ANDREY TERNOVSKIY dba CHATROULETTE v. Peter Tewes
Claim Number: FA1409001582645
Complainant is ANDREY TERNOVSKIY dba CHATROULETTE (“Complainant”), represented by Stina Pilotti of CSC Digital Brand Services AB, Sweden. Respondent is Peter Tewes (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chatroulette-alternativen.com>, <chatroulettefreak.com>, <chatroulettelove.com>, <chatroulette-sms.com> and <toychatroulette.com>, registered with Cronon Ag.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 30, 2014; the National Arbitration Forum received payment on October 14, 2014. The Complaint was submitted in both English and German.
On October 2, 2014, Cronon Ag confirmed by e-mail to the National Arbitration Forum that the <chatroulette-alternativen.com>, <chatroulettefreak.com>, <chatroulettelove.com>, <chatroulette-sms.com> and <toychatroulette.com> domain names are registered with Cronon Ag and that Respondent is the current registrant of the names. Cronon Ag has verified that Respondent is bound by the Cronon Ag registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 3, 2014, the Forum served the German language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@chatroulette-alternativen.com, postmaster@chatroulettefreak.com, postmaster@chatroulettelove.com, postmaster@chatroulette-sms.com, and postmaster@toychatroulette.com. Also on November 3, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a), the Panel determines UDRP the language requirement has been satisfied through the German language Complaint and Commencement Notification, and, absent a Response, concludes the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Chatroulette brand and business is owned by Andrey Ternovskiy. Mr. Ternovskiy holds several trademark registrations in the United States and Europe (including The United States Patent and Trademark Office’s (USPTO) Trademark Electronic Search System, the Office for Harmonization in the Internal Market (OHIM), and the German Patent and Trade Mark Office (DPMA)) for CHATROULETTE. Complainant has spent a considerable amount of time and money protecting its intellectual property rights. The trademarks relevant to this instant matter are:
[i.] CHATROULETTE for telecommunication services, namely, providing real time video communications in the nature of transmission of information through video communication systems, chat video messaging in the nature of virtual rooms established via text messaging, and electronic transmission of entertainment and information content; computer services, namely, providing on-line facilities for real-time interaction with other computer users concerning topics of general interest; providing internet video chat rooms. As well as, computer services, namely, providing information regarding and in the nature of on-line dating services, on-line video social introduction services, and on-line video communications in the nature of on-line social networking services; video chat services, namely, on-line social networking services for the purpose of providing an on-line computer database enabling strangers to meet and communicate real-time; providing a social networking website for entertainment purposes. (U.S. Reg. No. 4,445,843);
[ii] CHATROULETTE for management, consultancy
relating to business management, organizational project management in the IT
field; business consultancy for franchising concepts; Merchandising, namely,
sales promotion [Sales promotion , cross promotion for others ] ; development
of sales and promotional incentive schemes for direct marketing purposes;
mediation of Contracts, for others, for the buying and selling of goods and /
or through the use of services; Arranging and conducting of advertising events;
Sponsoring in the form of advertising; Presentation of companies on the Internet
and other media; Collection and systematization of data of any kind into
computer databases; Implementation of auctioneering, including on the Internet;
services an advertising agency; PR [ public relations ]; Collecting all kinds
of information into computer databases; Compilation and systemization of
information into computer databases; Maintenance of data in computer databases;
commercial administration of the licensing of goods and services for others;
digital data processing, namely, electronic data storage. As well as,
broadcasting of television programs; Broadcasting of radio programs;
Broadcasting of cable television programs; Broadcasting of radio programs;
Broadcasting of teleshopping programs; provide access to a global computer
network; Providing access to computer programs in data networks; Providing
access to information on the Internet; Providing access to computer programs in
data networks; Provision of Internet Chat rooms; Providing portals on the
Internet; Providing telecommunications channels for teleshopping services;
Operation of chat lines, chat rooms and forums; Videotext service; electronic
messaging; News and image transmission by computer; Collection and supply of
news; Collection and delivery of press releases; Send Teletext With natural
gas, cable and satellite connection; Distribution of radio and television
broadcasts / programs via wireless or wireline networks; Broadcasting of film,
television, radio and teletext , videotext programs or transmissions Including
video -on-demand and on the world wide web; On- line services and
transmissions, namely transmission of information and messages, including
E-mail; Transmission of computer programs, gadgets, widgets, plug-ins ,
applets, ringtone, voice, music, MP3, graphics, video and image files as well
