Decision for dispute CAC-UDRP-101477

The Panel is not aware of any other legal proceedings related to the Disputed domain name.

The Complainant is the owner of the following trademarks:

- EUTM registration 8944076 Chatroulette, in classes 35, 38 and 42, dated March 10, 2010.

- EUTM registration 8946352 charoulette.to, in classes 35, 38 and 42, dated March 11, 2010.

- German trademark registration 302010003706 Chatroulette, in classes 35, 38 and 42, dated March 10, 2010.

- US trademark registration 4445843 Chatroulette, in classes 38 and 45, dated January 10, 2011.

The Complaint also invoke other registrations in the name of companies apparently related to him.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

LANGUAGE OF PROCEEDINGS

The Complaint has been submitted in English based on the following factors:

1. The Complainant is unable to communicate in Russian and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter;

2. Such additional delay, considering the obviously abusive nature of the Disputed domain name and its website (the Respondent has registered a confusingly similar domain name and is using the website found at the Disputed domain name to offer for sale the products of the Complainant’s competitors, which directly compete with the Complainant’s own offerings), poses continuing risk to the Complainant and unsuspecting consumers seeking the Complainant or its products;

3. The website found at the Disputed domain name is in English;

4. The term CHATROULETTE, which is the dominant portion of the Disputed Domain Name, does not carry any specific meaning in the Russian language;

5. The Complainant previously sent a cease-and-desist letter to the Respondent, as provided in the Complaint, and the Respondent had ample time and opportunity to respond to such letter and request that communications continue in Russian. The Respondent neither issued such a request nor responded to the Complainant in any matter whatsoever. To allow the Respondent to dictate the course of this matter and further burden the Complainant at this juncture would contravene the spirit of the UDRP and disadvantage the Complainant; and

6. Pursuant to Paragraph 11(a) of the Rules, the Panel may determine the language of the proceedings having regard to all circumstances, and to help ensure fairness, and maintain an inexpensive and expeditious avenue for resolving domain disputes. Here, in light of the Respondent’s use of the Disputed domain name and the Respondent´s decision to register a domain name that misappropriates the famous CHATROULETTE mark and brand, it would unduly burden the Complainant to have to arrange and pay for translation where the Respondent has demonstrated behavior that disrupts the Complainant’s business and has already required the Complainant to devote significant time and resources to addressing this instance of abuse. Even in instances where a registration agreement was in a language other than English, past Panels have made the decision to allow a case to proceed in English based on the totality of circumstances in that case. See Immobilière Dassault SA, Groupe Industriel Marcel Dassault v. DuanZuoChun, D2011-2106 (WIPO February 21, 2012). See also Dama S.p.A. v. Duan Zuochun, D2012-1015 (WIPO July 5, 2012).


This Complaint is based on the following grounds:

Andrey Ternovskiy dba Chatroulette (“Chatroulette”) is the owner of trademark registrations across various jurisdictions. Attached hereto as Annex 2 are printouts from the Russian Agency for Patents and Trademarks (ROSPATENT), the European Union Intellectual Property Office (EUIPO), the German Patent and Trade Mark Office (DPMA) and the United States Patent and Trademark Office (USPTO) for these registrations, which demonstrate that the Complainant has spent a considerable amount of time and money protecting its intellectual property rights. These registrations are referred to hereafter as the “Complainant’s Marks.” The trademarks relevant to this instant matter are:

TRADEMARK JURISDICTION/ TM OFFICE REGISTRATION NUMBER IC CLASS
CHATROULETTE RU/RUTM 429957 35, 38, 42
CHATROULETTE EM / EUIPO 008944076 35, 38, 42
CHATROULETTE.TO EM / EUIPO 008946352 35, 38, 42
CHATROULETTE DE / DPMA 3020100037067 35, 38, 42
CHATROULETTE US / USPTO 4445843 38, 45

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, as well as the goods and services descriptions associated with the Complainant’s trademark registrations, Chatroulette is associated with, and known for providing, online video chat services and online video social introduction and networking services.

Mr. Ternovskiy created the Chatroulette service and website in 2009 when he was just a 17-years-old high school student in Moscow, Russia. The novel idea for Chatroulette stemmed from Mr. Ternovskiy’s realization that, at the time of its inception, no website existed which 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 core purposes of the 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 distinctive name. Thus, Mr. Ternovskiy coined a name that he felt encapsulated the ideas, goals, and mission of his business. Chatroulette has proven to be a concept and name that people readily and eagerly embraced.

