The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Privacy Protection Service, Provided through Communigal Communication Ltd of Netanya, Israel, Perfect Privacy, LLC of Jacksonville, Florida, United States of America, and Contact Privacy Inc. Customer 0147901156, Contact Privacy Inc. Customer 0150243305, Contact Privacy Inc. Customer 0148620601, Contact Privacy Inc. Customer 0150016370, Contact Privacy Inc. Customer 0148380240, Contact Privacy Inc. Customer 0148620598, Contact Privacy Inc. Customer 0148851803, Contact Privacy Inc. Customer 0149346421 of Toronto, Ontario, Canada / Milen Radumilo, White & Case of Bucharest, Romania. 2. The Domain Names and Registrars
The Domain Name is registered with BullRunD LLC. The Domain Name is registered with Domain Name Origin, LLC. The Domain Name is registered with D LLC. The Domain Names and are registered with eNom, Inc. The Domain Names , , , and are registered with Gal Communications (CommuniGal) Ltd. d/b/a Galcomm. The Domain Names and are registered with GoD, LLC. The Domain Name is registered with Name Icon LLC. The Domain Name is registered with NameP #8024. The Domain Name is registered with N LLC. The Domain Name is registered with Network Solutions, LLC. The Domain Name is registered with Sssasss, Incorporated. The Domain Names , , , , , , , and are registered with Tucows Inc. The Domain Name is registered with Win Names LLC. (Collectively, the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2018. On March 13, 2018, the Center transmitted by email to the Registrars a request for registrar verification with respect to the disputed domain names. Between March 13 and March 23, 2018, the Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details.
The Center verified that the Complaint satisfied 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 March 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2018.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on May 2, 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 dba Chatroulette (“Chatroulette”) is the owner of Chatroulette, a well-known online chat website that pairs random people from around the world together for real-time, webcam-based conversations. Chatroulette is associated with, and known for providing, online video chat services and online video social introduction and networking services.
The Complainant owns several trademark rights registered since 2010 composed of the term “CHATROULETTE”, notably:
- Trademark of the Russian Federation CHATROULETTE, registration no. 429957, registered on February 10, 2011;
- European Union Trademark CHATROULETTE, registration no. 008944076, registered on December 4, 2012;
- European Union Trademark CHATROULETTE.TO, registration no. 008946352, registered on August 19, 2012;
- German federal trademark CHATROULETTE, registration no. 3020100037067, registered on February 21, 2013;
- United States of America trademark CHATROULETTE, registration no. 4445843, registered on December 10, 2013.
The twenty-five domain names were registered between 2016 and 2018. They resolve to websites reproducing the Complainant’s Trademark with pay-per-click links. 5. Parties’ Contentions A. Complainant
The Complainant asserts that all of the twenty-five disputed Domain Names are operated or controlled by a single Respondent, and subsequently invites the Panel to exercise its discretion under paragraph 10(e) of the Rules to consolidate the multiple Domain Name disputes presented by the Complainant in this proceeding.
The Complainant asserts that the Disputed Domain Names are confusingly similar to the Complainant’s well-known and reputable CHATROULETTE Trademark, as each of the Domain Names incorporates in it the Complainant’s mark. According to the Complainant, adding common or descriptive words such as “gay”, “webcam”, “super”, “français”, and “arabe” and inverting “chat” and “roulette” does not dispel such confusing similarity. In this regard, the Complainant cites the case, NCRAS Management, LP v. Cupcake City and John Zuccarini,WIPO Case No. D2000-1803 () in which the Panel considered that inverting the terms of a mark is insufficient to dispel consumer confusion.
The Complainant further argues that there are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent is not commonly known by the Domain Names. The Respondent does not have business or legal relationship with the Complainant, nor does the Respondent have any authorization from the Complainant to register the Domain Names or any Domain Name corresponding to the CHATROULETTE Trademarks.
The Complainant contends that the Respondent has registered and uses the disputed Domain Names in bad faith. The Complainant asserts that there can be no doubt that the Respondent knew or should have known of the Complainant and its rights to the CHATROULETTE mark when registering the disputed Domain Names. Given the strong reputation and reputability of the CHATROULETTE Trademark, the Complainant maintains that it is impossible to conceive any plausible actual or contemplated active usage of the disputed Domain Names by the Respondent that would be legitimate. The Complainant further asserts that lack of any response to its cease and desist letter of January 8, 2018 is an evidence of bad faith, citing Encyclopedia Britannica v. Zuccarini,WIPO Case No. D2000-0330.
