WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy d/b/a Chatroulette v. WhoisGuard Protected, WhoisGuard, Inc. / Bob Maynard, Bootlets

Case No. D2017-0408

1. The Parties

The Complainant is Andrey Ternovskiy d/b/a Chatroulette of Moscow, Russian Federation, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Bob Maynard, Bootlets of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Name and Registrar

The disputed domain name <sexchatroulette.win> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2017. On March 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 March 3, 2017, 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 March 3, 2017.

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 March 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2017.

The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on April 3, 2017. 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.

As confirmed by the Registrar, the language of the disputed domain name’s registration agreement is English. Accordingly, pursuant to paragraph 11(a) of the Rules, the language of this administrative proceeding is English.

4. Factual Background

The Complainant is the owner and creator of a website that pairs random people from around the world together for real-time, webcam-based conversations. Since its launch in 2009, the Complainant’s website at “www.chatroulette.com” has seen a steady increase in traffic, averaging 205,105 monthly visitors between August 2015 and August 2016, according to “www.compete.com”.¹

The Complainant is the owner of United States of America (“United States”), European Union, and German trademark registrations consisting of the term CHATROULETTE for services included in international classes 35, 38, 42, and 45, namely online video chat services and online video social introduction and networking services. Thus for instance, the Complainant owns European Union Trade Mark registration number 008944076, granted on December 4, 2012, for CHATROULETTE (word mark).

The disputed domain name was created on June 30, 2016, as confirmed by the Registrar. The disputed domain name is currently inactive but previously hosted a website featuring sexually-explicit content.

5. Parties’ Contentions

A. Complainant

In summary, the Complainant contends as follows:

i. By combining the term “chat”, which is one of the core purposes of the Complainant’s website, and the word “roulette”, which is associated with the thrill of unpredictability, the essence of the Complainant’s innovative website and business was captured in the Complainant’s distinctive mark CHATROULETTE;

ii. The mere addition of the generic term “sex” to the Complainant’s trademark does not negate the confusing similarity between the disputed domain name and the Complainant’s mark under Policy paragraph 4(a)(i);

iii. The granting of registrations by the United States Patent and Trademark Office, the European Union Intellectual Property Office, and the German Patent and Trademark Office is prima facie evidence of the validity of the CHATROULETTE trademark owned by the Complainant;

iv. The Respondent is not sponsored by or affiliated with the Complainant in any way;

v. The Complainant has not given the Respondent permission to use the Complainant’s trademark in any manner, including in domain names;

vi. The Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests;

vii. Numerous previous UDRP panels have held that the 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 rights or legitimate interests;

viii. The Respondent registered the disputed domain name on June 30, 2016, which is significantly after the Complainant’s first use in commerce of the CHATROULETTE mark in 2009, and also significantly after said mark’s filing date;

ix. At the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant’s CHATROULETTE mark, which is known internationally, with trademark registrations across numerous countries;

x. Previous UDRP panels have consistently held that a respondent’s use of a confusingly similar domain name to direct unsuspecting Internet users to adult content, as here, is evidence of bad faith registration and use of that domain name;

xi. The Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which previous UDRP panels have held serves as further evidence of bad faith registration and use;

xii. The Respondent has ignored the Complainant’s cease-and-desist- letters, which previous UDRP panels have held may be considered an additional factor in finding bad faith registration and use of a domain name;

xiii. On balance, it is more likely than not that the Respondent knew of and targeted the Complainant’s CHATROULETTE mark, therefore, the Respondent should be found to have registered and used the disputed domain name in bad faith.

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 in this administrative proceeding, the Complainant must prove that:

(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 was registered and is being used in bad faith.

These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

A. Identical or Confusingly Similar

As explained in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the test for confusing similarity under the UDRP involves a straightforward visual or aural comparison between the trademark and the domain name itself. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent Internet user confusion.

The Panel finds the Complainant’s mark to be so inherently distinctive as to be readily recognizable within the disputed domain name.

