WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Domain Admin, Furrer Firstnet

Case No. D2018-2254

1. The Parties

The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Domain Admin, Furrer Firstnet of Brig, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <chatroulette.singles> (the “Domain Name”) is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2018. On October 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 8, 2018, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on October 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2018.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on November 7, 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 following facts are undisputed.

The Complainant is an online chat website that pairs random people from around the world together for
real-time, webcam-based conversations. The website of the Complainant is frequently visited. In the period November 2017 – January 2018 the website of the Complainant averaged over 4.5 million monthly visitors.

The Complainant is the owner of a number of registrations for the trademark CHATROULETTE in various jurisdictions, including but not limited to the United States of America trademark (word mark) registration number 4445843, filed on January 10, 2011, registered on December 10, 2013 for services in inter alia classes 38 and 45 and various European Union Trade Marks (word marks) such as the word mark with registration number 008944076, applied for on March 10, 2010, and registered on December 4, 2012 for services in classes 35, 38 and 42 (hereinafter referred to as the “Trademark”).

Over the years, the popularity of the website of the Complainant has been boosted by various appearances in news and media, including The New York Times, The New Yorker, and New York magazine, as well as on television shows including Good Morning America and The Daily Show with Jon Stewart.

The Domain Name was registered by the Respondent on February 6, 2014. The Domain Name resolves to a website that includes various pay-per-click links (the “Website”).

5. Parties’ Contentions

A. Complainant

Insofar as relevant, the Complainant contends the following.

The Domain Name reproduces the Trademark in its entirety.

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 Trademark in any manner, including in domain names. The Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests. Furthermore, the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Trademark.

The Respondent is using the Domain Name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business. For instance, the Website features multiple third-party links for “Webcam Chat”, “Live Chat Rooms” and “Video Chat Rooms”. Further, the Website features a link that directly references the Complainant and its business. Presumably, the Respondent receives pay-per-click fees from the linked websites that are listed at the Website. As such, the Respondent is not using the Domain Name to provide a bona fide offering of goods or services.

By registering the Domain Name, the Respondent has created a domain name that is confusingly similar to the Trademark. As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant. At the time of registration of the Domain Name, the Respondent knew, or at least should have known, of the existence of the Trademark and that registration of domain names containing well-known trademarks constitutes bad faith per se.

The Complainant has sent several cease and desist letters to the Respondent via the Registrar. The Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the Trademark.

The Complainant has shown that it has rights in the Trademark

The Domain Name incorporates the Trademark in its entirety. The addition “.singles” is in this case irrelevant or neutral at a minimum.

Thus, the Panel finds that the Domain Name is identical to the Complainant’s Trademark.

The Panel is therefore satisfied that the first element of the Policy is met.

B. Rights or Legitimate Interests

The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:

(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making 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.

There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.

The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “Chatroulette” is the Respondent’s name or that the Respondent is commonly known as “Chatroulette”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked or has ever been permitted in any way by the Complainant to register or use the Complainant’s marks, or to apply for or use any domain name incorporating the Trademark.

Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods or services. As brought forward by the Complainant, the pay-per-click links compete with and capitalize on the reputation and goodwill of the Trademark. The use of a domain name to host a parked page comprising of such
pay-per-click links does not represent a bona fide offering. See in this regard section 2.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Finally, given the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP panels “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090; and Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493).

Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The Panel finds that the Domain Name was registered and is being used in bad faith.

In light of the evidence filed by the Complainant and the absence of a response, the Panel finds that the Complainant’s Trademark and activities are well known throughout the world. In addition, the Website refers to the Complainant’s services. Moreover, the Top-Level Domain “.singles” corresponds to the Complainant’s area of business activity. The website of the Complainant pairs random people from around the world together for real-time, webcam-based conversations. It is therefore likely that the website is used by inter alia people looking to come in contact with (other) people without a relationship, in other words “singles”. The choice of a Top-Level Domain that corresponds to the Complainant’s area of activity is an “additional bad faith consideration factor”. See Section 3.2.1 of WIPO Overview 3.0.

Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights when it registered the Domain Name and must have been aware when using the Domain Name.

This behavior of the Respondent fits the example of paragraph 4(b)(iv) of the Policy, i.e., that 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.

Although the lack of a response by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use by the Respondent is in bad faith.

In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.

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 Domain Name <chatroulette.singles> be transferred to the Complainant.

Willem J. H. Leppink
Sole Panelist
Date: November 9, 2018