The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Lloyd Ales of Syracuse, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2018. On March 23, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2018, the Registrar informed that the disputed domain name had been transferred out of its system on March 24, 2018. On April 3, 2018, the new registrar confirmed that it has transferred the disputed domain name back to the Registrar. On April 8, 2018, the Registrar transmitted by e-mail 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 April 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2018.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on May 8, 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 operates an online chat website that pairs random people for real-time conversations. The Complainant is the registered owner of the trademark CHATROULETTE (No. 4445843) registered with the United States Patent and Trademark Office (“USPTO”) for classes 38 and 45, registered on December 1, 2013; with the European Union Intellectual Property Office (“EUIPO”) (No. 008944076) for classes 35, 38 and 42, registered on December 4, 2012; CHATROULETTE.TO, registered with the EUIPO (No. 008946352), registered on August 19, 2012; and CHATROULETTE registered in Germany (No. 3020100037067) for classes 35, 38 and 42, registered on February 21, 2013.
The disputed domain name was registered on March 26, 2010, and resolves to a pay-per-click website. 5. Parties’ Contentions A. Complainant
The Complainant is the owner of trademark registrations in a number of jurisdictions for CHATROULETTE. The Complainant created Chatroulette as a chat website that pairs Internet users for real-time conversations. The Complainant created the website in 2009 as a 17-year-old student. He chose the distinctive and unique name Chatroulette for his website, to reflect the purpose and unpredictability of the service there rendered. The Complainant maintains that Chatroulette has proven to be a concept and name that people readily and eagerly embraced.
The Complainant asserts that very soon after its launch in November 2009, the Chatroulette website was receiving 500 visitors per day growing by January 2010 to 50,000 visitors per day (approximately 1.5 million users per month), representing a 10,000 percent increase in traffic over just one month. By February 2010 traffic had jumped to approximately 130,000 visitors per day (3.9 million monthly visitors), a 26,000 percent increase in traffic over the December 2009 figures. According to the Complainant this exponential growth is testament to the incredible popularity that the Chatroulette website and business were able to achieve within mere months of its launch. The Complainant contends that Chatroulette continues to be one of the most popular video chat sites in the world, and that it has generated significant interest and attention internationally among fans, the media, and competitors. Unfortunately, the Complainant says, cybersquatting has been a result of the popularity and fame of Chatroulette. In summary, the Complainant maintains that he enjoys a substantial degree of public recognition in CHATROULETTE and that this mark has become uniquely and distinctly associated with the Complainant.
The disputed domain name captures the CHATROULETTE trademark in its entirety and simply ads the generic term “sex” in the middle of the trademark. According to the Complainant the mere addition of this generic term does not negate the confusing similarity with the disputed domain name and it must therefore be considered confusingly similar to the Complainant’s trademark. Addition of descriptive terms is not sufficient to overcome the effect of confusing similarity from adoption of a trademark as a whole.
The Complainant’s trademark registrations are prima facie evidence of validity and of the Complainant’s ownership. The Complainant asserts that the Respondent is not known by the disputed domain name nor is it licensed, authorised or permitted to use the CHATROULETTE trademark. In the circumstances the Respondent can therefore not be regarded as having acquired rights or legitimate interests in the disputed domain name.
The Complainant states that since 2010, the Respondent has often used the disputed domain name to redirect Internet users to a pay-per-click website with relevant links to online (adult) video chats. This is not a bona fide use. At some time in November 2010 and December 2016, the disputed domain name resolved to an adult content site and webcam chatroom for adults, respectively. According to the Complainant, numerous past UDRP panels have held that use of a disputed domain name that is confusingly similar to a complainant’s trademarks to link to a website featuring pornographic or adult content evinces a lack of legitimate rights or interests. Finally, the Complainant contends that the Respondent registered the disputed domain name on March 26, 2010, and thus after the Complainant filed its application for the CHATROULETTE trademark with the EUIPO (March 10, 2010), and after he registered his primary domain name on November 16, 2009. The Complainant says that these circumstances, coupled with the fact that the terms “chat” and “roulette” in combination do not have any meaning in commerce other than to reference the Complainant’s business, imply that the Respondent’s registration was opportunistic and predatory in nature. Therefore the Respondent has registered and used the disputed domain name misleadingly to attract Internet users to its own website by misrepresenting an association with the Complainant’s trademark.