For all the above reasons, the Complainant requests the transfer of the twenty-five Domain Names. B. Respondent
The Respondent did not reply to the Complainant’s contentions and is, therefore, in default. 6. Discussion and Findings A. Preliminary issue: Consolidation of Respondents
The Complainant filed its Complaint against Milen Radumilo and different privacy services. The Complainant contends that a single Registrant remains in control of all the twenty-five disputed domain names, and thus the Panel may exercise its discretion under paragraph 10(e) of the Rules to consolidate multiple domain name disputes under a single proceeding.
Paragraph 3(c) of the Rules states:
“The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”
Paragraph 10(e) of the Rules, setting out certain general powers of the Panel, states:
“A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO 3.0 Overview”) moreover states at the section 4.11.2 that “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 or (iii) relevant IP addresses, name servers, or webhost(s).”
Thus, it is for the Panel to decide in the light of the evidence produced and the submissions made whether or not the disputed domain names in this case are registered by the same domain name holder. Cases in which panelists have comprehensively reviewed the issue of the consolidation of complaints against multiple respondents include: Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281 and Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim,WIPO Case No. D2009-1345.
In the present case, the following elements provide evidence of the unique control of the domain names:
- All twenty-five domain names are associated with the same Domain Name Servers – ‘NS15.ABOVE.COM’ and ‘NS16.ABOVE.COM’
- All twenty-five domain names are associates with the same IP Address - 103.224.212.222
- All twenty-five domain names are listed for sale at the same price – USD 688.
- A cease-and-desist letter was sent to the various Registrant email addresses associated with all twenty-five domain names and addressed the Registrant, Milen Radumilo. No response was received asserting that domains were not under common control.
- Nine domain names list the Registrant as Milen Radumilo. Sixteen domain currently display various privacy protected Registrants.
For these reasons, and taking into account that the Registrars have confirmed the underlying registrant being Milen Radumilo, the Panel agrees to the consolidation of the Complaint in relation to each of the disputed domain names. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has submitted evidence of its prior rights on the CHATROULETTE sign in the form of trademarks and domain names.
The Domain Names cited below are a deliberate misspelling of the Complainant’s CHATROULETTE Trademark and must be considered confusingly similar to the Complainant’s trademark. More specifically the Domain Names differ from the Complainant’s Marks as follows:
– an extra ‘c’ has been added;
– the ‘u’ is replaced with an ‘e’;
– the ‘l’ and ‘u’ are transposed;
–an ‘o’ has been added;
– the ‘tte’ has been dropped from the end;
– the first ‘e’ is replaced with an ‘r’;
– a’t’ has been added;
– double ‘r’ instead of double ‘t’;
– the ‘o’ is dropped and the ‘te’ at the end is replaced with ‘ru’;
– the ‘o’ is dropped as well as the ‘te’ from the end;
– a ‘t is added and the ‘u’ and last ‘e’ have been dropped;
– a ‘t’ has been added with an ‘o’ and the last ‘t’ being dropped;
– the ‘a’ is replaced with an ‘e’ and the ‘te’ is dropped from the end;
– the ‘a’ is replaced with an ‘e’ and the ‘e’ is dropped from the end;
This conduct, commonly referred to as “typo squatting,” creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark under paragraph 4(a)(i) of the Policy. See, e.g., America Online, Inc. v. Johuanthan Invs., Inc., WIPO Case No. D2001-0918 (finding the domain name confusingly similar to trade and service marks in which AOL has rights, namely ). Backstreet Prods., Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654 (finding, inter alia, the domain names and virtually identical and confusingly similar to the Backstreet Boys mark); AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937 (finding the domain names and confusingly similar to the trademark Alta Vista); Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362 (finding the domain name , spelled with the number zero rather than the letter “o”, confusingly similar to the trademark Oxygen); Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330, (finding the domain name virtually identical and confusingly similar to Encyclopaedia Britannicas mark).
The Domain Names , and are merely an inversion of two words within the Complainant’s CHATROULETTE Trademark and must be considered confusingly similar to the Complainant’s trademark. More specifically:
The disputed Domain Names switch the position of the words “roulette” and “chat” within the Complainant’s CHATROULETTE Trademark, and the Respondent has thus inverted the order of these two words to form the Domain Names.
A mere inversion of the words comprising the Complainant’s trademark, said trademark being fully included in the textual string of the disputed domain names, is insufficient under the circumstances to avoid likelihood of confusing similarity. (See Intesa Sanpaolo S.p.A. v. Rampe Purda,WIPO Case No. D2010-1116)
In creating the Domain Names , , , , , , , and , the Respondent added generic and descriptive terms related to chat to the Complainant’s CHATROULETTE Trademark, and is thereby made the Domain Names confusingly similar to the Complainant’s trademark under Policy 4(a)(i).
