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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Domain Administrator, See PrivacyGuardian.org / Zhichao Yang

Case No. D2018-2588

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 Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Zhichao Yang of Hefei, Anhui, China.

2. The Domain Name and Registrar

The disputed domain name <vhatroulette.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2018. On November 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 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 14, 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 15, 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 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2018.

The Center appointed Jane Seager as the sole panelist in this matter on January 3, 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

The Complainant, Andrey Ternovskiy, a Russian individual based in Malta, is the developer and owner of the website “www.chatroulette.com” commonly known as “Chatroulette”. Users of the Complainant’s website are paired with random people from around the world for real-time, webcam-based conversations. The Complainant registered the domain name <chatroulette.com> on November 16, 2009, and launched its website shortly thereafter. According to the Complainant, the Chatroulette website rapidly gained widespread popularity. It provides evidence showing that for the period of November 2017 to January 2018, its website received over 4.5 million monthly visits.

In connection with its Chatroulette website, the Complainant owns, inter alia, the following trademarks:

- United States Trademark CHATROULETTE, registration number 4445843, registered on December 10, 2013;

- European Union Trade Mark CHATROULETTE, registration number 008944076, registered on December 4, 2012; and

- Chinese Trademark CHATROULETTE, registration number 8126890, registered on May 7, 2011.

The disputed domain name was registered on February 28, 2018, using a privacy service. The disputed domain name redirects to a parking page at “www.myfreeadult.com” displaying pay-per-click links to third-party websites, including various webcam-based, adult-entertainment websites.

On September 25, 2018, the Complainant sent a cease-and-desist letter to the privacy service through which the disputed domain name was registered, requesting transfer of the disputed domain name. The Complainant sent a second notice on October 2, 2018. The Complainant did not receive any reply to its cease-and-desist letter or subsequent reminder.

5. Parties’ Contentions

A. Complainant

The Complainant claims to have rights in the CHATROULETTE trademark by virtue of its registration and use as outlined in the factual background section above. The Complainant states that the disputed domain name is confusingly similar to the Complainant’s trademark, noting that the disputed domain name differs from the Complainant’s trademark by only one letter – the replacement of the letter “c” with the letter “v”, which happen to be adjacent to one another on a “qwerty” keyboard. The Complainant says that this is a purposeful misspelling of the Complainant’s trademark, which amounts to a prototypical example of typosquatting. The Complainant further submits that the applicable generic Top-Level Domain (“gTLD”) may be disregarded for the purposes of comparison under the first element, as it is a “standard registration requirement”.

The Complainant argues that the Respondent has no rights or legitimate interests on the disputed domain name. It states that the Respondent is not affiliated with the Complainant in any way. The Complainant states that it has not granted any permission for the Respondent to make use of its trademark in any manner, including in domain names. The Complainant states that the Respondent is not commonly known by the disputed domain name, noting that the Respondent’s name “Zhichao Yang” does not in any way resemble the disputed domain name. The Complainant further submits that the Respondent’s use of a privacy service equates to a lack of rights or legitimate interests in the disputed domain name. The Complainant argues that the Respondent’s redirection of the disputed domain name to the third-party website “www.myfreeadult.com” displaying pay-per-click links to various third-party websites, some of which directly compete with the Complainant’s business, does not amount to a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant argues that its CHATROULETTE trademark is known internationally, and that at the time the Respondent registered the disputed domain name, the Respondent knew or should have known of the Complainant’s trademark. The Complainant states that registration of a domain name containing a well­known trademark constitutes bad faith per se. The Complainant further submits that typosquatting itself has been taken as evidence of bad faith registration and use by previous UDRP panels. In this regard, the Complainant submits that the Respondent is trying to capitalize on typing errors committed by Internet users searching for the Complainant online. The Complainant submits that the Respondent’s use of the disputed domain name causes disruption to the Complainant’s business, as it redirects Internet users to a third-party website displaying multiple links to the Complainant’s competitors. The Complainant alleges that the Respondent has been involved in over 100 domain name disputes, including being named as a Respondent in two prior UDRP cases brought by the Complainant. As such, the Complainant states that the Respondent is engaged in a bad faith pattern of domain name registration. Finally, the Complainant states that the Respondent’s use of a privacy service and its failure to reply to the Complainant’s cease-and-desist communications is further evidence of the Respondent’s bad faith.

The Complainant requests transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

To succeed in its Complaint, the Complainant must prove on the balance of probabilities that it has satisfied the requirements of paragraph 4(a) of the Policy, as follows:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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

Under paragraph 4(a) of the Policy, the Complainant must first establish that it has rights in a trademark. The Panel finds that the Complainant has established rights in the CHATROULETTE trademark in light of its registration and use, details of which are set out in section 4 above.

