WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Perfect Privacy, LLC / Richard Sell

Case No. D2018-2822

1. The Parties

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

The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America (“United States”) / Richard Sell of New York, New York, United States.

2. The Domain Names and Registrar

The disputed domain names <gaychatroulette.net> and <m4mchatroulette.com> are registered with Register.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 12, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 18, 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 December 21, 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 January 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2019.

The Center appointed David Taylor as the sole panelist in this matter on February 11, 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, an individual based in Malta, is the developer and owner of the site “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 Complainant’s website rapidly gained widespread popularity. The Complainant states that by January 2010 the Complainant’s website was receiving some 50,000 visitors per day, rising to upwards of 130,000 visitors per day in February 2010, and in the period between March and August 2018 the Complainant received an average of 3.39 million monthly visitors.

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

- United States Trademark CHATROULETTE, Registration No. 4445843, filed on January 10, 2011, registered on December 10, 2013 (first use in commerce December 5, 2009); and

- European Union Trademark CHATROULETTE, Registration No. 008944076, filed on March 10, 2010, registered on December 4, 2012.

The disputed domain names were both registered on February 26, 2010. The disputed domain name <m4mchatroulette.com> resolves to a website stating “GAY CHATROULETTE! Random gay chat for men YOU MUST BE OVER 18 TO ENTER”, with a link that says “ENTER”. That link does not appear to lead anywhere, other than to refresh the website’s landing page. The disputed domain name <gaychatroulette.net> does not resolve to an active website.

On September 18, 2018, the Complainant’s representatives sent a cease-and-desist letter to the privacy service with which the disputed domain names had been registered, requesting transfer of the disputed domain name <m4mchatroulette.com>. On September 18, 2018, the Respondent replied, stating:

“I would be willing to surrender the rights to this domain name as well as <gaychatroulette.[net]> (which I also own) if we could reach a financial agreement. Please take into account the registration and maintenance costs associated with these domains, as well as the appreciation of value over the last eight years. The estimated value of each of the sites is approximately $3000. I would be willing to surrender both for $5000. I hope that we can come to an agreement.”

On September 19, 2018, the Complainant’s representatives replied to the Respondent, requesting evidence of the expenses claimed by the Respondent.

On September 19, 2018, the Respondent replied stating:

“I could only pull up the last two years from my credit card statement. I’m attaching an image below. Additionally, I believe it was about $200 for each initial registration, with approximately $164 per year in maintenance costs over the course of almost nine years.

I think $5000 for surrender of both websites is reasonable considering the time that has passed.”

On September 20, 2018, the Complainant replied with a counter-offer of USD 400 as compensation for the transfer of both disputed domain names.

On September 20, 2018, the Respondent replied stating:

“Thanks for your response. $400 will not be sufficient. I have held these websites long before a trademark or copyright was granted. I am sure you are aware (and I hope your client is aware) that it is going to cost a lot more than $5000 in legal fees to have these websites forcibly taken. If that’s even possible. I had hoped for a much better offer, but I would just as soon hang onto these domains for such a small amount of money, being that I am not in violation of anything at this point.”

On September 21, 2018, the Complainant replied, reiterating its offer of USD 400, and requesting evidence of the Registrar’s invoice displaying the disputed domain names.

On September 21, 2018, the Respondent replied stating:

“I appreciate your position on the matter, but I still feel that $400 is not a reasonable offer. According to web calculators these two domains are worth over $6000. So, I am firm in my counteroffer of $5000, and unfortunately I cannot entertain any offers that are well outside this range. If this matter were to go to court (which these cases never do) I am quite certain a judge would award me compensation for current market value of [these] domains. Thanks for your time, and I hope we can come up with an offer that is more mutually beneficial. […]”

The Parties engaged in further communications in an attempt to reach an amicable solution. As no agreement between the Parties was reached, the Complainant proceeded to file the Complaint requesting transfer of the disputed domain names.

