The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is 1&1 Internet Inc of Pennsylvania, United States of America (“United States”) / Freddie Sinsua of San Jose, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet SE (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2018. On October 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 5, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 8, 2018.
The Center verified that the Complaint together with the amended 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 November 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2018.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on December 13, 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, is a Moscow-based entrepreneur who created a website in 2009 to provide real time, web-cam based conversations with other internet users from around the world. The Complainant combined the name “roulette” with the word “chat” to form the coined term CHATROULETTE, which became his primary trademark.
The Complainant built the CHATROULETTE website on his home computer. Introducing the platform through a web forum in November 2009, he managed to find 20 people to try it out initially. The first 20 users doubled within a day and the number of users continued to grow exponentionally over a short period of time. By January, 2010, approximately 50,000 users accessed the site daily. By February, 2010, the Complainant’s website was attracting approximately 130,000 visitors per day, with over 3.9 million monthly visitors. Over the past 8 years, the Complainant’s video chat platform has achieved continuing success, always in association with the CHATROULETTE brand.
The Complainant registered the domain name on November 16, 2009, and owns several trademark registrations, including the following:
- European Union Trade Mark Registration No. 008944076 for CHATROULETTE registered on December 4, 2012 (filed on March 10, 2010);
- European Union Trade Mark Registration No. 008946352 for CHATROULETTE.TO registered on August 19, 2012 (filed on March 11, 2010);
- German Trademark Registration No. 302010003706 for CHATROULETTE registered on February 21, 2013 (filed on March 10, 2010);
- United States Trademark Registration No. 4,445,843 for CHATROULETTE registered on December 10, 2013 (filed on January 10, 2011);
- Russian Federation Trademark Registration No. 429957 for CHATROULETTE registered on February 10, 2011.
The Respondent registered the disputed domain name on March 19, 2010. At the time the Complaint was filed the disputed domain name reverted to a website which provides online webcam-based conversations of similar nature to the Complainant’s website services. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name wholly incorporates the Complainant’s registered trademark for CHATROULETTE, except for the addition of the generic term “aussie”, which commonly refers to an Australian. Accordingly, the disputed domain name is confusingly similar to the Complainant’s trademark.
The Complainant contends that the Respondent is not known by the name Chatroulette or Aussiehatroulette, and has not been authorized, licensed or permitted in any way by the Complainant to use a trademark which is confusingly similar to CHATROULETTE. The Respondent has not used the disputed domain name in association with a bona fide offering of goods and services. The disputed domain name has been used in association with a website that provides on-line webcam-based conversations in direct competition of the Complainant’s website. Further, the Respondent has masked his identity through the use of privacy protection services for many years.
The Complainant further submits that the Respondent has registered and used the disputed domain name in bad faith. The Respondent must have been aware of the Complainant and the Complainant’s trademark rights in the CHATROULETTE mark and the Complainant’s domain name when it registered the disputed domain name. The Complainant’s reputation and popularity in the Complainant’s trademark CHATROULETTE and associated website and business grew exponentially after it was launched in November 2009, and as a result, the CHATROULETTE mark and website received significant attention and publicity. Further, the Respondent has not used the disputed domain name in association with a bona fide offering of goods and services, but has used the disputed domain name in association with a website that offers chat services that are in direct competition with the Complainant’s website for purposes of monetary gain. The Respondent by registering and using this confusingly similar domain name has interfered with the Complainant’s business. The Complainant further contends that the Respondent did not respond to the cease and desist letters sent in July, 2018. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest 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
The Panel finds that the Complainant does have recognizable trademark rights in the trademark CHATROULETTE by virtue of his trademark registrations listed in paragraph 4 of this Decision.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark CHATROULETTE, as the disputed domain name replicates the Complainant’s registered trademark except for the addition of the term “aussie” which refers to an Australian. This alteration to a distinctive mark does not prevent a finding of confusing similarity, since the relevant trademark is recognizable within the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to lack of rights and legitimate interests. The Complainant clearly owns rights in the registered mark CHATROULETTE as noted in paragraph 4 of this Decision. The Complainant has used his trademark and the domain name for more than 8 years in association with his website which provides a video chat room for Internet users around the world. The evidence filed in this proceeding, which was not contested by the Respondent, supports the fact that the Complainant began his website chat room services in November 2009, and attracted a significant number of users within a very short period of time, all before the Respondent registered the disputed domain name. Proof of this growth is shown in the analytics evidence submitted in the Complaint. In these circumstances, it is very likely that the Respondent was aware of the Complainant’s trademark and website services, particularly because the Respondent chose to adopt a domain name by combining the term “aussie” and the Complainant’s chosen “chatroulette” moniker which has no meaning or function except for its connection to “chatroulette”.
The Respondent was not authorized or licensed to use the Complainant’s trademark, and the Respondent is not commonly known by the term “aussiechatroulette”.
The Respondent is using the disputed domain name in association with a website that provides online webcam-based conversations, which are in direct competition of the Complainant’s services, and which supports the conclusion that the Respondent is not using the disputed domain in association with an offering of bona fide goods and/or services.
In this situation, the burden shifts to the Respondent to bring forward evidence of rights and legitimate interests. The Respondent did not respond to the Complaint.
Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As set out above, the Panel is prepared to find that the Respondent was likely aware of the Complainant’s trademark rights in the CHATROULETTE mark when it registered the disputed domain name . This conclusion is supported by the fact that the Respondent is using the disputed domain name in association with a website that redirects Internet users to a website which provides competing online chat websites for purposes of monetary gain. This conduct reflects a clear intention to interfere with the Complainant’s business in a manner which is abusive under the Policy. The Respondent has failed to provide any evidence to explain its conduct.
The Panel is prepared to accept the claims made by the Complainant, and finds that the Respondent registered and has used the disputed domain name in bad faith.
The Complainant has therefore satisfied the requirements 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 name be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Date: December 17, 2018
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