The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Admin Mabinc, Mab Inc of San Diego, California, United States of America (“United States”), internally represented. 2. The Domain Names and Registrar
The disputed domain names , , , are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, the Registrar locked the disputed domain names and the Respondent sent an email to the Center requesting that the disputed domain names be unlocked. On April 12, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of all the disputed domain names 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 16, 2018. The Response was filed with the Center on May 2, 2018, before the due date of May 6, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on May 17, 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 is the creator of an online chat website known as “Chatroulette” that pairs random people from around the world together for real-time, webcam-based conversations. The Complainant registered the disputed domain name on November 16, 2009, and began using it in connection with its website on December 5, 2009. According to information provided by the Complainant, the number of unique visitors to the website grew from 944,000 in January 2010 to 3.9 million in February 2010 (Source: comScore). The Complainant and his website were featured in articles in New York magazine on February 5, 2010, the New York Times on February 13, 2010 and March 12, 2010, Spiegel Online on March 5, 2010 and the New Yorker on May 17, 2010.
The Complainant began filing trademark applications for CHATROULETTE in various jurisdictions from February 10, 2010. The Complainant later obtained trademark registrations in multiple jurisdictions, including Swiss trademark registration number 600401, registered on May 14, 2010; Russian Federation trademark registration number 429957, registered on February 10, 2011; European Union Trade Mark registration number 8944076, registered on December 4, 2012; and United States trademark registration number 4445843, registered on December 10, 2013, with a claim of first use on December 5, 2009. The trademark registrations specify services in classes 38 and 42 and, in most cases, class 35, including online chat services. The trademark registrations remain current.
The Respondent is the registrant of the disputed domain names. “Admin Mabinc” is the registrant name and “Mab Inc” is the registrant organization listed for each the disputed domain name in the Registrar’s WhoIs database.
The disputed domain names and were registered on February 13, 2010. The disputed domain names and were registered on May 20, 2010. The disputed domain name redirects to a live cam website with pornographic content that invites users to send tips. The other three disputed domain names resolve to a landing page that displays pay-per-click (“PPC”) links to dating and chat websites that compete with the Complainant’s site. The landing page also displays a hyperlink that reads “Interested in this domain?” 5. Parties’ Contentions A. Complainant
The disputed domain names are confusingly similar to the Complainant’s CHATROULETTE trademark. The Respondent has added the generic, descriptive term “free” as the initial element of one disputed domain name, added the suffix “ing” or “ting” between the terms “chat” and “roulette” in all the disputed domain names, and added an “s” to the end of one disputed domain name. The addition of these words and suffixes is not sufficient to dispel an overall impression that the disputed domain names are similar and therefore connected to the CHATROULETTE trademark.
The Respondent has no rights or interests in respect of the disputed domain names. The Respondent is not sponsored by, or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. The Respondent is not commonly known by the disputed domain names. One of the disputed domain names resolves to a website with adult content. Numerous past panels have held that use of a domain name that is confusingly similar to a complainant’s trademark to link to a website featuring pornographic or adult content evinces a lack of legitimate rights or interests. Three disputed domain names resolve to a landing page displaying PPC links to websites that compete with the Complainant’s website. All the disputed domain names were registered after the Complainant’s first use in commerce of its CHATROULETTE trademark on December 5, 2009, when it launched its own website, which was an instant hit and was receiving over 130,000 visitors per day by February 2010. The Respondent most likely knew of the Complainant’s secondary rights when he registered the first two disputed domain names. The other two disputed domain names were registered after the Complainant obtained registration of its trademark in Switzerland.
The disputed domain names were registered and are being used in bad faith. At the time of registration of the disputed domain names, the Respondent knew, or at least should have known, of the existence of the Complainant’s “Chatroulette” website and unfairly sought to capitalize on the Complainant’s nascent trademark rights. By February 2010, CHATROULETTE was a worldwide phenomenon that had four million users and was talked about all over the media. The Respondent’s purposeful misspelling of the Complainant’s trademark in the disputed domain names demonstrates a knowledge of and familiarity with the Complainant’s brand and business. One disputed domain name redirects to sexually-explicit, pornographic content, and the others display PPC links, all of which provides evidence of the Respondent’s bad faith registration and use. The Respondent has registered multiple infringing domain names which demonstrates that the Respondent is engaging in a pattern of cybersquatting. B. Respondent
The Complainant has not demonstrated that the disputed domain names are confusingly similar to a trademark in which it has rights. “Chatting” is multiple chats at once. Chat is a single chat. “Chatting” is not a common phrase used in the English dictionary alongside “chat”, at least not in the present or future tense of the words as implied by “chat roulette”. “Chatting” is typically used in the past or present tense and would not be something a user would typically accidentally type in confusion with “chatroulette”. It is four additional characters and would not be easily confused. “ChatsRoulette” or “ChatRoulete” would be misspellings but not “Chatting”. The Complainant cannot trademark the art of having multiple chats in groups. The disputed domain names were registered prior to any registration of CHATROULETTE. The disputed domain names have been registered for eight years without any confusion or similarity.
