The Complainant is Andrey Ternovskiy d/b/a Chatroulette of Moscow, Russian Federation, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is WaveSide Entertainment LLC of Melbourne, Florida, United States of America ("United States"), self-represented. 2. The Domain Names and Registrars
The disputed domain names , , , and are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 10, 2017. On February 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 14, 2017, 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 February 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2017. The Response was filed with the Center on February 25, 2017.
The Center appointed Steven A. Maier as the sole panelist in this matter on March 13, 2017. 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 an individual based in the Russian Federation. He is the developer and owner of an online web chat service named "Chatroulette" that randomly pairs Internet users from around the world for real-time, webcam-based conversations.
The Complainant is the owner of various registrations for the trademark CHATROULETTE including, for example, the following:
- United States trademark number 4445843 for CHATROULETTE registered on December 10, 2013 in Classes 38 and 45
- European Union Trade Mark number 008944076 for CHATROULETTE registered on December 4, 2012 in Classes 35, 38 and 42
The disputed domain names were registered on the following dates:
on August 21, 2014
on August 20, 2014
on July 31, 2014
on August 20, 2014
on September 5, 2014
on August 20, 2014
The Complainant has submitted evidence by way of screenshots that each of the disputed domain names has resolved to a website offering adult content in one of the six categories of adult entertainment suggested by the names. In particular, the websites allow the user to be connected with live webcam models who correspond to or perform in accordance with the categories referred to. 5. Parties' Contentions A. Complainant
The Complainant states that he founded his website in 2009, when he was 17 years old, with the unique objective of facilitating random video chatting. He registered the domain name in November 2009. He states that the "roulette" concept was connected with the thrill of unpredictability and that he coined a name that captured the idea and mission of his business. The Complainant states that the website quickly gained 500 visitors per day, which by January 2010 had increased to 50,000 per day or 1.5 million users per month. The Complainant submits that his website is one of the most popular in the world and exhibits press coverage about the site including articles from The New York Times and The New Yorker. The Complainant states that owing to the success of the site it has inevitably spawned numerous copycat sites and that it has suffered in particular from cybersquatters wishing to exploit its popularity.
The Complainant submits that the disputed domain names are identical or confusingly similar to a trademark or service mark in which he has rights. The Complainant contends that each of the disputed domain names captures in its entirety the Complainant's CHATROULETTE trademark and simply adds a generic term to that trademark. The Complainant submits that the addition of these generic terms is not sufficient to negate the confusing similarity of the disputed domain names to the Complainant's trademark and that, on the contrary, the Respondent adds to the confusion by using the disputed domain names to facilitate online video chat.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. He states that the Respondent is not affiliated with the Complainant in any way and that he has given the Respondent no permission to use his trademark CHATROULETTE in any manner. He submits that the Respondent is not commonly known by the disputed domain names and that the Respondent is neither using them in connection with a bona fide offering of goods or services nor making legitimate noncommercial or fair use of them. The Complainant refers to the screenshots of the Respondent's websites referred to above and states that the Respondent is using the disputed domain names to attempt to sell the products of the Complainant's competitors that directly compete with the Complainant's own offerings.
The Complainant submits that the disputed domain names have been registered and are being used in bad faith. The Complainant submits that its trademark CHATROULETTE was internationally known at the date of registration of each of the disputed domain names and that the Respondent knew or should have known of the Complainant's trademark. The Complainant states that whether or not "constructive notice" of the trademark can be imputed, this is a case which "hinges squarely on the probability that it was more likely than not that the respondent know of, and targeted, complainant's trademark."
The Complainant contends that the Respondent is disrupting the Complainant's business by using the disputed domain names, which are confusingly similar to the Complainant's trademark, in order to attract Internet users to websites that compete with the Complainant's business. He also argues that the number of disputed domain names registered by the Respondent is evidence of a pattern of cybersquatting. He states that the Respondent has ignored the Complainant's attempts to resolve the dispute and has failed to reply to a number of cease and desist letters, copies of which he exhibits.
The Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent states that it is in the business of creating websites for adult entertainment, including adult webcam modeling and adult sex chat, and has offered these services since 2011.
The Respondent states that while some of the disputed domain names contain the terms "chat" and/or "roulette", none of them are intended to be associated with the Complainant.
The Respondent contends that it had no knowledge of the Complainant's trademark at the date it registered the disputed domain names and had no reason to research this.