The Panel finds the disputed domain name to be confusingly similar to the Complainant’s CHATROULETTE trademark. The disputed domain name incorporates the Complainant’s CHATROULETTE trademark, altered only by the replacement of the letter “c” with the letter “v”. The letters “c” and “v” being adjacent on a “qwerty” keyboard, the Panel finds it more likely than not that this was an intentional misspelling of the Complainant’s trademark, and considers there to be sufficiently recognizable aspects of the relevant mark to warrant a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9. The Panel accepts the Complainant’s submission that the applicable gTLD, in this case “.com”, may be disregarded under the first element confusing similarity test, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.

In light of the foregoing, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

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. See WIPO Overview 3.0, section 2.1.

Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:

(i) before any notice to the respondent of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant states that it has never granted permission for the Respondent to use its CHATROULETTE trademark, and that it has no affiliation with the Respondent.

The Complainant argues that the Respondent is not making a bona fide use of the disputed domain name. In support of this argument, the Complainant has provided evidence in the form of screen captures and web-status reports showing that the disputed domain name redirects to a parking page at “www.myfreeadult.com” that displays pay-per-click links to various third-party websites, some of which allegedly compete with the Complainant’s business. The Complainant asserts that such use of the disputed domain name does not amount to a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. The Panel accepts this submission, noting that prior UDRP panels have consistently found that use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark. See WIPO Overview 3.0, section 2.9.

As stated by the Complainant, the Respondent’s name “Zhichao Yang” bears no resemblance to the disputed domain name, and there is no other evidence in the record to suggest that the Respondent has otherwise become commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.

Finally, there is no evidence in the record to suggest that the disputed domain name has been used in connection with any legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy.

Based on the Complainant’s assertions and supporting evidence, as outlined above, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent, having been duly notified of this proceeding by the Center, has failed to come forward with any reply to rebut the Complainant’s prima facie case, and the Panel finds no other basis on which the Respondent could be said to have any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered on February 28, 2018, nearly a decade after the Complainant launched its Chatroulette website, and several years after the Complainant’s accrual of registered trademark rights in several jurisdictions throughout the world, including in China where the Respondent appears to be located. As noted by the Complainant, UDRP panels have consistently found that the mere registration of a domain name comprising a typo of a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4. Noting that the disputed domain name replicates the Complainant’s <chatroulette.com> domain name from which it operates its Chatroulette website, save for the replacement of the letter “c” with the letter “v” which happen to be adjacent to one another on a “qwerty” keyboard, the Panel finds that the Respondent most likely had the Complainant’s trademark and domain name in mind when registering the disputed domain name, and sought to capture Internet traffic meant for the Complainant. The disputed domain name constitutes a typical example of typosquatting. In light of the foregoing, the Panel finds that the Respondent registered the disputed domain name in bad faith.

The Panel finds that the use of the disputed domain name to redirect Internet users to a parking page displaying pay-per-click links to third-party websites, including to those of competitors of the Complainant and to other adult-entertainment websites, amounts to use of the disputed domain name in bad faith. The Respondent, or a third party, is deriving financial gain as a result of the misdirection of Internet users seeking the Complainant’s Chatroulette website. See paragraph 4(b)(iv) of the Policy.

The Panel also notes that the Respondent has previously been named as a respondent in a long list of UDRP proceedings, including at least two filed by the Complainant. See Andrey Ternovskiy dba Chatroulette v. Zhichao Yang, WIPO Case No. D2018-0817 (in relation to the domain names <chataroulette.com>, <chatrouleette.com> and <chatrouletti.com>) and Andrey Ternovskiy dba Chatroulette v. Domain Administrator, See PrivacyGuardian.org / Zhichao Yang, WIPO Case No. D2018-1664 (in relation to the domain names <chatroulerte.com>, <chatrouletye.com> and <chatrouleyte.com>). The above examples, as well as many others involving trademarks of third parties referred to by the Complainant, all involve single-letter misspellings of the respective trademark. As such, the Panel finds that the Respondent has engaged in a bad-faith pattern of abusive domain name registration.

Finally, in the circumstances of the present case, the Panel further finds the Respondent’s use of a privacy service to mask its identity together with the Respondent’s failure to reply to the Complainant’s cease-and-desist communications to be further evidence of the Respondent’s bad faith.

The Panel finds that the Complainant has satisfied the requirements of 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 <vhatroulette.com> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: January 12, 2019

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