WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. PrivacyDotLink Customer 2682907 / Evelyn Vict, DBF Group

Case No. DME2018-0001

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 PrivacyDotLink Customer 2682907 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("United Kingdom") / Evelyn Vict, DBF Group of Watford, Hertfordshire, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <chatroulette.me> is registered with Uniregistrar Corp (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 9, 2018. On January 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 10, 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 January 11, 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 January 16, 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 January 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 21, 2018.

The Center appointed James Bridgeman as the sole panelist in this matter on February 27, 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

On November 16, 2009 the Complainant registered the domain name <chatroulette.com> and immediately launched a commercial online chat website named Chatroulette, which the Complainant has since then funded by advertising income. Visitors to the website are randomly paired together with other visitors from around the world and may choose to engage in real-time, webcam-based conversations.

The Complainant's website located at "www.chatroulette.com" quickly proved to be popular. One month after it was launched it was receiving in excess of 100,000 visitors a day. The website has remained active since it was launched and has evolved into a substantial business. According to SimilarWeb statistics, the Complainant's website receives over 4 million visitors each month and in December 2017 received 4.79 million, earning a website popularity rank of 27,524.

Soon after its launch the Complainant and its website received a substantial amount of media attention, including articles published about the Complainant and its project online in The New York Times on February 13, 2010 and March 12, 2010, the New Yorker on May 17, 2010, and New York magazine on February 5, 2010.

As the traffic to its website increased, the Complainant registered a portfolio of trademark registrations for the CHATROULETTE mark for use on goods and services associated with its website including:

The disputed domain name was registered on July 19, 2014 and resolves to a website offering services directly competing with the Complainant's business.

In the absence of a Response or any other communication from the Respondent, there is no information available about the Respondent except for that provided in the Complaint, the Registrar's WhoIs, and the identity of the Registrant which was disclosed by the Registrar at the request of the Center following the initiation of this Complaint.

5. Parties' Contentions

A. Complainant

The Complainant relies on its claimed rights in its above-mentioned registered trademarks and the goodwill that it has acquired in the CHATROULETTE mark through the growing recognition and popularity of its website since it was established in 2009.

The Complainant states that by January 2010, one month after its launch, its website "www.chatroulette.com" had 50,000 visitors per day (approximately 1.5 million users per month). The following month the traffic had jumped to approximately 130,000 visitors per day (3.9 million monthly visits). As a result of its exponential growth in visitor numbers, the website was featured in and highlighted by 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 media's attention was drawn to the website because of its exponential growth in popularity and because the Complainant was only 17 years old, living in Moscow when it launched its website with no initial investors.

By December 2017, the Complainant's website was receiving over 270,000 unique monthly visitors, earning a global popularity rank of 18,214.

The Complainant submits that the disputed domain name is both identical and confusingly similar to its CHATROULETTE trademark because it encompasses and captures the trademark in its entirety. The Complainant cites for example the decision in Uniroyal EngineeredProducts, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503 (which found the domain name <nauga.net> to be confusingly similar to the complainant's NAUGA trademark).

Additionally, the Complainant refers to evidence that it has adduced in an annex to the Complaint that the Respondent is using the disputed domain name to redirect Internet users to its own, directly competing web-based chat service hosted at "www.chatspin.com", which even goes so far as to directly reference the Complainant. The content on the Respondent's website states: "Welcome to ChatSpin, a random video chat app where you can instantly meet strangers from around the world. As the fastest growing app like Chatroulette…". The Complainant submits that this suggests that such use of its name and mark indicates that the Respondent intended the disputed domain name to create consumer confusion. It further argues that although the content of a website is usually disregarded when assessing confusing similarity under the Policy, "in some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name", as stated in section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0).

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant submits that it has the exclusive right to use the CHATROULETTE trademark, which is an original term the Complainant coined for its innovative website and business. It states that it chose the name because it encapsulates the ideas, goals, and mission of its business. 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, the essence of the service provided on its website is captured in this distinctive name.

The Complainant submits that the Respondent is not sponsored by or affiliated with Complainant in any way. The Complainant avers that it has not given the Respondent permission to use its CHATROULETTE trademark in any manner by incorporating it in a domain name or otherwise. The Complainant also avers that it has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant's trademark and cites for authority the decision in SportswearCompany S.P.A. v. Tang Hong, WIPO Case No. D2014-1875 that "[i]n the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed".

The Complainant furthermore asserts that the Respondent is not commonly known by the disputed domain name, which the Complainant argues also evinces a lack of rights or legitimate interests.

Additionally the Complainant submits that in the circumstances of its prior rights in the name and mark CHATROULETTE for its Internet business, the Respondent's unauthorised competing use of the disputed domain name to redirect Internet users to its own web-based chat service at "www.chatspin.com" cannot constitute a bona fide offering of goods or services as allowed under Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy paragraph 4(c)(iii).

The Complainant submits that the disputed domain name was registered and is being used in bad faith, asserting that the Respondent assumed control of the disputed domain name on or about May 30, 2017, which was subsequent to the date on which the Complainant filed its above-listed applications for registration of the CHATROULETTE mark and was also significantly subsequent to its registration of the <chatroulette.com> domain name on November 16, 2009 and its first use of the <chatroulette.com> domain name and CHATROULETTE trademark in commerce soon thereafter in 2009. The Complainant argues that by so registering a domain name that contains the CHATROULETTE trademark in its entirety, the registrant demonstrated a knowledge of and familiarity with the Complainant's brand and business at the time of registration of the disputed domain name.