The Respondent has rights and legitimate interests in respect of the disputed domain names. The Respondent has invested in its business, as well as current advertisements to fuel the website and the activity. The disputed domain name forwards to a webcam site that the Respondent has been promoting. Prior to that, the Respondent was going to build its own website. Several other domain names were registered on the same day all based on similar concepts created by the Respondent for webcam and dating sites. These domain names were registered prior to any trademarks. The Respondent has had these domain names for eight years and has multiple intentions to develop them. The Respondent also has email evidence of attempts to develop these domain names and current attempts to market them and develop them. These other domain names have nothing to do with what the Complainant is claiming. The Respondent has made a considerable investment in advertising to get users to its site. The Respondent’s emails and imagery, as well as systems developed, before the Respondent received any notice of the dispute, are evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.
The disputed domain names were not registered and are not being used in bad faith. The Complainant filed for its trademarks one year after the Respondent registered the disputed domain name . The Respondent intends to combat the Complainant’s trademark filing based on prior use. “Chatting” is multiple conversations at once and does not need to pertain to what the Complainant affirms it to be. In no way is the Respondent’s concept of having multiple conversations with a random group of people confusing with the Complainant’s concept of having a chat with one person randomly cycled through a webcam. One would not type instead of even though “googling” is a word. The Complainant must show that the Respondent registered the disputed domain names in bad faith based on the registration date and in light of the other similar domains registered by the Respondent at the time. The Respondent registered the disputed domain names in an attempt to develop them, and they were meant more for group communications or random friend group connections. The plurality of the word which has a definitively different meaning. Additionally, the evidence shows that advertising was actually being purchased for the disputed domain names and they were not just for the purpose of redirection. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(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
Based on the evidence provided, the Panel finds that the Complainant has rights in the CHATROULETTE trademark. Although two disputed domain names were registered before the Complainant’s trademark was registered anywhere in the world, the Panel notes that the text of paragraph 4(a)(i) of the Policy is in the present tense and does not specify that the Complainant must have had registered rights in its trademark at the time at which a disputed domain name was registered. The issue of the timing of the Complainant’s rights is relevant to the third element, considered below.
Each disputed domain name contains the two elements of the Complainant’s CHATROULETTE trademark, namely “chat” and “roulette”. Each disputed domain name inserts the present participle suffix “ing” after the verb “chat” so as to spell “chatting” or, in one case, “chating”. One disputed domain name adds the plural “s” after the noun “roulette”. Another disputed domain name adds the mere dictionary word “free” before the element “chat”. None of these differences dispels confusing similarity between the disputed domain names and the Complainant’s trademark.
The Respondent argues that the disputed domain names are not misspellings of the Complainant’s trademark and that an Internet user who intended to type the Complainant’s website address would not type one of the disputed domain names by mistake. However, the Panel notes that the first element of the Policy is not limited to cases of so-called “typosquatting” but also covers cases where a disputed domain name is otherwise confusingly similar to a trademark, as in the present case.
The disputed domain names also include the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix may generally be disregarded in the assessment of confusing similarity between a domain name and a trademark for the purposes of the Policy.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
“(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
“(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The disputed domain names are all confusingly similar to the Complainant’s trademark. The Complainant submits that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. The disputed domain name redirects to a commercial website that, like the Complainant’s site, is a webcam site. The other three disputed domain names, which are also confusingly similar to the Complainant’s trademark, resolve to a landing page that displays PPC links to websites, some of which compete directly with the Complainant’s website. These are not bona fide offerings of goods or services that would create rights or legitimate interests within the meaning of the first circumstance of paragraph 4(c) of the Policy.
The Respondent’s name is “Admin Mabinc” or “Mab Inc” according to the Registrar’s WhoIs database. There is no evidence indicating that the Respondent has been commonly known by any of the disputed domain names as envisaged by the second circumstance of paragraph 4(c) of the Policy.
