Complainant is Andrey Ternovskiy dba chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
Respondent is P, Inc Privacy ID# 860383 of Cheyenne, Wyoming, United States of America ("United States"). 2. The Domain Name and Registrar
The disputed domain name is registered with Sea Wasp, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 28, 2018. On March 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 28, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 9, 2018.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on May 16, 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
Complainant is the creator and owner of the video chat website "." Complainant acquired the accompanying domain name on November 16, 2009, and launched his online chat platform shortly thereafter. In the meanwhile, Complainant's website quickly gained popularity, attracting roughly 944,000 visitors in January 2010 and 3.9 million visitors worldwide in February 2010. By February 2010, the website and its creator had received considerable media attention. In early February 2010, the popular United States television program Good Morning America included a segment about the website and its young creator. New York magazine and The New York Times published articles (on February 10 and 13, 2010 respectively) about the popularity of the domain name. The website remains popular, attracting 4.5 million monthly visitors (on average) between November 2017 and January 2018.
Shortly after the initial widespread publicity in 2010, Complainant applied to register his trademark in the Russian Federation and the European Union, and registrations subsequently issued. (Russian Federation Registration No. 429957, filed March 11, 2010; registered February 10, 2011; European Union registration Registration No. 008944076, filed March 10, 2010; registered December 4, 2012.)
A year later, Complainant filed an application for a United States trademark registration based on a declaration claiming first use as a trademark in United States commerce as of December 5, 2009. (United States Registration No. 4445843, filed January 10, 2011; claiming first use December 5, 2009; registered December 10, 2013.)
On May 19, 2011, Respondent registered the disputed domain name . The disputed domain name resolves to a webpage with pay-per-click advertising. 5. Parties' Contentions A. Complainant
Complainant asserts that he is the registered owner of the CHATROULETTE mark and the disputed domain name is confusingly similar to the mark. According to Complainant, the inclusion of the descriptive term "free" does not distinguish the disputed domain name from Complainant's trademark. Complainant maintains that Respondent has no rights or legitimate interests in the disputed domain name because Complainant has not authorized Respondent's use of the mark and Respondent's use of the disputed domain name is not bona fide as the disputed domain name takes advantage of Complainant's fame and goodwill to direct Internet traffic away from Complainant's website and to a website offering competing services. As for bad faith registration and use, Complainant argues that considering the popularity of Complainant's website and Respondent's full incorporation of the famous CHATROULETTE into the disputed domain name, Respondent knew about Complainant's mark and associated rights at the time Respondent registered the disputed domain name and that Respondent is using the disputed domain name to trade off on Complainant's popularity for Respondent's own commercial gain. B. Respondent
Respondent did not submit a response to the Complaint. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the CHATROULETTE mark in which Complainant has rights. The disputed domain name incorporates the CHATROULETTE mark in its entirety and the addition of the descriptive work "free" does not dispel the confusion. The generic Top-Level Domain ".com" is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11.1. B. Rights or Legitimate Interests
Complainant has established a prima facie case of Respondent's lack of rights or legitimate interest in the disputed domain name. By a preponderance of the evidence, which Respondent has failed to rebut, Complainant shows that Respondent has sought to capitalize on the popularity of CHATROULETTE to lure Internet users to a webpage that runs pay-per-click links. The links lead the Internet users to third-party sites facilitating the search for other video chat websites. The webpage also appears to feature a link to CHATROULETTE specifically, which also leads the Internet user to another page of links to third-party websites for searching online chat services. This use by Respondent is not a bona fide commercial use and fails to support Respondent's rights or legitimate interests in the disputed domain name. WIPO Overview 3.0, section 2.9. See The American Automobile Association, Inc. v. A Domain Privacy / Transure Enterprise Ltd,WIPO Case No. D2010-0565.
The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant has established by a preponderance of the evidence that Respondent registered and is using the disputed domain name in bad faith. Respondent registered the disputed domain name, through a United States-based privacy service, after Complainant filed for trademark registration in the United States but before that registration issued. Complainant has provided credible evidence to show that by the time Respondent registered the disputed domain name Complainant's website had received significant media attention. Even though Complainant had not received trademark registration in the United States, there is prima facie evidence that Complainant had acquired common law rights, at least in the United States, before Respondent registered the disputed domain name. Complainant's declaration (as required by a United States federal trademark application) claiming first use of the trademark as of December 5, 2009 combined with the evidence of widespread publicity in the United States is prima facie evidence to support a finding that Complainant acquired common law rights in the United States before Respondent registered the disputed domain name. See Alfwear Inc. v. Registrant [1370348]: Privacy Admin / Registrant [709764]: Gregory, Ricks,WIPO Case No. D2008-1522. It is reasonable to infer that Respondent registered the disputed domain name to exploit Complainant's recently acquired and growing trademark rights. In this regard, the Panel notes that Complainant had trademark registrations for CHATROULETTE in the Russian Federation and European Union before Respondent registered the disputed domain name.
Although it is the general rule that, "where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent," WIPO Overview 3.0, section 3.8.1, an exception applies when the respondent, as appears to be the case here, registers the disputed domain name to exploit media attention to the complainant, as, for example, when an Internet phenomenon "goes viral" very quickly before the phenomenon's sponsor secures trademark registrations. See WIPO Overview 3.0, section 3.8.2 (registration of a domain name "further to significant media attention" or "following the complainant's filing of a trademark application" supports a finding of bad faith.) That appears to be the case here. In likely response (no alternative explanation offered is offered or apparent) to Complainant's quickly acquired celebrity. Respondent chose to incorporate into the disputed domain name the term "chatroulette" with no obvious generic meaning into the disputed domain name. Especially in view of Respondent's failure to come forward an offer a reasonable explanation for the choice, it is credible to assume that Respondent chose the disputed domain name to take advantage of the growing fame of Complainant's service and mark. See Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc.,WIPO Case No. D2010-2181.
The disputed domain name resolves to a website that offers links that allow Internet users to access services that compete with Complainant's. This supports a finding of bad faith. Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc.,WIPO Case No. D2010-2181. The Panel finds that Respondent uses the disputed domain name in bad faith by creating a likelihood of confusion about the source of Respondent's services to attract, for commercial gain, Internet users to Respondent's website. 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 Complainant.
Lawrence K. Nodine
Sole Panelist
Date: June 1, 2018
Full & Egal Universal Law Academy