as information and news in the way of the wireless Up and down the store via a
global computer network to computers, and wireless communication devices,
including mobile phones. As well as, Services of a computer programmer; design
and development of computer hardware and software; Creation of programs for
data processing, namely, updating, design and rental of computer software;
Design, consultancy in the design and design of homepages and Internet pages;
Development of computer programs for integration into a graphical user
interface or website (gadgets, widgets, plug-ins, applets); Rental and
maintenance of memory space for websites, for others (webhosting); Provision of
electronic memory space (webspace) on the Internet; Providing search engines
for the Internet; Renting space on the Internet; rental of
Web servers; Rental of computer software. (Community
trade mark "CTM" 008944076);
[iii.] CHATROULETTE for management, consultancy relating to business management, organizational project management in the IT field; business consultancy for franchising concepts; Merchandising, namely, sales promotion [Sales promotion , cross promotion for others ] ; development of sales and promotional incentive schemes for direct marketing purposes; mediation of Contracts, for others, for the buying and selling of goods and / or through the use of services; Arranging and conducting of advertising events; Sponsoring in the form of advertising; Presentation of companies on the Internet and other media; Collection and systematization of data of any kind into computer databases; Implementation of auctioneering, including on the Internet; services an advertising agency; PR [ public relations ]; Collecting all kinds of information into computer databases; Compilation and systemization of information into computer databases; Maintenance of data in computer databases; commercial administration of the licensing of goods and services for others. As well as, broadcasting of television programs; Broadcasting of radio programs; Broadcasting of cable television programs; Broadcasting of radio programs; Broadcasting of teleshopping programs; provide access to a global computer network; Providing access to computer programs in data networks; Providing access to information on the Internet; Providing access to computer programs in data networks; Provision of Internet Chat rooms; Providing portals on the Internet; Providing telecommunications channels for teleshopping services; Operation of chat lines, chat rooms and forums; Videotext service; electronic messaging; News and image transmission by computer; Collection and supply of news; Collection and delivery of press releases; Send Teletext With natural gas, cable and satellite connection; Distribution of radio and television broadcasts / programs via wireless or wireline networks; Broadcasting of film, television, radio and teletext , videotext programs or transmissions Including video -on-demand and on the world wide web; On- line services and transmissions, namely transmission of information and messages, including E-mail; Transmission of computer programs, gadgets, widgets, plug-ins , applets, ringtone, voice, music, MP3, graphics, video and image files as well as information and news in the way of the wireless Up and down the store via a global computer network to computers, and wireless communication devices, including mobile phones. As well as, services of a computer programmer; design and development of computer hardware and software; Creation of programs for data processing, namely, updating, design and rental of computer software; Design, consultancy in the design and design of homepages and Internet pages; Development of computer programs for integration into a graphical user interface or website (gadgets, widgets, plug-ins, applets); Rental and maintenance of memory space for websites, for others (webhosting); Provision of electronic memory space (webspace) on the Internet; Providing search engines for the Internet; Renting space on the Internet; rental of Web servers; Rental of computer software; digital data processing, namely, electronic data storage. (German trade mark 3020100037067)
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
Chatroulette, created and owned by Andrey Ternovskiy, is an online chat website that pairs random people from around the world together for real-time, webcam-based conversations. Based on this stated purpose, CHATROULETTE is associated with, and viewed as providing, online video chat services and online video social introduction and networking services.
Mr. Ternovskiy created the CHATROULETTE website in 2009 when he was a 17-year-old high school student in Moscow, Russia. The novel idea for CHATROULETTE stemmed from Mr. Ternovskiy’s realization that, at this time, there existed no website that allowed for random video chatting with other internet users from around the world. The distinctive, unique “Chatroulette” name that Mr. Ternovskiy chose for his innovative website and business was, in part, selected after Mr. Ternovskiy watched a film in which American soldiers in Vietnam played the game of Russian roulette. By combining the term ‘chat,’ which is one of the purposes of Complainant’s website, and the word ‘roulette,’ which is associated with the thrill of unpredictability (though not inherently or naturally connected to online webcam chatting), the essence of CHATROULETTE is captured in this unique name. Thus, Mr. Ternovskiy coined a name that he felt encapsulated the ideas, goals, and mission of his business – CHATROULETTE proved to be a concept and name that people readily and eagerly embraced.