Chatroulette very quickly established incredible popularity and a high-profile reputation. Very shortly after its launch, the Chatroulette website began to receive 500 visitors per day while continuing to experience consistent growth, and only one month later in January 2010, this figure had astonishingly increased to 50,000 visitors per day (approximately 1.5 million users per month). This represented a 10,000% increase in traffic over just one month, which is exceptional and demonstrates just how quickly Chatroulette grew in popularity. Perhaps even more incredibly, in February 2010, that traffic had jumped to approximately 130,000 visitors per day (3.9 million monthly visitors), which is a 26,000% increase in traffic over the December 2009 figures. This exponential growth demonstrates the incredible popularity that the Complainant and its Chatroulette website and business were able to achieve within mere months of its launch, as well as the type of devout following that Chatroulette has garnered. 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, as well as encouraged a throng of other cybersquatters that wish to exploit the popularity and goodwill of the Complainant. This type of cybersquatting has been an unfortunate result of the popularity and fame of Chatroulette.

Aside from the tremendous organic following that Chatroulette has managed to achieve, its popularity has also been boosted by its appearance in the news and media, which confirms Chatroulette’s status and fame. Chatroulette has 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 the Complainant launched his Chatroulette business at the young age of 17 with no initial investors. Following its launch and meteoric rise in popularity, Chatroulette has retained its impressive web traffic. According to Compete.com statistics, the Chatroulette website, located at <chatroulette.com>, averaged over 260,000 unique monthly visitors in the 13-month period August 2016 – August 2016, earning a website popularity rank of 12,967.

In summary, the Complainant’s extensive and continuous use of the CHATROULETTE trademarks, and the fact that the Complainant has made significant investments over the years to promote and protect these trademarks and the Chatroulette business across the internet and world, demonstrate that the Complainant enjoys a substantial degree of public recognition in CHATROULETTE and has seen this mark 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 [Paragraph 4(a)(i) of the Policy, Paragraphs 3(b)(viii), (b)(ix)(1) of the Policy].

By virtue of its federal trademark and service mark registrations, the Complainant is the owner of its trademarks. See United Way of America v. Alex Zingaus, FA 1036202 (NAF August 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, the 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 0622122 (NAF April 14, 2006).

When comparing the Disputed domain name and the Complainant’s trademarks, the top-level suffix of the Disputed domain name may properly be considered in assessing and determining confusing similarity between the Disputed domain name and the Complainant’s trademarks. In light of the introduction of new gTLDs, Panels may determine that the top-level suffix impacts the Disputed domain name’s confusing similarity to the Complainant’s trademarks. See Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, D2014-0206 (WIPO March 14, 2014) (“given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach”). See also Zions Bancorporation v. Mohammed Akik Miah, D2014-0269 (WIPO April 12, 2014) (“In some instances, the TLD suffix may impact the analysis under the first element of the Policy. For example, if the trademark in question was “Hills Holdings” and the disputed domain name was “hills.holdings”, then consideration of the TLD suffix may be relevant insofar as such (hypothetical) mark “spans the dot”, that is, viewed together, the second- and top-level portions of the disputed domain name are identical (or confusingly similar) to the mark”).

The Disputed domain name contains the Complainant’s CHATROULETTE trademark in its entirety, thus resulting in a domain name that is identical to the Complainant’s CHATROULETTE trademark. Where, as here, the Disputed domain name encompasses and captures the Complainant’s trademark in its entirety, past Panels have established that the Disputed domain name should be found confusingly similar to that trademark. Thus, the Disputed domain name should be considered identical and confusingly similar to the Complainant’s CHATROULETTE trademark. See The American Red Cross v. Leonard Habersham, FA 0103926 (NAF March 6, 2002). See also Uniroyal Engineered Products, Inc. v. Nauga Network Services, D2000-0503 (WIPO July 18, 2000) (Panel finding the disputed domain <nauga.net> confusingly similar to complainant’s NAUGA trademark).

Additionally, the Respondent’s use of the Disputed domain name contributes to the confusion. The Respondent is using the Disputed domain name to host a website camera (webcam) service, which suggests that the Respondent intended the Disputed domain name to be confusingly similar to the Complainant’s trademark as a means of furthering consumer confusion. In a previous case involving a domain name that resolved to website that sought to imitate the Complainant’s website, the Panellist found that such use was evidence that the domain name was confusingly similar to the mark in question. See The Gaming Board for Great Britain v. Gaming Board, D2004-0739 (WIPO October 18, 2004) (“the way in which the Respondent has used the domain name [<gbgamingboard.org>] suggests that the Respondent intended users of the Respondent’s website to believe that the website at the disputed domain name was associated with the Complainant”). As a result, the Respondent’s use of the Disputed domain name to resolve to a website camera (webcam) service is further evidence that the Disputed domain name is confusingly similar to the Complainant’s trademark.