The Complainant further submits that by using the disputed domain name to forward Internet users to the Respondent's own web-based chat service, it is counter-intuitive to believe that the Respondent registered the domain name without specifically targeting the Complainant. It argues that in light of the facts set forth within the Complaint, it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant's brands at the time the disputed domain name was registered. In this regard the Complainant cites the decisions of the panel in Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Complainant furthermore submits that because the disputed domain name consists solely of, and is identical to, its CHATROULETTE trademark "it defies common sense to believe that Respondent coincidentally selected th[e] precise domain nam[e] without any knowledge of Complainant and [its] trademarks", as held by the panel in Asian World of Martial ArtsInc. v. Texas International Property Associates, WIPO Case No. D2007-1415.

The Complainant further argues that the Respondent's use of the disputed domain name to resolve to its competing website constitutes a disruption of Complainant's business and qualifies as bad faith registration and use under Policy paragraphs 4(b)(iii) and (iv). The Complainant refers to the statement in WIPO Overview 3.0section 3.1.4 that "[p]anels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent's commercial benefit, even if unsuccessful, (iii) the lack of a respondent's own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant's (or a competitor's) website, and (vi) absence of any conceivable good faith use" and submits that all those criteria apply in the present case.

The Complainant adds that at the time of initial filing of the Complaint, the Respondent had employed a privacy service to hide its identity and that the Respondent has ignored Complainant's attempts to resolve this dispute outside of this administrative proceeding by failure to respond to a cease-and-desist letter sent to the Respondent's privacy shield provider on December 27, 2017, which are further indicators that past panels have taken to be evidence of bad faith registration and use.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to establish that:

(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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided convincing evidence of its rights in the CHATROULETTE trademark acquired through its ownership of the above trademark registrations and the goodwill acquired by the use of its CHATROULETTE mark in its online chat website business.

The disputed domain name consists of the word "chatroulette" and the country code (ccTLD) "<.me>" extension. For the purposes of comparison of the disputed domain name and the Complainant's mark the ccTLD "<.me>" extension may be viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.

This Panel finds that the disputed domain name is identical to the CHATROULETTE mark in which the Complainant has rights.

The Complainant has therefore satisfied the first element of the test in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name is identical to its CHATROULETTE mark and name of its website. The Complainant has no association with the Respondent. The Complainant has not granted the Respondent any rights or license to use its trademark in any way whether as a domain name or otherwise. Furthermore, the evidence shows the Respondent is using the Complainant's trademark as a domain name to take predatory advantage of the reputation of the Complainant's mark and the name of its website to redirect traffic to the Respondent's competing web chat business.

In such circumstances, this Panel finds that the Respondent has not acquired any rights or legitimate interests in the disputed domain name by such use.

It is well established that in proceeding under the Policy, where a complainant has made out such a prima facie case that a respondent has no rights or legitimate interests in a domain name, the burden of production shifts to the respondent.

The Respondent has failed to deliver any Response and so has failed to discharge the burden of production. The Complainant has therefore succeeded in the second element of the test in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Because the identity of the registrant of the disputed domain name had been concealed by a privacy shield, it is not possible to know in the present case whether the Respondent initially registered the disputed domain name or subsequently acquired it. The Complainant asserts, but does not explain the source of its information that the Respondent assumed control of the disputed domain name on or about May 30, 2017. The WhoIs details indicate that the registration was renewed on March 28, 2017 and it would appear that there was a change of privacy shield provider at that point.

Regardless of when the Respondent took control of the disputed domain name, the record shows that it was registered on July 19, 2014. The evidence adduced with the Complaint shows that the Complainant, its trademark rights, its <chatroulette.com> domain name and associated website were well established at that point in time. The Complainant's CHATROULETTE name and mark are very distinctive and on the balance of probabilities it is unlikely that the registrant of the disputed domain name in 2014 was unaware of the Complainant, its rights, and its business. On the contrary, on the balance of probabilities it is far more likely that the registrant was aware of the Complainant's successful website and that the disputed domain name was intentionally chosen and registered to take predatory advantage of the rights and the reputation of the CHATROULETTE trademark.

The Complainant has adduced clear evidence that the Respondent is causing, permitting, or allowing the disputed domain name in bad faith to redirect Internet users to a directly-competing web-based chat service hosted at "www.chatspin.com". The competing website goes so far as to directly reference the Complainant's web based service stating: "Welcome to ChatSpin, a random video chat app where you can instantly meet strangers from around the world. As the fastest growing app like Chatroulette…"

On the balance of probabilities this Panel finds that the disputed domain name was registered in bad faith to take predatory advantage of the Complainant's mark and is being used in bad faith to redirect Internet traffic intended for the Complainant's website primarily for the purpose of disrupting the business of a competitor as contemplated by the example given in Policy paragraph 4(b)(iii).

The Complainant has therefore also satisfied the third and final element of the test in paragraph 4(a)(iii) of the Policy and is entitled to succeed in its Complaint.

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 <chatroulette.me> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Date: March 5, 2018