ANDREY TERNOVSKIY dba CHATROULETTE v. zhaoyong / zhaoyong
Claim Number: FA1711001759979
Complainant is ANDREY TERNOVSKIY dba CHATROULETTE (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is zhaoyong / zhaoyong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <www-chatroulette-com.us>, registered with Todaynic.com, Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 27, 2017; the Forum received payment on November 27, 2017.
On December 1, 2017, Todaynic.com, Inc. confirmed by e-mail to the Forum that the <www-chatroulette-com.us> domain name is registered with Todaynic.com, Inc. and that Respondent is the current registrant of the name. Todaynic.com, Inc. has verified that Respondent is bound by the Todaynic.com, Inc. 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 December 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 2017 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@www-chatroulette-com.us. Also on December 1, 2017, 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 December 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 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
Complainant made the following contentions
Complainant, Chatroulette, is 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). See Compl. Ex. B. Respondent’s <www-chatroulette-com.us> is confusingly similar to Complainant’s mark because it adds the generic terms “www” and “com,” two hyphens, and the country code top-level domain (“ccTLD”) “.us” to the fully incorporated mark.
Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark in any fashion, and Respondent is not commonly known by the disputed domain name. Respondent also is not using the <www-chatroulette-com.us> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, <www-chatroulette-com.us> is used to direct Internet users to a website that features adult content. See Compl. Ex. D.
Respondent registered or is using the disputed domain name in bad faith. Respondent attempts to disrupt Complainant’s business by using the confusingly similar domain name to resolve to a website featuring links to Complainant’s competitors. See Compl. Ex. D. Respondent further uses the confusingly similar domain name to resolve to a website featuring adult content. Id. Finally, Respondent registered the domain name with actual and constructive knowledge of Complainant’s rights in the CHATROULETTE mark as Complainant has retained impressive web traffic since its inception.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is an individual person who established and operates a successful online chat website that pairs random people from around the world together for real-time, webcam-based conversations.
2. Complainant has established its registered trademark rights to the CHATROULETTE mark by virtue of its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,445,843, registered Dec. 10, 2013).
3. Respondent registered the <www-chatroulette-com.us> domain name on March 2, 2017.
4. The <www-chatroulette-com.us> domain name is used to direct Internet users to a website that features adult content in competition with the services offered by Complainant.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant contends it registered 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 established rights in the CHATROULETTE mark for the purposes of Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CHATROULETTE mark. Complainant contends that Respondent’s <www-chatroulette-com.us> domain name is confusingly similar to Complainant’s mark because it adds the generic terms “www” and “com,” two hyphens, and the ccTLD “.us” to the fully incorporated mark. The addition of hyphens, generic terms and ccTLDs generally do not negate a finding of confusingly similar. See Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Lockheed Martin Corp. v. Roberson, FA 323762 (Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark). Therefore, the Panel finds that the <www-chatroulette-com.us> domain name is confusingly similar to Complainant’s mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CHATROULETTE mark to use it in its domain name, adding only the generic terms “www” and “com,” two hyphens, and the ccTLD “.us” to the fully incorporated mark;
(b) Respondent registered the disputed domain name on March 2, 2017;
(c) The domain name is used to direct Internet users to a website that features adult content in competition with the services offered by Complainant;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant submits 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 a 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 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 the <www-chatroulette-com.us> domain name lists “zhaoyong” as the registrant. See Compl. Ex. C. Therefore, the Panel finds that Respondent is not commonly known by the <www-chatroulette-com.us> domain name per Policy ¶ 4(c)(ii);
(f) Complainant contends that Respondent is not using the <www-chatroulette-com.us> 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 direct Internet users to a website that features adult content. Use of a confusingly similar domain name to feature adult content is generally not considered to make a bona fide offering of goods or services or a 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.”). Here, screenshots of the <www-chatroulette-com.us> resolving website indicate that the site does indeed feature adult content. See Compl. Ex. D. Therefore, the Panel finds that Respondent used the <www-chatroulette-com.us> domain name to display adult oriented material, failing to make a bona fide offering of goods or services or legitimate noncommercial or fair use.
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 has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent registered or is using the disputed domain name in bad faith as Respondent attempts to disrupt Complainant’s business by using the confusingly similar domain name to resolve to a website featuring links to Complainant’s competitors. Use of a domain name to disrupt a Complainant’s business can evidence bad faith registration and use under Policy ¶ 4(b)(iii). 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).”). The Panel notes that Complainant provided screenshots of the disputed domain name’s resolving website which features hyperlinks, albeit that the links are written in the Chinese language and have not been translated. See Compl. Ex. D. In view of the fact that Complainant’s authorizes representative has certified that the contents of the Complainant are correct and in the light of the evidence as a whole, the Panel finds that Respondent is disrupting Complainant’s business in bad faith per Policy ¶ 4(b)(iii).
Secondly, Complainant contends Respondent is using the confusingly similar domain name to resolve to a website featuring adult content. Use of a domain name to resolve to a website featuring adult content can evidence bad faith registration or use. See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith). As mentioned above, screenshots of the resolving website indicate that the site does feature adult images. See Compl. Ex. D. Therefore, the Panel concludes Respondent uses the resolving webpage for the disputed domain name to display adult oriented material in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant contends Respondent registered the domain name with actual and constructive knowledge of Complainant’s rights in the CHATROULETTE mark. The UDRP does not recognize constructive notice as sufficient grounds for finding bad faith, however, actual notice is generally sufficient. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum 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.”). A respondent is presumed to have actual knowledge of a Complainant’s rights in a mark when the mark is well-known. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith). Here, Complainant submits its CHATROULETTE mark has garnered significant worldwide recognition as evidenced by news articles provided by Complainant. See Compl. Ex. G (Articles from the New York Times, The New Yorker, and Tech Crunch). Therefore, the Panel holds that Respondent had actual knowledge of Complainant’s rights in the CHATROULETTE mark at the time of registration and registered the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CHATROULETTE mark and in view of the conduct that Respondent engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <www-chatroulette-com.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: December 29, 2017
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