Andrey Ternovskiy dba Chatroulette v. Milen Radumilo
Claim Number: FA1801001767413
Complainant is Andrey Ternovskiy dba Chatroulette (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chat-roulette.us>, registered with Dynadot, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 17, 2018; the Forum received payment on January 17, 2018.
On January 18, 2018, Dynadot, LLC confirmed by e-mail to the Forum that the <chat-roulette.us> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On January 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2018 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@chat-roulette.us. Also on January 29, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On February 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Andrey Ternovskiy dba Chatroulette, operates an online chat website that pairs random people from around the world together for real-time, webcam-based conversations. Complainant uses its CHATROULETTE mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,445,843, registered Dec. 10, 2013). Respondent’s <chat-roulette.us> domain name is confusingly similar to Complainant’s mark because it merely adds a hyphen in the middle of the mark and appends the country code top-level domain (“ccTLD”) “.us” to the fully incorporated mark.
ii) Respondent does not have rights or legitimate interests in the <chat-roulette.us> domain name. Complainant has not licensed or otherwise authorized Respondent to use its CHATROULETTE mark in any fashion. Respondent is not commonly known by the <chat-roulette.us> domain name as the WHOIS information of record lists “Milen Radumilo” as the registrant. Nothing in the available evidence indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to redirect Internet users to a website featuring pay-per-click links to third-party websites, some of which directly compete with Complainant’s business. Respondent has also used the domain name to redirect Internet users to third party websites that were possibly used for a phishing scheme, or featured adult content or were used as dating community website. Finally, Respondent is currently offering the domain name for sale in amount that far exceeds Respondent’s out-of-pocket expenses in registering the disputed domain name.
iii) Respondent registered or used the domain name in bad faith. Respondent has engaged in a pattern of bad faith registration and use evidenced by its involvement in past adverse UDRP decisions and by its registration of multiple domain names that infringe upon Complainant’s and other third parties’ marks. Next, Respondent offered to sell the disputed domain name at an excessive cost. Further, Respondent used the <chat-roulette.us> domain name to disrupt Complainant’s business by diverting internet users to its competing website. Respondent also attempted to create confusion between the disputed domain name and Complainant’s mark to attract Internet users and commercially benefit. Additionally, Respondent used the domain name to resolve to a website featuring adult content. Finally, Respondent registered the disputed domain name with full knowledge of Complainant’s rights in the CHATROULETTE mark.
B. Respondent
Respondent did not submit a Response. The Panel notes, however, that Respondent registered the <chat-roulette.us> domain name on April 30, 2017.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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(f), 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 (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 contends it established rights in its CHATROULETTE mark with the USPTO (e.g., Reg. No. 4,445,843, registered Dec. 10, 2013). See Compl. Ex. B. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). As such, the Panel holds that Complainant has rights in the CHATROULETTE mark under Policy ¶ 4(a)(i).
Next, Complainant claims that Respondent’s <chat-roulette.us> domain name is identical or confusingly similar to Complainant’s mark because it consists entirely of the mark and merely adds a hyphen in the middle of Complainant’s mark and appends the ccTLD “.us.” The addition of a hyphen and a ccTLD do not negate confusing similarity between a disputed domain name and a mark. 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"); see also Am. Express Co. v. McWIlliam, FA 268423 (Forum July 6, 2004) (holding that the ccTLD “.us” does not negate confusing similarity under Policy ¶ 4(a)(i)). Accordingly, the Panel holds that Respondent’s <chat-roulette.us> domain name is confusingly similar to Complainant’s mark.
Complainant must first make a prima facie case that 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 does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its CHATROULETTE mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can also be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for <chat-roulette.us> lists “Milen Radumilo” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <chat-roulette.us> domain name.
The Panel further agrees that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, this Panel concludes that Respondent has failed to establish its rights or legitimate interests under Policy ¶ 4(c)(i).
Complainant next alleges that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. First, Complainant claims that Respondent uses the domain name to redirect Internet users to a website featuring pay-per-click links to third-party websites, some of which directly compete with Complainant’s business. Use of a domain name to resolve to a website featuring competing pay-per-click hyperlinks may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ [4(c)(ii)], and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ [4(c)(iv)].”). Complainant contends that screenshots of the disputed domain’s current resolving website indicated that the site features links such as “Meet New People,” “Chat Rooms,” “Romantic Chat,” and “Singles Chat.” See Compl. Ex. D. Therefore, the Panel finds that Respondent failed to use the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv).