After its launch, CHATROULETTE very quickly established incredible popularity and a high-profile reputation. While the CHATROULETTE website had 500 visitors per day in December 2009 (shortly after time of launch), only one month later in January 2010 this figure had amazingly increased to 50,000 visitors per day (approximately 1.5 million users per month). In February 2010, that traffic had jumped to 3.9 million monthly visitors. This exponential growth demonstrates the incredible popularity that Complainant and its CHATROULETTE website and business was able to achieve within mere months of its launch, as well as the type of following that CHATROULETTE elicited.
CHATROULETTE continues to be well-known as one of the most popular video chat sites in the world, and the website has generated significant interest and attention internationally among fans, the media, and competitors. Besides producing countless devotees and fans, the immense popularity of CHATROULETTE has, unfortunately, also spawned numerous copycat, clone sites that mimic the CHATROULETTE website and functionality. CHATROULETTE has also been featured in and highlighted by numerous publications and media outlets 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 media has marveled at the popularity of the website, especially considering the fact that Mr. Ternovskiy launched CHATROULETTE at the young age of 17 with no initial investors. Following its launch and meteoric rise in popularity, CHATROULETTE has retained a high amount of web traffic. According to Compete.com statistics, the CHATROULETTE website, found at <chatroulette.com>, averaged over 512,300 unique monthly visitors between July 2013 and July 2014, including 391,080 in July 2014.
The Complainant owns and has obtained trademark registration for the marks cited in Section 6(c) above. None of these registrations has been abandoned, cancelled, or revoked.
In summary, the Complainant’s CHATROULETTE brand and trademarks are well recognized by consumers, industry peers, and the broader community. Based on the above, Complainant’s extensive and continuous use of the CHATROULETTE trademarks, and the fact that Complainant has made significant investments over the years to promote and protect these trademarks across the internet and world, Complainant enjoys a substantial degree of public recognition in the trademarks and has seen them become uniquely and distinctly associated with the Complainant.
[a.] The Disputed Domain Name Is Identical Or Confusingly Similar To A Trademark Or Service Mark In Which The Complainant Has Rights UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i)
[i]. By virtue of its federal trademark and service mark registrations, the Complainant is the owner of the Complainant’s trademarks. See United Way of America v. Alex Zingaus, FA 1036202 (NAF Aug. 30, 2007) (“Panels have long recognized Complainant’s registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶4(a)(i)”). Furthermore, a complainant is not required to register its marks within the country of the respondent in order to protect its rights in those marks. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (NAF April 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (NAF Apr. 14, 2006).
[ii]. When comparing the Disputed Domain Names to the Complainant’s trademarks, the relevant comparison to be made is between only the second-level portion of the Disputed Domain Names and the Complainant’s trademarks. Past Panels have established that the top-level domain of a disputed domain name, such as .com, should not be considered for purposes of determining whether it is confusing similar to a complainant’s trademarks. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 28, 2000) (finding that the top-level domain, such as “.net” or “.com”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). See also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 0153545 (NAF May 27, 2003) (“[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar because top-level domains are a required element of every domain name”).
[iii]. Respondent’s Disputed Domain Names should be considered as capturing, in its entirety, Complainant’s CHATROULETTE trademark and simply adding the generic terms “alternativen” (German for “alternative”), “freak,” “love,” “sms” (acronym meaning “short message service” aka text messaging), and “toy” to the beginning or end of the CHATROULETTE trademark. The mere addition of these generic terms to Complainant’s famous trademark does not negate the confusing similarity between the Disputed Domain Names and the Complainant’s CHATROULETTE trademark under Policy ¶4(a)(i), and <chatroulette-alternativen.com>, <chatroulettefreak.com>, <chatroulettelove.com>, <chatroulette-sms.com> and <toychatroulette.com> must each be considered identical and/or confusingly similar to the CHATROULETTE trademark, as well as Complainant’s <chatroulette.com> domain name. It is well established that the addition of generic or descriptive terms is not sufficient to overcome a finding of confusing similarity pursuant to Policy ¶4(a)(i). See Homer TLC, Inc. v. Whois Guard, FA 0619597 (NAF Feb. 14, 2006) (finding that the addition of common words to Complainant’s registered mark did not negate the confusing similarity). See also Pfizer Inc v. Intermeds, LTD/ John Velasquez, D2005-0153 (WIPO Mar. 29, 2005) (finding the domain shopviagra.com differed only in the descriptive term “shop” and that “none of these integers [additional words] alone would preclude the disputed Domain Name from being confusingly similar. Noting that the combined effect and other added elements “do not add anything distinctive” to the Disputed Domain Name(s)). See also The Royal Bank of Scotland Group plc v. Domain Admin c/o InTrust Domain Names, FA1347010 (NAF Nov. 1, 2010) (“The disputed domain name incorporates all of complainant’s RBS mark while adding the generic term “credit” and the generic top-level domain “.com.” The addition of a generic term and gTLD fail to distinguish Respondent’s domain name from complainant’s mark”).