The disputed domain name redirects to a website that invites users to send tips and is therefore commercial. The other three disputed domain names resolve to a landing page that displays PPC links that generate income for the Respondent or the operators of the linked websites, or both. These are not legitimate noncommercial or fair uses as envisaged by the third circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Turning to the Respondent’s arguments, it submits that “chatting” is a common English phrase. The Panel agrees but notes that the disputed domain names all include the word “roulette” as well, which has no inherent connection to online conversations. The Respondent argues that the Complainant cannot trademark the art of having multiple chats in groups. However, the Panel does not consider that use of the word “roulette” is required to operate group chat services. The disputed domain names give the impression that they are somehow affiliated with the Complainant, when (a) one resolves to a commercial website that is not in fact affiliated with the Complainant; and (b) the others display PPC links that do not appear to be generated based on the generic meaning of the word “chat” alone but rather on the trademark value of “chat” when combined with “roulette”. The Respondent argues that it has intentions to use the disputed domain names but its evidence of email communications with a media sales representative regarding possible domain names for a new chat site and evidence of the content of an unrelated site do not indicate preparations to use any of the disputed domain names, let alone that any such use in connection with an offering of chat services would be bona fide. None of this gives the Panel reason to find that the Respondent’s use of the disputed domain names is in connection with a bona fide offering of goods or services as envisaged by the first circumstance of paragraph 4(c) of the Policy, or that it has made any demonstrable preparations for such use, or that it has any other rights or legitimate interests in respect of the disputed domain names. Accordingly, the Respondent has failed to rebut the Complainant’s prima facie case.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These circumstances are not exhaustive. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
As regards registration, the disputed domain names and were both registered on February 13, 2010, three days after the Complainant filed its first applications for registration of its CHATROULETTE trademark but before the Complainant obtained any trademark registration. The disputed domain names and were both registered on May 20, 2010, less than a week after the Complainant obtained the first registration of its CHATROULETTE trademark.
The Panel does not consider the timing of the registration of the disputed domain names to be fatal to the Complainant’s claim in the particular circumstances of this case. The disputed domain names all incorporate the elements “chat” and “roulette”, which together constitute the Complainant’s CHATROULETTE trademark, with no additional elements besides grammatical morphemes and, in one case, the dictionary word “free”. The Complainant’s CHATROULETTE trademark is a coined term. There is no inherent connection between roulette and chatting; if anything, the analogy between a roulette wheel and random Internet connections has been popularized by the Complainant. At the time of registration of the disputed domain names, the Complainant’s “www.” website was experiencing exponential growth in the number of visitors and it had already attracted press coverage, including in the United States where the Respondent is located. The Complainant was very likely to seek to register the trademark CHATROULETTE, even if the Respondent was unaware of the Complainant’s contemporaneous trademark applications. There appears to have been no other plausible reason for the Respondent to register the disputed domain names other than to take advantage of their confusing similarity to the Complainant’s nascent rights in the term “chatroulette”.
The Respondent points out that “chatting” is an ordinary English word but it has not provided any explanation as to why it chose to combine that word with “roulette” in the disputed domain names. The Respondent is the registrant of four disputed domain names, all of which are confusingly similar to the Complainant’s trademark, and these similarities can hardly be considered coincidental.
In view of the above, the Panel finds that the Respondent registered the disputed domain names in anticipation of the Complainant’s trademark rights. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 3.8.2; Khloe Kardashian, Whalerock Celebrity Subscription, LLC, Khlomoney, Inc. v. Private Registrations Aktien Gesellschaft / Privacy Protection Service Inc. d/b/a Privacyprotect.Org, WIPO Case No. D2015-1113. Therefore, in this exceptional scenario, the Panel finds that the Respondent registered the disputed domain names in bad faith.
As regards use, the Complainant argues that the Respondent’s use of the disputed domain name to redirect to a website with pornographic content tarnishes the Complainant’s trademark. The Panel need not address this argument.
Rather, the disputed domain names are all used to attract Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites to which they resolve. Even though the disputed domain names have been registered for eight years, there is no evidence of actual confusion, but such evidence is not required. One of the disputed domain names redirects to a commercial website that, like the Complainant’s website, is a webcam site. The other disputed domain names resolve to a landing page with PPC links, some of which resolve to sites that compete directly with the Complainant’s website. This use is intentional and either for the Respondent’s own commercial gain, if it is paid to direct traffic to other websites, or for the commercial gain of the operators of those other websites, or both. In each scenario, these facts satisfy the requirements of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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.
Matthew Kennedy
Sole Panelist
Date: May 28, 2018
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