The Respondent disputes that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Respondent submits that each of the disputed domain names begins with a vital descriptive word such as "amateur", "college" or "mature", all of which are common in the adult webcam and video modeling industry. It states that the subsequent terms "chat" and "roulette" are two separate words which indicate how the customer can access each of the services in question and that there is no intention to reference the Complainant's CHATROULETTE mark.
The Respondent produces screenshots of its websites located at each of the disputed domain names in order to demonstrate that each of those websites does offer the services referred to. It states that the websites do not use the Complainant's trademark CHATROULETTE but rather the two separate words "chat" and "roulette" in combination. The Respondent argues that each of "chat" and "roulette" are words in very common usage and are not trademarked by the Complainant.
The Respondent states that each of the websites in question utilizes live "chat roulette" software that was created by its own developers for adult webcam models.
The Respondent disputes that it has no rights or legitimate interests in respect of the disputed domain names. It states that it has never implied an affiliation with the Complainant and has not used his trademark in any way. The Respondent maintains that it legitimately registered each of the disputed domain names without knowledge of the Complainant's trademark and that the disputed domain names form part of a collection of hundreds of domain names held by the Respondent in connection with its regular business practice in the adult webcam industry.
The Respondent disputes that the disputed domain names have been registered and are being used in bad faith. It repeats that it had no knowledge of the Complainant's trademark at the date it registered the disputed domain names and included the terms "chat" and "roulette" merely to notify visitors of the method available for live sex chat or live video chat with adult webcam models.
The Respondent states that it did reply to an email from the Complainant dated August 3, 2016 relating to the disputed domain name and exhibits a copy of its email response denying any infringement of the Complainant's trademark. The respondent submits that the Complainant is acting in bad faith by stating that no responses to his communications had been received.
The Respondent requests that the Complaint be denied. 6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it is the owner of the registered trademark CHATROULETTE. Each of the disputed domain names contains the CHATROULETTE trademark in its entirely, preceded by a descriptive term. The Panel accepts the Complainant's submission that the inclusion of these descriptive terms is not sufficient to distinguish the disputed domain names from the Complainant's trademark. While the Respondent argues that each of the terms "chat" and "roulette" is a word in common usage, the Panel finds that the terms when used in combination as "chatroulette" have become distinctive of the Complainant's business, reflecting the Complainant's trademark rights. The Panel therefore finds that that the disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights B. Rights or Legitimate Interests
The Respondent submits that it registered the disputed domain names without knowledge of the Complainant's trademark and without any intention of taking advantage of the Complainant's goodwill. It states that it used the two words "chat" and "roulette" in conjunction with terms that described its adult chat and webcam services, and used those terms only to indicate the method by which its services were available. It also submits that it uses "chat roulette" software for the purpose of its websites, implying that this is a generic term for software of that type.
It is the task of the Panel to determine whether, on the balance of probabilities, the Respondent's explanation is true or whether, on the other hand, the Respondent registered the disputed domain names in order to target the Complainant's trademark and to take advantage of the goodwill attaching to that mark.
In this case, the Panel finds it inherently improbable either that the Respondent was unaware of the Complainant's trademark at the date it registered each of the disputed domain names or that the Respondent alighted upon the two terms "chat" and "roulette" in combination purely by coincidence and for the purpose of describing the method of accessing its adult web services. There is no evidence before the Panel that the terms "chat" and "roulette" in combination have any meaning in commerce other than to reference the Complainant's business and the Panel therefore finds on balance that the Respondent registered each of the disputed domain names in the knowledge of the Complainant's trademark and in order to create an association with that mark.
While the Complainant alleges that the Respondent has used the disputed domain names to offer the Complainant's competitors' products which compete with the Complainant's own offerings, the Panel does not fully understand this submission. The Panel does, however, find that the Respondent has used the disputed domain names misleadingly to attract Internet users to its own websites by misrepresenting an association with the Complainant's trademark and finds that misleading use of this nature does not give rise to any rights or legitimate interests on the part of the Respondent. Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
The Panel repeats its conclusions of fact referred to above. The Panel finds on the balance of probabilities that the Respondent registered the disputed domain names with the Complainant's trademark CHATROULETTE in mind and concludes that, by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of its websites or of products or services on its websites (paragraph 4(b)(iv) of the Policy). The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith. 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, , , , , and be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: March 22, 2017
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