Further, Respondent’s use of hyphens in certain of the Disputed Domain Names does nothing to distinguish these domains from Complainant’s CHATROULETTE trademark, and such use of punctuation marks is not enough to avoid a finding of confusing similarity, as past Panels have established. See Health Devices Corp. v. Aspen S T C, FA 158254 (NAF July 1, 2003) (“The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶4(a)(i)”). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (Holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark")
[b.] Respondent Has No Rights or Legitimate Interests In Respect of the Disputed Domain Names for the Following Reasons
UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii)
[i]. The granting of registrations by the U.S. Patent and Trademark Office, Office for Harmonization in the Internal Market (OHIM), and the German Patent and Trade Mark Office (DPMA) to Complainant for the CHATROULETTE mark is prima facie evidence of the validity of the term CHATROULETTE as a trademark; of Complainant’s ownership of the CHATROULETTE mark; and of Complainant’s exclusive right to use the CHATROULETTE mark in commerce on or in connection with the goods and/or services specified in the registration certificates.
[ii]. Respondent is not sponsored by or affiliated with Complainant in any way.
[iii]. Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in a domain name.
[iv]. Respondent has not been commonly known by the Disputed Domain Names. See Policy, ¶4(c)(ii); Where “the WHOIS information suggests that Respondent is known as an entity other than the trademark associated with Complainant, and Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s…mark,” a Panel should find that the Respondent is not commonly known by the Disputed Domain Names. See United Way of America v. Alex Zingaus, FA 1036202 (NAF Aug. 30, 2007). In the instant case, the pertinent WHOIS information identifies the Registrant as “Peter Tewes,” which does not resemble the Disputed Domain Names in any manner – thus, the Respondent cannot be regarded as having been commonly known by the Disputed Domain Names so as to have acquired rights to or legitimate interests in the domain names within the meaning of ¶4(c)(ii). See Instron Corp. v. Kaner, FA 0768859 (NAF Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Further, a respondent is not commonly known by a disputed domain name where there is no evidence on the record, including the WHOIS information, suggesting that respondent is commonly known by the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (NAF July 17, 2006) (respondent was not commonly known by the <coppertown.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name under Policy ¶4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that respondent was commonly known by the disputed domain name).
