the message “This domain is currently not approved for CashParking” displayed on the websites at the disputed domain names supports the inference that the Respondent registered the disputed domain names for the purpose of generating pay-per-click revenue from use of the disputed domain names in connection with parking pages displaying sponsored links. In light of the foregoing, the Panel finds that the Respondent registered the disputed domain names in bad faith.

The Panel further finds that the Respondent’s passive holding of the disputed domain names amounts to use in bad faith. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. See WIPO Overview 3.0, section 3.3. See also Telstra Corporation Limited v. Nuclear Marshmallows, supra. The Panel finds that the Complainant’s trademark is distinctive and enjoys a widespread notoriety online. The Panel finds that the Respondent’s use of a privacy service to hide its identity, its unauthorized registration of two domain names incorporating the Complainant’s trademark, and its failure to reply to the Complainant’s cease and desist letter support an inference of bad faith. The Panel further finds no evidence of any good faith use to which the disputed domain names could be put that would not have the effect of taking unfair commercial advantage of the Complainant’s trademark or tarnishing the Complainant’s trademark should the disputed domain names be put to use in connection with adult entertainment websites.

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 names <adultschatroulette.com> and <sex-chatroulette.com> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: January 4, 2019