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 asserts that the disputed domain names are confusingly similar to the Complainant’s trademark, noting that the addition of the terms “gay” and “m4m” (the Complainant states that “m4m” stands for “men seeking men” in online chatrooms) does not negate the confusing similarity between the disputed domain names and the Complainant’s trademark. The Complainant submits that the applicable generic Top-Level Domain (“gTLD”) may be disregarded for the purposes of comparison under the first element of the Policy, as it is a “standard registration requirement”. The Complainant argues that the Respondent’s use of the disputed domain names to resolve to online web video and chatting websites is further evidence that the disputed domain names are confusingly similar to the Complainant’s trademark.

The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain names. It states that the Respondent is not affiliated with the Complainant in any way. The Complainant states that it has not granted any permission to 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 names, noting that the name of the underlying registrant “Richard Sell” bears no resemblance to the disputed domain names. The Complainant states that on the website available at the disputed domain name <m4mchatroulette.com>, the Respondent offers and attempts to sell the products of the Complainant’s competitors, which directly compete with the Complainant’s own offerings. As such, the Complainant asserts that the Respondent has not attempted to make legitimate use of the disputed domain names.

The Complainant submits that the disputed domain names were registered and are being used in bad faith. Notwithstanding the fact that the Complainant had no registered trademark rights at the time that the disputed domain names were registered, the Complainant states that its Chatroulette website had grown exponentially and had already received widespread media attention by February 2010 when the disputed domain names were registered. The Complainant states that the Respondent therefore knew or at least should have known of the existence of the Complainant’s Chatroulette website at the time of registration of the disputed domain names, and unfairly sought to capitalize on the Complainant’s nascent trademark rights. The Complainant states that the Respondent’s use of the disputed domain names constitutes disruption of the Complainant’s business under paragraph 4(b)(iii) of the Policy, as the websites at the disputed domain names offer online web video and chatting services in competition with those of the Complainant. The Complainant further submits that the by registering two domain names that each target the Complainant’s CHATROULETTE trademark, that the Respondent is engaged in a pattern of bad faith domain name registration. The Complainant also asserts that the Respondent’s use of a privacy service to hide his identity is further evidence of the Respondent’s bad faith.

B. Respondent

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

6. Discussion and Findings

In order to succeed, the Complainant must demonstrate, on the balance of probabilities, that the elements listed in paragraph 4(a) of the Policy have been satisfied, specifically:

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

(ii) the Respondent has no rights or legitimate interests in the disputed domain names; and

(iii) the disputed domain names were registered and are 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 that the disputed domain names are confusingly similar to the Complainant’s trademark. The disputed domain names incorporate the Complainant’s CHATROULETTE trademark in its entirety, altered only by the addition of the elements “gay” and “m4m” as prefixes. The Panel finds that such additions do not prevent a finding of confusing similarity with the Complainant’s trademark which is clearly recognizable in the disputed domain names. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The Panel accepts the Complainant’s submission that the applicable gTLD, in this case “.com” and “.net” respectively, 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 Panel finds that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain name <gaychatroulette.net> does not appear to resolve to any active website, and there is no evidence of the Respondent’s demonstrable preparations to use that disputed domain name. The disputed domain name <m4mchatroulette.com> resolves to a website purporting to offer substantially similar random web chat services to those offered by the Complainant. Whether or not the Respondent’s website at “www.m4mchatroulette.com” is commercial in nature is not immediately clear; however, based on the available record the Panel finds it more likely than not that by creating such a website, the Respondent attempted to take advantage of the association between the disputed domain name <m4mchatroulette.com> and the Complainant’s CHATROULETTE trademark in order to attract Internet users to his website. There being no association between the Parties, the Panel finds that the above does not support a finding of rights or legitimate interests in the disputed domain names within the meaning of paragraph 4(c)(i) of the Policy.

