The Complainant is Andrey Ternovskiy, dba Chatroulette, Malta, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Privacydotlink Customer 2923458 / Yancy Naughton, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Uniregistrar Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2019. On April 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2019, 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 April 12, 2019 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 April 29, 2019
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 April 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2019.
The Center appointed Knud Wallberg as the sole panelist in this matter on June 5, 2019. 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
CHATROULETTE was created and is owned by the Complainant, Andrey Ternovskiy in 2009, and it very quickly established popularity and a reputation. The service is an online chat website that pairs random people from around the world together for real-time, webcam-based conversations.
The Complainant is the owner of trademark registrations of the CHATROULETTE mark across various jurisdictions, including the US registration No. 4445843, registered on December 10, 2013 for various services in international classes 38 and 45 and a Russian Trademark Registration No. 429957 for CHATROULETTE dated February 10, 2011.
The Complainant further states that Complainant’s extensive and continuous use of the CHATROULETTE trademarks, and the fact that the Complainant has made significant investments over the years to promote and protect these trademarks and the CHATROULETTE business across the Internet and world, demonstrate that the Complainant enjoys a substantial degree of public recognition in CHATROULETTE and, consequently, that the mark become uniquely and distinctly associated with the Complainant.
The Complainant is the holder of the domain name and of the corresponding website.
The Respondent registered the disputed domain name on September 2, 2011, and it resolves to a pay-per-click (“PPC”) website with links related to various chat-related services. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s famous CHATROULETTE mark since it incorporates the mark in its entirety. The addition of the term “like” and of the hyphen does nothing to distinguish the disputed domain name from the Complainant’s trademarks.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The pertinent WhoIs information thus identifies the Registrant as “Yancy Naughton”, which does not resemble the disputed domain name in any manner. In addition, the Respondent is using the disputed domain name to redirect Internet users to a website at “ww6.” featuring links to third-party websites, some of which directly compete with Complainant’s business, for instance, online chatting platforms and/or services. Further, the Respondent’s website also features a link titled “Chat Roulette”, which directly references the Complainant and its business.
Finally, the Complainant asserts that given the fame of the Complainant’s trademark CHATROULETTE and the Complainant’s prior rights in the mark, the Respondent must have been aware of the Complainant’s rights at the time of registration of the disputed domain name. Further, the Respondent uses the disputed domain name actively in a way that intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s mark. In addition, the Complainant asserts that the fact that the Respondent uses a privacy service and that the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding supports an inference of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark CHATROULETTE since it incorporates the said registration in full with the addition of the generic and descriptive denomination “like”, and a hyphen, as prefix. The generic Top-Level Domain (“gTLD”) “.com” does not dispel a finding of confusing similarity as it is disregarded under the first element confusing similarity test, see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Given the circumstances of this case, and in particular the way that the Respondent has been using the disputed domain name, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has chosen not to participate in the proceeding, and indeed there is no other evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances, which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case and in particular the distinctive nature of the mark and the evidence on record of the longstanding use of the Complainant’s trademark CHATROULETTE, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s marks. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name, which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
Also, the Respondent has been and is presently using the disputed domain name actively for a standard PPC page that contains links to the Complainant’s website as well as to the websites of third parties some of which appear to offer products of competitors of the Complainant. It is thus obvious to the Panel that the Respondent is using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, web users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
Noting that the disputed domain name incorporates a registered trademark and that the disputed domain name is used for commercial gain and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) and 4(b) of the Policy are also fulfilled in this case. 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.
Knud Wallberg
Sole Panelist
Date: June 17, 2019
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