According to previous UDRP panels, addition of generic names does not prevent confusing similarity. The incorporation of a complainant’s well-known trademark in the registered domain name is considered sufficient to find the domain name confusingly similar to the Complainant’s trademark: see Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO,WIPO Case No. D2000-0138 (finding that because the domain name incorporates in its entirety the Complainant’s distinctive mark, QUIXTER, the domain name is confusingly similar).
Consequently, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled for the twenty-five Domain Names. C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain names 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 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.
Although the Policy addresses the ways in which a respondent may demonstrate rights or legitimate interests in disputed domain names, it is well established that, section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) asserts that a complainant is required to make 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 evidence demonstrating rights or legitimate interests in the domain names. If the respondent comes forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Respondent is not sponsored by or affiliated with the Complainant in any way.
The Respondent is not commonly known by the Domain Names, which evinces a lack of rights or legitimate interests (see Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766) by the at-issue domain at the time of registration in order to have a legitimate interest in the domain.
Furthermore the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark. “In 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 Domain Names could reasonably be claimed.” See LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.
The Respondent is using the disputed Domain Names to redirect Internet users to websites featuring links to third-party websites, some of which directly compete with the Complainant’s business. For instance, Domain Names redirect to websites that feature multiple third-party links for “online video chat”, “chat free online” and “online chat.” Furthermore, the Respondent’s websites also feature a link that directly references the Complainant and its business.
As such, the Respondent is not using the Domain Names to provide a bona fide offering of goods or services as allowed under Policy 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy.
The Panel finds that the Complainant has made a prima facie case calling for an answer from the Respondent. The Respondent has not filed a response to the Complainant’s cease-and-desist letter and is therefore in default, thus, the Panel is unable to conceive of any basis upon which the Respondent could sensibly have any rights or legitimate interests in respect of the Domain Names.
For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the twenty-five disputed domain names, pursuant to the Policy, paragraph 4(a)(ii). D. Registered and Used in Bad Faith
Pursuant to the Policy (paragraph 4(a)(iii)), the Complainant must show that the Respondent registered and is using the Domain Names in bad faith.
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the CHATROULETTE Trademarks at the time of registering the Domain Names. Previous Panels have already stated that CHATROULETTE has a worldwide reputation. “Considering the wide recognition of the Complainant’s trademark for online chat systems and the express reference made to it on the Respondent’s website attached to the disputed domain name, it is obvious that the Respondent was perfectly aware of the Complainant’s trademark when it chose to register the disputed domain name.” (See Andrey Ternovskiy dba Chatroulette v. Domain Administrator, See PrivacyG / Michael T. Nishimura,WIPO Case No. D2017-0448).
The Complainant has submitted an evidence showing that the Respondent registered the Domain Names long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the CHATROULETTE Trademark since 2012. The fact that the CHATROULETTE Trademarks, owned by the Complainant, were registered long before the registration of the Domain Name attests to the Respondent’s bad faith in these particular circumstances (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735). WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with lack of credible explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Domain Names fall into the category stated above and the Panel finds that the registration is in bad faith.
By registering multiple domain names that variously incorporate the Complainant’s CHATROULETTE Trademark in its entirety and paired with other generic terms or are one or two-letter misspellings of said trademark, the Respondent has created domain names that are confusingly similar to the Complainant’s trademark, as well as its domain. In fact, a number of the Domain Names for example represent slight misspellings of the Complainant’s CHATROULETTE trademark, as well as its domain name. Typosquatting itself has been taken as an evidence of bad faith registration and use by past Panels. See WIPO Overview 3.0 at section 3.1.3: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”
Moreover, the Respondent is currently offering to sell the Domain Names, which constitutes bad faith under Section 4(b)(i) because the Respondent has demonstrated an intent to sell, rent, or otherwise transfer the Domain Names for valuable consideration in excess of his out-of-pocket expenses. The Panel cannot find any justification for the registration and use of the disputed Domain Name in such circumstances except to find that the Respondent has registered and uses the Domain Names for the purpose of selling the disputed Domain Name for valuable consideration in excess of the Respondent’s documented out-of-pocket costs and/or to disrupt the Complainant’s business.
Moreover, the Respondent uses the website in bad faith as he is using the Domain Names to redirect Internet users to websites featuring links to third-party websites, some of which directly compete with the Complainant’s business. This use is with no contest an evidence of use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the twenty-five Domain Names in bad faith under 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,
,
be transferred to the Complainant.
Nathalie Dreyfus
Sole Panelist
Date: May 14, 2018
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