[v]. Respondent is not making a bona fide offering of goods or services or legitimate noncommercial fair use of the Disputed Domain Names. The term “CHATROULETTE”, in any language, is not a natural term used to describe social networking or online webcam websites, and the Respondent’s inclusion of the term in the Disputed Domain Names is a direct, blatant effort to take advantage of the fame of the Complainant’s brand and trademark, as well as its <chatroulette.com> domain name. The Respondent illegitimately seeks to trade on the goodwill and fame associated with the CHATROULETTE trademark by using Complainant’s trademark in the Disputed Domain Names and on the website of each of those domains. Thus, by misleading internet users as to the source of the Disputed Domain Names and offering the same type of service that the Complainant provides, Respondent is misappropriating the CHATROULETTE trademark with intent to profit commercially, ostensibly through pay-for-access services or through third-party links that appear on the Disputed Domain Names’ websites. Such use is neither a bona fide offering of goods or services nor legitimate, noncommercial fair use of the Disputed Domain Names. See Homer TLC, Inc. v. Mulla Balci, FA 1571939 (NAF Aug. 28, 2014) (Respondent’s use of the <homedepotceilingfans.com> domain name, which is confusingly similar to Complainant’s HOME DEPOT trademark, to advertise and sell ceiling fans and related products in direct competition with Complainant’s offerings is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii)). See also Computerized Sec. Sys., Inc. v. Hu, FA 0157321 (NAF June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services”). See also Glaxo Group Ltd. v. WWW Zban, FA 0203164 (NAF Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
[vi]. Further, Respondent is using the Disputed Domain Names to direct internet users to websites that feature adult content. The Disputed Domain Names’ websites each contain provocative photos of semi-nude women, a fact which indicates, or at minimum suggests, that the websites of the Disputed Domain Names will offer some type of adult or pornographic content. Numerous past Panels have held that 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 legitimate rights or interests. See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark). See also Paws, Inc. v. Zuccarini, FA 125368 (NAF Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”). See also Am. Online, Inc. v. Bates, FA 192595 (NAF Oct. 7, 2003) (“Attempts to commercially benefit from a domain name that is confusingly similar to another's mark by linking the domain name to an adult-oriented website [is] evidence that the registrant lacks rights or legitimate interests in the domain name”).
[vii]. Respondent registered the Disputed Domain Names <chatroulette-alternativen.com>, <chatroulettefreak.com>, <chatroulettelove.com>, <chatroulette-sms.com>, and <toychatroulette.com> between February 20, 2013 and July 5, 2013, a period that is significantly after Complainant’s registration of <chatroulette.com> on November 16, 2009.
[viii]. Respondent registered the Disputed Domain Names <chatroulette-alternativen.com>, <chatroulettefreak.com>, <chatroulettelove.com>, <chatroulette-sms.com>, and <toychatroulette.com> between February 20, 2013 and July 5, 2013, a period that is significantly after the Complainant filed for registration of its relevant trademarks with the USPTO, OHIM, and DPMA (Jan. 2011; Mar. 2010; Mar. 2010, respectively), and also considerably after the Complainant’s first use in commerce of the CHATROULETTE mark on December 5, 2009. See Hershey Co. v. Reaves, FA 0967818 (NAF June 8, 2007) (finding that complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
[c.] The Domain Name Should Be Considered as Having Been Registered and Being Used In Bad Faith for the Following Reasons
UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii)
[i]. The Complainant and its CHATROULETTE brand and trademark are known internationally, with trademark registrations for CHATROULETTE across numerous countries. The Complainant has marketed and sold services using the Complainant’s CHATROULETTE trademark since 2009. By registering multiple domain names that each incorporate the CHATROULETTE trademark in its entirety and add generic terms such as “alternativen” (German for “alternative”), “freak,” “love,” “sms” (acronym meaning “short message service” aka text messaging), and “toy,” Respondent has created domain names that are confusingly similar to Complainant’s trademarks, as well as its <chatroulette.com> domain name. Through the registration of multiple domain names that are confusingly similar to the Complainant’s famous trademark, as well as by offering services very similar to those offered by Complainant, Respondent has demonstrated its knowledge of and familiarity with the Complainant’s brand and business. In light of the facts set forth within this Complaint, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brands at the time the Disputed Domain Names were registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). See also Stylebop GmbH v. chenlin, D2012-1069 (WIPO July 20, 2012) (The use of a domain name featuring a trademark to advertise goods or services which compete with those provided under that trademark supports a finding that the domain name registrant was aware of the other party’s mark at the time the domain name was registered). Stated differently, the CHATROULETTE trademark is so closely linked and associated with Complainant that Respondent’s use of this trademark in conjunction with various generic terms strongly implies bad faith – where a domain name is “so obviously connected with such a well-known name and products,…its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226 (May 17, 2000). Further, where the Disputed Domain Names incorporate the Complainant’s trademark and offer a service very similar or identical to that conceived of and developed by Complainant, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.” See Asian World of Martial Arts Inc. v. Texas International Property Associates, D2007-1415 (WIPO Dec. 10, 2007). The fact that Respondent’s <chatroulette-alternativen.com> expressly acknowledges that there are many alternatives to, and sites copying, CHATROULETTE underscores this point.