According to the Complainant, the Respondent by registering a domain name which is confusingly similar to the Complainant’s trademark and “www.” website, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. The Complainant says that the disputed domain name is so obviously connected with the well-known trademark CHATROULETTE that its use by someone with no legitimate connection with the service concerned suggests opportunistic bad faith. The Complainant contends that for most of the period since registration, the Respondent has used the disputed domain name to resolve to a pay-per-click site with links to other online chat platforms. This type of conduct has often been held to be in bad faith. The fact that at times the disputed domain name redirected to adult content is said to be a further demonstration of bad faith.
According to the Complainant, the Respondent registered four other domain names that include the Complainant’s CHATROULETTE trademark and were transferred to the Complainant as a result of the cease-and-desist letters sent by the Complainant, namely , , , and . The act of registering multiple domain names containing the Complainant’s CHATROULLETTE trademark demonstrates that the Respondent is engaged in a pattern of abuse, which is additional evidence of bad faith registration and use, or so the Complainant contends.
Finally, upon the Complainant’s demand, the Respondent agreed to transfer four out of five domain names incorporating the Complainant’s trademark (the above-mentioned four domain names), but refused to transfer the disputed domain name. The Complainant having tried unsuccessfully to resolve the matter amicably, he then resolved to file this Complaint. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is not identical to the CHATROULETTE trademark of the Complainant. However, this distinctive trademark has been very recognizably incorporated into the disputed domain name. The fact that the two parts of the trademark “chat” and ‘”roulette” have been interspersed with the term “sex” barely reduces the degree to which the disputed domain name calls the CHATROULETTE trademark to mind. The Complainant’s trademark in any case consists of the distinctive conjunction of two separately recognizable terms. They remain nearly as recognizable as the Complainant’s trademark even when interspersed with the terms “sex”. The additional term is a dictionary term and modifications of this kind have consistently been held not to detract from a finding of confusing similarity. There is little doubt that the disputed domain name is so similar to the CHATROULETTE trademark that Internet users will be led to the erroneous conclusion that it represents some legitimate or authorized variant of the Complainant’s trademark.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s CHATROULETTE trademark. B. Rights or Legitimate Interests
The Respondent is not known by the name, nor conducts business with reference to “Chat Sex Roulette”. Nor is he authorized by the Complainant to use that trademark in any form or incorporate it in a domain name. The Respondent has variously used the disputed domain name to generate pay-per-click revenue by providing links to alternative chat services on the Internet, and by providing links to adult material. These are not activities that result in a registrant acquired rights or legitimate interests in a domain name.
The Panel accepts that the Complainant has made prima facie showing that the Respondent has no rights and legitimate interests in the disputed domain name. The Respondent has not come forward to rebut the Complainant’s allegations in any way.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant delayed bringing this proceeding for a long time as the disputed domain name was registered in 2010, although delay in bringing a proceeding under the UDRP neither bars a complainant from filing such a case, nor from potentially prevailing on the merits. It may also be that the disputed domain name was registered before the CHATROULETTE trademark was entered upon the trademark register of any jurisdiction. However, figures provided by the Complainant show exponential growth in popularity of the CHATROULETTE website and extensive reporting on it in the press between December 2009 and January 2010 alone. The popularity and thus reputation of the CHATROULETTE website and mark was thus extensive before the disputed domain name was registered. The Respondent has throughout the period of registration used the disputed domain name to generate revenue from click-through links by relying on the well-established reputation of the Complainant’s trademark CHATROULETTE. There is in the circumstances no detrimental reliance by the Respondent on the delay.
The Complainant’s CHATROULETTE trademark is distinctive and relates to chat services provided over the Internet. The Respondent has relied on the wide reputation of the mark to establish websites which consumers would be drawn to by the reputation of, and apparent association with the CHATROULETTE trademark. The Respondent has thus sought to take unfair advantage of the reputation of the Complainant and turn it to its own account, without turning any rights whatsoever in the CHATROULETTE mark.
Therefore the Panel holds that the disputed domain name was registered and 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 name be transferred to the Complainant.
William A. Van Caenegem
Sole Panelist
Date: May 21, 2018
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