Complainant next contends that Respondent previously used the <chat-roulette.us> domain name to resolve to a dating website. Use of a domain name to resolve to a website unrelated to a Complainant’s website may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ [4(c)(ii)] or a legitimate noncommercial or fair use under Policy ¶ [4(c)(iv)].”). Complainant contends that screenshots of one of the domain name’s previous resolving websites indicate that the site features a website for “the flirtiest online community.” See Compl. Ex. D. Therefore, the Panel finds that Respondent used the domain name for a purpose unrelated to Complainant’s business and holds that Respondent failed to use the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
Complainant also claims that Respondent has also used the <chat-roulette.us> domain name to redirect Internet users to a website featuring adult-oriented content. Use of a confusingly similar domain name to feature adult-oriented content may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). Complainant alleges that screenshots of the disputed domain name’s resolving website indicates that the site once featured adult-oriented images and content. See Compl. Ex. D. Accordingly, the Panel finds that Respondent used the <chat-roulette.us> domain name to resolve to a website containing adult-oriented material and holds that Respondent failed to use the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
Additionally, Complainant alleges that Respondent once used the domain name to resolve to a deceptive website that may have been used to phish for Internet users’ personal information. Use of a domain name to resolve to a website that phishes for Internet users’ personal information may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ [4(c)(ii)] nor a legitimate noncommercial or fair use pursuant to Policy ¶ [4(c)(iv)].”). Complainant argues that screenshots of the <chat-roulette.us> domain name’s previous resolving website indicates that the site displayed a message that read, “Deceptive site ahead Attackers on p112541.inclk.com may trick you into doing something dangerous like installing software or revealing your personal information (for example, passwords, phone numbers or credit cards).” As such, the Panel finds that Respondent used the domain name to resolve to a website used for phishing and holds that Respondent failed to use the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
Finally, Complainant alleges that Respondent is currently offering the domain name for sale. General offers to sell a disputed domain name may indicate that a respondent lacks rights and legitimate interests in the disputed domain name. See Groupe Auchan v. Slawomir Cynkar, D2009-0314 (WIPO May 11, 2009) (noting that “Respondent’s offer to sell or rent the domain names does not give rise to any right or legitimate interest”). Complainant contends that screenshots featuring the disputed domain name for sale on the website <afternic.com>. See Compl. Ex. D. Therefore, the Panel holds that Respondent lacks rights and legitimate interests in the <chat-roulette.us> domain name.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant claims Respondent registered the domain name in bad faith by offering to sell the disputed domain name at an excessive cost. General offers to sell a disputed domain name in excess of out-of-pocket costs associated with domain transfers may evidence bad faith. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Complainant claims that screenshots indicate that the domain name is listed on a website for sale at a price of $688. See Compl. Ex. D. Therefore, the Panel finds that Respondent offered to sell the domain name at an excessive price and holds that Respondent registered the domain name in bad faith per Policy ¶ 4(b)(i).
Next, Complainant contends that Respondent has engaged in a pattern of bad faith registration. Complainant alleges that Respondent has been the respondent in past adverse UDRP decisions and has registered multiple domain names that infringe upon Complainant’s and other third parties’ marks. A respondent’s involvement in prior adverse UDRP decisions and registration of multiple infringing domain names may evidence a pattern of bad faith registration and use. See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”); see also Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Forum Apr. 6, 2001) (finding that where the respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists). Complainant alleges that Respondent was party to the following UDRP cases: Andrey Ternovskiy dba Chatroulette v. Milen Radumilo, D2016-1926 (WIPO November
7, 2016), Swatch AG v. Perfect Privacy, LLC / Milen Radumilo, D2016-1370 (WIPO August 28, 2016), and Celgene Corporation v. Milen Radumilo, D2016-0018 (WIPO February 22, 2016). See Compl. p. 11-12. Further, Complainant alleges that Respondent owns <cchatroulette.com>, <chat-roulette-francais.biz>, and <webcamchatroulette.info>, which all infringe on Complainant’s CHATROULETTE mark. See Compl. Ex. C (WHOIS Contact Information for the Disputed Domain Name). Accordingly, the Panel finds that Respondent has been party to multiple adverse UDRP decisions and is the registrant of multiple infringing domain names and holds that Respondent established a pattern of bad faith registration and use.
Further, Complainant claims that Respondent used the <chat-roulette.us> domain name to disrupt Complainant’s business by diverting Internet users to its competing website. Use of a domain name to disrupt a complainant’s business may indicate bad faith use. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum 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).”). As stated previously, Complainant contends that screenshots of the disputed domain name’s resolving website indicate that the site currently features competing hyperlinks and that it previously resolved to other unrelated sites. See Compl. Ex. D. Accordingly, the Panel finds that Respondent attempted to disrupt Complainant’s business and holds that Respondent engaged in bad faith use pursuant to Policy ¶ 4(b)(iii).
Next, Complainant alleges that Respondent also attempted to create confusion between the disputed domain name and Complainant’s mark to attract Internet users and commercially benefit. Use of a domain name to cause confusion as to the source, sponsorship, affiliation or endorsement therein may constitute bad faith use. See Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA1501001598657 (Forum Feb. 20, 2015) (“This Panel agrees that Respondent’s use as shown in Exhibits C-D illustrates that Respondent here seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).”). Complainant alleges that screenshots of the <chat-roulette.us> domain name’s resolving websites indicate that domain name has resolved to sites featuring competing pay-per-click hyperlinks. See Compl. Ex. D. Therefore, the Panel finds that Respondent created a likelihood of confusion with Complainant’s mark for Respondent’s own commercial gain and holds that Respondent engaged in bad faith use under Policy ¶ 4(b)(iv).
Additionally, Complainant contends that Respondent used the disputed domain name to resolve to a website featuring adult-oriented content. Use of a domain name to resolve to a website featuring adult-oriented material may evidence bad faith use. See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”). Complainant claims that screenshots of the <chat-roulette.us> domain name’s previous resolving website indicate that the site featured adult-oriented images and content. See Compl. Ex. D. As such, the Panel finds that the <chat-roulette.us> domain names previously resolved to an adult-oriented website and holds that Respondent used the domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant claims that Respondent registered the disputed domain name with full knowledge of Complainant’s rights in the CHATROULETTE mark. A respondent may have actual knowledge of a complainant’s rights in the mark when a mark is famous. See eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website). Complainant alleges that its CHATROULETTE mark is famous and references numerous articles from the New York Times, The New Yorker and Tech Crunch to support its claim. See Compl. Ex. G. Accordingly, the Panel holds that Respondent registered the domain name in bad faith because it possessed actual knowledge of Complainant’s rights in the CHATROULETTE mark.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chat-roulette.us> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 27, 2018
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