[ii]. 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 trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. CHATROULETTE’s status as the first random video chat room website and one of the world’s biggest and most popular online video chat providers allowed for Complainant’s success in filing for and registering numerous trademarks for CHATROULETTE in connection with this business. Complainant has provided services through its <chatroulette.com> website since 2009, and media outlets across the world have written and reported extensively on Complainant, its business, and its website. These factors together establish that Respondent, knew, or should have known, of Complainant. See Caesar World, Inc. v. Forum LLC, D2005-0517 (WIPO Aug. 1, 2005) (“given the Complainant’s worldwide reputation and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name”). See also Victoria's Secret v. Hardin, FA 096694 (NAF Mar. 31, 2001) (Finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith). Further, while constructive notice is sometimes regarded as insufficient to support a finding of bad faith, numerous past Panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant’s marks, and thus having registered the domain in bad faith, where the complainant’s mark is well-known, as is the case here – Respondent’s use of the CHATROULETTE trademark in both the domain names and on its websites further serves to demonstrate knowledge of Complainant. See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (NAF Mar. 13, 2012) (“a finding of bad faith hinges squarely on the probability that it was more likely than not that respondent knew of, and targeted, complainant’s trade mark”). See also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (NAF Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it”). See also Clearwater Systems, Inc. v. Glenn Johnson / Clear Water Systems of Remington Inc., D2014-0878 (WIPO Aug. 5, 2014) (“Knowledge and targeting [of a trademark] may be proven inferentially”).
[iii]. Respondent’s use of the Disputed Domain Names, which are confusingly similar to Complainant’s CHATROULETTE trademark, to offer services that compete with Complainant and exploit the goodwill that Complainant has established in the CHATROULETTE brand, website, and trademark evinces bad faith registration and use. Complainant’s CHATROULETTE mark is featured prominently in the Disputed Domain Names, as well as on the websites of these domain names, and Respondent offers services that compete with those offered by Complainant, which creates the improper and misleading impression that Respondent and the Disputed Domain Names are somehow affiliated or associated with Complainant, all as a means of profiting from the resulting confusion as to the source of the websites. Numerous Panels have held that use of a domain name in this manner constitutes bad faith under the ICANN Policy. See Tumblr, Inc. v. Benjamin Lotan / Toad Murphy, FA 1543249 (NAF Mar. 13, 2014) (finding that using a disputed domain name in connection with a site that offers services that directly compete with Complainant as well as using the same font as the Complainant’s mark reaches the level of passing off and registering and using the domain in bad faith). See also Am. Univ. v. Cook, FA 0208629 (NAF Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith”). See also Vevo LLC v. Ming Tuff, FA 1440981 (NAF May 29, 2012) (Respondent registered and used the VEVO.XXX domain name in bad faith pursuant to Policy ¶4(b)(iv) because it intended to take commercial advantage of Internet users’ mistakes as to the source of the disputed domain name based on confusion created by Respondent). See also Online, Inc. v. Miles, FA 105890 (NAF May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy”).
[iv]. Respondent’s use of the Disputed Domain Names constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy ¶4(b)(iii) because Respondent’s domain names are confusingly similar to Complainant’s trademarks and <chatroulette.com> domain name, and the websites at the Disputed Domain Names offer video chat services that compete with Complainant’s business. See S. Exposure v. S. Exposure, Inc., FA 0094864 (NAF July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business). See also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 0094385 (NAF July 7, 2000) (finding that the minor degree of variation from complainant's marks suggests that respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting complainant's business). See also DatingDirect.com Ltd. v. Aston, FA 593977 (NAF Dec. 28, 2005) (Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii)).
[v]. The five Disputed Domain Names at issue in this Complaint that Respondent currently owns each misappropriate Complainant’s well-known CHATROULETTE trademark. This fact demonstrates that the Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use. See Time Warner Inc. v. Zone MP3, FA 1008035 (NAF July 25, 2007) (Typosquatting combined with registration of as few as four domain names that are identical or confusingly similar to "protected marks" is sufficient to establish a pattern leading to bad faith). See also Citigroup Inc. v. Digi Real Estate Foundation, FA 0964679 (NAF May 20, 2007).
