WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC / I S, ICS INC / VMI INC / Domain Admin, Hush Whois Protection Ltd.

Case No. D2019-0642

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“USA”) / I S, ICS INC of Cayman Islands / VMI INC of Cayman Islands, and of USA / Domain Admin, Hush Whois Protection Ltd., Seychelles.

2. The Domain Names and Registrar

The disputed domain names <chatlorette.com>, <chatroulettee.com>, <chattrolet.com>, <chattroullette.com>, and <chattroultte.com> are registered with GoDaddy.com, LLC; the disputed domain name <chatroulate.com> (together the “Domain Names”) is registered with Key-Systems GmbH (collectively the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2019. On March 22, 2019, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Domain Name <chatroulettee.com>. On March 25, 2019, GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 28, 2019 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 April 2, 2019, in which it added several disputed domain names. On April 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 3 and 4, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the amended Complaint. The Center sent an email communication to the Complainant on April 8, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the amended Complaint. The Complainant filed a second amended Complaint on April 12, 2019.

The Center verified that the Complaint together with the amended Complaints 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 April 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2019.

The Center appointed Karen Fong as the sole panelist in this matter on May 31, 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

The Complainant is the owner and creator of an on-line chat website that pairs random people from around the world together for real-time, webcam-based conversations under the name “Chatroulette”. Mr. Ternovskiy created the Chatroulette service and website “www.chatroulette.com” (“the Complainant’s Website”) in 2009 when he was just a 17-year-old high school student in Moscow, Russian Federation. The “Chatroulette” name selected by Mr. Ternovskiy for this service was inspired by the film “The Deer Hunter” which features a scene of American soldiers in Viet Nam playing a game of Russian roulette. It is a combination of 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 which the Complainant considered captured and encapsulated the ideas, goals, and mission of his business.

Chatroulette grew in popularity and notoriety within a very short time and the Complainant’s Website attracted a great deal of attention in the press and media. Very shortly after its launch, the Complainant’s Website started to receive 500 visitors per day. Within a month, in January 2010, this figure increased to 50,000 visitors per day (approximately 1.5 million users per month). This represented a 10,000% increase in traffic in over just one month. By February 2010, that traffic had increased to approximately to 130,000 visitors per day (3.9 million monthly visitors), which is a 26,000% increase in traffic over the December 2009 figures. The Complainant and Chatroulette has been featured in numerous publications and media outlets including The New York Times, The New Yorker, and New York magazine, as well as on television shows including Good Morning America and The Daily Show with Jon Stewart. The Complainant’s Website continues to attract visitors and averaged over 3.39 million monthly visitors in the period March 2018 - August 2018.

The Complainant owns CHATROULETTE trade mark registrations in Russian Federation, European Union, Germany and the USA (the “Trade Mark”). The earliest trade mark filing date of the trade marks submitted in evidence is March 10, 2010 (European Union trademark registration No. 008944076, filed on March 10, 2010 and registered on April 12, 2012). The Complainant also owns Russian trademark registration No. 429957, filed on March 11, 2010 and registered on February 10, 2011).

The details of the Domain Names and the websites they are/were connected to (the “Websites”) are set out below:

5. Preliminary Procedural Issues - Consolidation of Proceedings

The Complainant has filed a single complaint in relation to six domain names against multiple registrants. The preliminary issue to be determined is whether the Complainant is entitled to bring a consolidated complaint against the Respondents, or whether it is necessary for the Complainant to bring individual complaints against the individual Respondents.

Paragraph 5(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, Paragraph 3(c) of the Rules, provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

In relation to the position of a complaint being filed against multiple respondents, Section 4.11.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that in such cases, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. UDRP panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).

The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 after reviewing the relevant UDRP decisions in relation to consolidation of multiple respondents took the view that the administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfil the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.

In the present case, the Complainant submits that the Domain Names are subject to common control for the following reasons:

(1) The Domain Names are all misspellings of the Trade Mark;
(2) The Domain Names are all listed for sale;
(3) Domain Name 1 which is currently registered in the name of the First Respondent, was registered to the Fourth Respondent on February 27, 2018. It was registered to VMI Domains on January 5, 2018;
(4) Domain Name 2 which is currently registered in the name of the First Respondent was registered in the name of the Fourth Respondent on March 10, 2018. It was registered to VMI Domains on January 13, 2018;
(5) Domain Name 3 which is currently registered in the name of the Second Respondent was registered to the Fourth Respondent on April 22, 2018. It was registered to VMI Domains on January 10, 2018;
(6) Domain Name 4 which is currently registered in the name of the First Respondent was registered in the name of the Fourth Respondent on April 23, 2018. It was registered to VMI Domains on March 2, 2018;
(7) Domain Name 5 which is currently registered in the name of the Third Respondent, was registered to the Fourth Respondent on the date of registration of the domain name;
(8) At the time of the filing of the Complaint, Domain Names 1, 2, 3, 4 and 6 were registered in the name of Domains By Proxy and Domain Name 5 was registered in the name of the Third Respondent;
(9) The contact email address for VMI Domains is also used as a contact email address for the First and Fourth Respondents;
(10) From the above VMI Domains, the First, Second and Fourth Respondents are the same or part of the same organisation. As such Domain Names 1, 2, 3, 4 and 6 are in common control. As for Domain Name 5, it has been under privacy registration after it was registered to the Fourth Respondent on the date of its registration which gives rise to the inference that it is also in common control of the Respondents.