There is no evidence that the Respondent, Richard Sell, is commonly known by the disputed domain names. Furthermore, the Respondent does not appear to be making any legitimate noncommercial or fair use of the disputed domain names. As noted above, the disputed domain name <gaychatroulette.net> is not being used. Noting the misleading impression of association between the disputed domain name <m4mchatroulette.com>, the Complainant’s CHATROULETTE trademark, and the Complainant’s website available at “www.chatroulette.com”, the Panel does not consider the Respondent’s use of the disputed domain name <m4mchatroulette.com> to amount to a legitimate noncommercial or fair use. Rather, for reasons set out in more detail below, the evidence on records suggests that the Respondent’s underlying intentions with regard to the disputed domain names were to eventually sell them to the Complainant for profit.

Based on the statements and evidence put forward by the Complainant, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain names. As such, the burden of production shifts to the Respondent. The Respondent has not come forward with any statements or evidence to rebut the Complainant’s prima facie case.

In the absence of any reply to the Complainant’s contentions above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, and that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel notes that the registration of the disputed domain names pre-dates the accrual of the Complainant’s registered trademark rights. Subject to limited circumstances, where a respondent registers a domain name before the complainant’s trademark rights accrue, UDRP panels will not normally find bad faith on the part of the respondent. As an exception, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, UDRP panels have been prepared to find that the respondent has acted in bad faith. See WIPO Overview 3.0, section 3.8.

In light of the circumstances immediately prior to the registration date of the disputed domain names (February 26, 2010), it can be inferred that the Respondent had the Complainant in mind when registering the disputed domain names. As mentioned above, shortly after its launch the Complainant’s website was already experiencing a relatively high volume of Internet traffic, with upwards of 130,000 visitors per day in February 2010. While the Complainant’s CHATROULETTE trademark is composed of two dictionary words, namely “chat” and “roulette”, the Panel does not consider these words would ordinarily be associated with one another. Rather, to the Panel’s knowledge, the two terms in combination are exclusively associated with the Complainant and its website. On this basis, the Panel finds it more likely than not that the Respondent had knowledge of the Complainant, and its website, and registered the disputed domain names in order to capture Internet traffic meant for the Complainant. The website appearing at the disputed domain name <m4mchatroulette.com>, which purports to offer substantially similar web chat services as those offered by the Complainant, supports such a finding.

In September 2018, the Complainant contacted the Respondent in an attempt to settle this matter without the need to file a UDRP proceeding. In reply to the Complainant’s communications, the Respondent consistently demanded compensation in the amount of USD 5,000 for transfer of the disputed domain names, alleging that such an amount corresponded to the Respondent’s out-of-pocket costs directly related to the disputed domain names. Notwithstanding the Complainant’s repeated requests for invoices setting out the registration fees for the disputed domain names, the Respondent has not come forward with any evidence of his documented costs in relation to the disputed domain names. The Panel notes that there is no evidence that the disputed domain name <gaychatroulette.net> has ever resolved to an active website, and the website at “www.m4mchatroulette.com” appears to have very limited functionality. In fact, the Respondent’s reference to “web calculators” in his correspondence with the Complainant would tend to support the conclusion that the Respondent’s request for USD 5,000 did not reflect the Respondent’s actual out­of­pocket costs associated with the disputed domain names, but rather reflected the Respondent’s estimated value of the disputed domain names, based on their perceived association with the Complainant.

In the circumstances, the Panel finds that the Respondent’s conduct prior to the filing of the UDRP Complaint supports the finding that the Respondent registered the disputed domain names with knowledge of the Complainant’s nascent rights in the CHATROULETTE trademark, with an ultimate view to selling the disputed domain names to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names. See paragraph 4(b)(i) of the Policy. The Panel draws a negative inference from the Respondent’s failure to file a Response to the Complaint, having been duly notified of these proceedings by the Center.

For the reasons set out above, the Panel finds that the disputed domain names were registered and are being used in bad faith, and 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 names <gaychatroulette.net> and <m4mchatroulette.com> be transferred to the Complainant.

David Taylor
Sole Panelist
Date: March 8, 2019

¹ The Respondent initially quoted the domain name <gaychatroulette.com>, but subsequently clarified that he owned the disputed domain name <gaychatroulette.net>.