Moreover, in the Panel’s view, the addition of the overused term “sex” to the Complainant’s mark fails to remove the disputed domain name from the realm of confusing similarity. See, OLX Inc. v. Ev1 Soft Technologies of Colombia Redes, WIPO Case No. D2011-0501 (“Internet users are very likely to assume that the addition of the word ‘sex’ to the trademark signifies a website associated with the Complainant.”)

Accordingly, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s CHATROULETTE mark.

The Complainant has thus satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

As noted in paragraph 2.1 of the WIPO Overview 2.0, the burden of proof is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).

The Complainant represents that it did not authorize the Respondent to use the CHATROULETTE mark in the disputed domain name. The Complainant also claims that the Respondent is not commonly known by the disputed domain name, as becomes evident from the Respondent’s name.

In light of the above assertions, the Panel finds that the Complainant has put forward a prima facie case on the second element.

The Panel has also formed the view that the streaming of pornographic material on the Respondent’s website is not a bona fide offering of goods or services under Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use of the disputed domain name under Policy paragraph 4(c)(iii), especially because the Respondent’s website diverts traffic from the Complainant’s “www.chatroulette.com” website, and tarnished Complainant’s CHATROULETTE mark by once having associated it to a pornographic site.² See Christian Dior Couture v. Paul Farley, WIPO Case No. D2008-0008, and cited cases therein.

The Panel therefore finds that the Respondent has no rights or legitimate interests for the purposes of the Policy.

This conclusion is only reinforced by the Respondent’s default in the instant proceedings. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond can be construed as an admission that it has no rights or legitimate interests in the disputed domain name).

Consequently, the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires a complainant to show that the disputed domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth the following non-exclusive grounds of bad faith registration and use:

“(i) circumstances indicating that you [the respondent] have registered or 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 your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) you [the respondent] have 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 you [the respondent] have engaged in a pattern of such conduct; or

(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [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 your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”

The Complainant explains that it coined a name that encapsulated the concept and goals of its business by combining the terms “chat” and “roulette”.³

The Panel has run a cursory search of the “chatroulette” term on Google and notes that all results point to the Complainant’s random pairing website.

It ensues that “chatroulette” has no meaning other than to identify the Complainant’s online chatting and networking services. As such, it is not a term others are likely to legitimately select unless seeking to associate themselves with the Complainant. See Expedia Inc. v. Venta, Leonard Bogucki, WIPO Case No. D2001-1222 (“‘Expedia’ is an invented word and, as such, does not appear to be one that others would legitimately choose to use, unless seeking to create an impression of an association with the Complainant.”)

On these premises, it can be inferred that, when it registered the disputed domain name on June 30, 2016, the Respondent targeted the CHATROULETTE mark that the Complainant had been using over the Internet since November 2009.

Additionally, the Panel notes that the Respondent appears to have provided false contact information on the WhoIs database associated with the disputed domain name, as evidenced by the non-delivery report issued on March 8, 2017, whereby the courier company informed the Center that the Respondent’s address was “incomplete/wrong”.

Lastly, the Panel notes that the website at the disputed domain name became inactive sometime after the Respondent received the Complainant’s cease-and-desist letters.

The above circumstances, taken together, persuade the Panel that the disputed domain name was registered and has been used in bad faith within the purview of the Policy.

Consequently, the Complainant has discharged its burden in relation to 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 <sexchatroulette.win> be transferred to the Complainant.

Reynaldo Urtiaga Escobar
Sole Panelist
Date: April 17, 2017

¹ The “www.compete.com” web ranking service was shut down on December 31, 2016.

² The Panel takes note that per the terms of use of the Complainant’s “www.chatroulette.com” website, users’ pornographic activity is prohibited. See “https://en.wikipedia.org/wiki/Chatroulette”.

³ According to on Wikipedia, the Complainant chose the name “Chatroulette” after watching The Deer Hunter, a 1978 film set in the Vietnam War in which prisoners of war are forced to play Russian roulette. This account is more detailed but consistent with the explanation given in the Complaint.