The evidence submitted points to the fact that the Domain Names are subject of common control by the Respondent. The above pattern evidences common conduct based on the registration and use of the Domain Names and that such conduct interferes with the Trade Mark. Furthermore, the Complainant’s claims against the Domain Names involve common questions of law and fact.

The Respondents had the opportunity but did not respond substantively to the Complaint.

Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all the Parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainants pursuant to paragraph 10(e) of the Rules.

In light of the above, the Respondents may be referred to collectively as the Respondent hereafter.

6. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Names and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names.

B. Respondent

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

7. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:

(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) The Domain Names were registered and are being used in bad faith.

B. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has registered rights to the Trade Mark.

The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to the complainant’s trade mark. The trade mark would generally have to be recognizable within the domain name.

In this case the Domain Names consist of misspellings of the Trade Mark as follows:

1. Domain Name 1 <chattroullette.com>
Addition of the letter “t” to “chat” and addition of the letter “l” to “roulette”

2. Domain Name 2 <chattrolet.com>
Addition of the letter “t” to “chat” and subtraction of the letters “u” and “te” from “roulette”

3. Domain Name 3 <chatlorette.com>
Re-arranging of the letters “r”, “o” and “l” and subtraction of “u” from “roulette”.

4. Domain Name 4 <chattroultte.com>
Addition of the letter “t” to “chat” and subtraction of “e” from “roulette”

5. Domain Name 5 <chatroulate.com>
Substitution of “a” for “e” in and subtraction of “t” from “roulette”.

6. Domain Name 6 <chatroulettee.com>
The addition of “e” to “roulette”.

It is well established that domain names which consist of a common, obvious, or intentional misspelling of a trade mark is considered to be confusingly similar to the relevant mark for the purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark (See section 1.9.1 of WIPO Overview 3.0). This is a typical typosquatting case as the six Domain Names are clearly misspellings of the Trade Mark.

For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) irrespective of the particular TLD and the ordinary meaning ascribed to a particular TLD. It is viewed as a standard registration requirement.

The Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:

(i) before any notice to it 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 has been commonly known by the domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant contends that the Respondent is not referred to or commonly known by the Domain Names or the Trade Mark. It has no legal relationship with the Complainant. The Websites do not show any bona fide offering of goods or services. The Respondent is also not making any legitimate non commercial or fair use of the Domain Names. The Complainant has never licensed or otherwise permitted the Respondent to use the Trade Mark or apply or use any domain names that incorporate the Trade Mark or trade marks which are confusingly similar. The Websites are pay-per-click sites which redirect Internet users to third party commercial websites which are competitors of the Complainant as well as offers the Domain Names for sale, none of which confer any rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.

D. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.

It is noted that Domain Name 1 was registered a few days before the earliest filing date of the Trade Mark. The rest of the five Domain Names postdate the date of filing of the Complainant’s earliest Trade Mark. Where a Respondent registers a domain name before the complainant’s trade mark rights accrue, panels will not normally find bad faith on the part of the respondent. However section 3.8.2 of WIPO Overview 3.0 provides that as an exception to the above general proposition, 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) trade mark rights, panels have been prepared to find that the respondent has acted in bad faith. Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trade mark application.

In this case, when the Complainant created the Complainant’s Website as a 17 year old in December 2009, it attracted an unusual amount of attention because of its rapid and exponential rise in attracting website visitors so that within three months of launch, in February 2010, the number of website visitors to the site increased by 26,000% and attracted 3.9 million visitors per month. So that by the time the Respondent registered Domain Name 1, it would have more than likely have heard of the Complainant’s Website and the Chatroulette name especially since Domain Name 1 and indeed all the other Domain Names are misspellings of the Trade Mark. This is a case which falls within this category of Domain Names registered in anticipation of the establishment of the Respondent’s trade mark rights. It is inconceivable that the Domain Names were selected by the Respondent without the Complainant in mind. As outlined under the second element above, the clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). The Domain Names fall into the category stated above and the Panel finds that registration is in bad faith.

Further the use of the Domain Names is also in bad faith. Firstly, there is a presumption of bad faith in the registration and use of a domain name in typosquatting cases. As stated in TPI Holdings, Inc. v. LaPorte Holdings, WIPO Case No. D2006-0235, typosquatting - intentionally adding or deleting a letter or two, or transposing letters in, a valid mark of another in one’s domain name - is presumptive evidence of bad faith in registration and use of a disputed domain name.

The fact that the Domain Names are registered in the names of different registrants subject to common control and the fact that the Domain Names were transferred within these different named respondents as well as privacy protection companies evidences a lack of transparency which is typical of a cyber squatter.

The Respondent’s use of the Websites also support a finding that the Domain Names are being used in bad faith. The Websites are pay-per-click sites which have been set up to the commercial benefit to the Respondent. It is highly likely that web users when typing the Domain Names into their browser or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent.

The Domain Names are likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the misspellings of the Trade Mark as the most prominent element of the Domain Names, with a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Websites are authorised or endorsed by the Complainant.

In addition, the current use of the Websites includes the purpose of selling the Domain Names which supports the bad faith use under this limb. Considering the circumstances, the Panel considers that the Domain Names are also being used in bad faith.

Thus the Panel concludes that the Respondent’s registration and use of the Domain Names are in bad faith.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <chatlorette.com>, <chatroulate.com>, <chatroulettee.com>, <chattrolet.com>, <chattroullette.com>, and <chattroultte.com> be transferred to the Complainant.

Karen Fong
Sole Panelist
Date: June 21, 2019