[vi]. Lastly, the Respondent has ignored Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Past Panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name. See Encyclopedia Britannica v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (failure to positively respond to a demand letter provides “strong support for a determination of ‘bad faith’ registration and use”). See also RRI Financial, Inc., v. Chen, D2001-1242 (WIPO Dec. 11, 2001) (finding bad faith where “The Complainant alleges that it sent numerous cease and desist letters to [r]espondent without receiving a response”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant uses CHATROULETTE for online video chat services, and online video social introduction and networking services. Complainant has a trademark registration for CHATROULETTE with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,445,843, registered Dec. 10, 2013, filed Jan. 10, 2011). Previous panels have determined a complainant’s valid trademark registration with a national authority sufficiently demonstrates Policy ¶4(a)(i) rights in the mark dating back to the trademark filing date. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”); Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Therefore, Complainant has demonstrated rights in the CHATROULETTE mark through his USPTO registration pursuant to Policy ¶4(a)(i), dating back to the January 10, 2011 filing date.
Complainant claims the <chatroulette-alternativen.com>, <chatroulettefreak.com>, <chatroulettelove.com>, <chatroulette-sms.com> and <toychatroulette.com> domain names are confusingly similar to the CHATROULETTE mark. Since domain name syntax requires gTLDs or ccTLDs, they must be ignored when determining if Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶4(a)(i). Generally speaking, adding hyphens does not adequately distinguish Respondent’s disputed domain names from Complainant’s mark under Policy ¶4(a)(i). Adding related generic terms such as “alternativen” (German for “alternative”), “freak,” “love,” “sms” (acronym meaning “short message service”), and “toy” does not adequately distinguish Respondent’s disputed domain names from Complainant’s mark under Policy ¶4(a)(i). The <chatroulette-alternativen.com>, <chatroulettefreak.com>, <chatroulettelove.com>, <chatroulette-sms.com> and <toychatroulette.com> domain names are confusingly similar to the CHATROULETTE mark pursuant to Policy ¶4(a)(i). See InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”); Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not affiliated with Complainant. Complainant has not authorized Respondent’s use of the CHATROULETTE mark. Respondent is not commonly known by the disputed domain names as evidenced by the WHOIS records. The WHOIS record identifies “Peter Tewes” as the registrant for all five domain names (which bears no obvious relationship to any of the domain names). It seems evident Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. The disputed domain names direct users to adult oriented websites with video chat services. Complainant claims Respondent is attempting to profit commercially through the pay-for-access services and third party links featured on the resolving pages. Complainant submitted screen shots of the resolving pages corroborating these claims, which the Panel accepts as proven. Respondent’s use of the disputed domain names to direct users to adult oriented websites with video chat services competing with Complainant’s own offerings is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy ¶¶4(c)(i) and (iii), respectively. See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶4(c)(iii)).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s five disputed domain names indicate Respondent has engaged in a pattern of cybersquatting. The Panel will not accept this as proof of bad faith under Policy ¶4(b)(ii) because Complainant was not prevented from obtaining a domain name containing his mark (Complainant owns <chatroulette.com>).
Complainant claims Respondent’s use of the disputed domain names disrupts Complainant’s business because they resolve to websites offering video chat services competing with Complainant. The disputed domain names clearly resolve to websites promoting adult oriented content, including video chat services comparable to Complainant’s own video chat services. The video chat services are sufficiently competitive to disrupt Complainant’s business. This constitutes an instance of Policy ¶4(b)(iii) bad faith registration and use. See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Complainant claims Respondent’s use of the disputed domain names to offer competing video streaming services creates the misleading impression Respondent is somehow associated with Complainant, and Respondent improperly profits from this confusion. It seems fairly clear Respondent is attempting to profit commercially through the pay-for-access services and third party links featured on the resolving pages. This constitutes bad faith use and registration pursuant to Policy ¶4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶4(b)(iv).”).
Complainant claims Respondent must have known of Complainant and its CHATROULETTE mark at the time the domain names were registered. This seems evident from the resolving web sites. Respondent’s registration and use of the domain names in connection with video chat services clearly demonstrates Respondent’s familiarity of Complainant’s brand. In See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014), the panel wrote, “The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.” See also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent “must have known about the Complainant's mark when it registered the subject domain name”). Therefore, this Panel finds bad faith registration and use under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <chatroulette-alternativen.com>, <chatroulettefreak.com>, <chatroulettelove.com>, <chatroulette-sms.com> and <toychatroulette.com>, domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, December 12, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page