B. The Respondent has no Rights or Legitimate Interests in Respect of the Disputed domain name
(Paragraph 4(a)(ii), Paragraph 3(b)(ix)(2) of the Policy).

The granting of registrations by the Russian Agency for Patents and Trademarks (ROSPATENT), the European Union Intellectual Property Office (EUIPO), the United States Patent and Trademark Office (USPTO), and the German Patent and Trade Mark Office (DPMA) to the Complainant for the CHATROULETTE trademark is prima facie evidence of the validity of the term “CHATROULETTE” as a trademark, of the Complainant’s ownership of this trademark, and of the Complainant’s exclusive right to use the CHATROULETTE trademark in commerce on or in connection with the goods and/or services specified in the registration certificates.

The Respondent is not sponsored by or affiliated with the Complainant in any way.

The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names.

The Respondent is not commonly known by the Disputed domain name, which evinces a lack of rights or legitimate interests. See Policy, ¶ 4(c)(ii); see Whois data for the Disputed domain name. 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 name. See United Way of America v. Alex Zingaus, FA 1036202 (NAF August 30, 2007). In the instant case, the pertinent Whois information identifies the Registrant as “Alexander Ochkin,” which does not resemble the Disputed domain name in any manner – thus, where no evidence, including the Whois record for the Disputed domain name, suggests that the Respondent is commonly known by the Disputed domain name, then the Respondent cannot be regarded as having acquired rights to or legitimate interests in the Disputed domain name within the meaning of ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 0768859 (NAF September 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). See also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 0715089 (NAF July 17, 2006) (the 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 the Respondent was commonly known by the disputed domain name).

The Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial fair use of the Disputed domain name. On the website available at the Disputed domain name, the Respondent offers a website camera (webcam) service, which directly compete with the Complainant’s own offerings. Past Panels have consistently held that selling competing goods, coupled with the unauthorized use of the Complainant’s trademarks in a confusingly similar domain name, does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(iii). As such, the Respondent here should be held to possess no legitimate rights or interests in the Disputed domain name. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of [a] web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”). See also Coryn Group, Inc. v. Media Insight, FA 198959 (NAF Dec. 5, 2003) (finding that the Respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the Respondent used the names to divert Internet users to a website that offered services that competed with those offered by the Complainant under its marks). See also Nike, Inc. v. Dias, FA 135016 (NAF Jan. 7, 2002) (finding no bona fide offering of goods or services where the Respondent used the Complainant’s mark without authorization to attract Internet users to its website, which offered both the Complainant’s products and those of the Complainant’s competitors).

The Respondent registered the Disputed domain name on February 26, 2013, which is significantly after the Complainant filed for registration of its CHATROULETTE trademark with the EUIPO, DPMA and USPTO, and also significantly after the Complainant’s first use in commerce of the CHATROULETTE mark in 2009.

The Respondent registered the Disputed domain name on February 26, 2013, which is significantly after the Complainant’s registration of its <chatroulette.com> domain name on November 16, 2009.

C. The Disputed domain name was Registered and is Being Used in Bad Faith
(Paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3) of the Policy).

The Complainant and its CHATROULETTE trademark are known internationally, with trademark registrations across numerous countries. The Complainant registered its <chatroulette.com> domain name on November 16, 2009 and established its Chatroulette service and website very shortly thereafter, before the Respondent’s registration of the Disputed domain name on February 26, 2013.

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. In addition to the numerous trademarks filed in connection with the Complainant’s business prior to the Respondent’s registration of the Disputed domain name, the Complainant has retained impressive web traffic since its inception. According to Compete.com statistics, the Chatroulette website, located at <chatroulette.com>, averaged over 260,000 unique monthly visitors in the 13-month period August 2015 – August 2016, earning a website popularity rank of 12,967, which demonstrates the Complainant’s fame. See Victoria's Secret v. Hardin, FA 096694 (NAF March 31, 2001) (Finding that, in light of the notoriety of the Complainants' famous marks, the 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 may sometimes alone be regarded as insufficient to support a finding of bad faith, numerous past Panels have held that the 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 and the circumstances support such a finding, as is the case here. 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 August 5, 2014) (“Knowledge and targeting [of a trademark] may be proven inferentially”).

The Respondent’s use of the Disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under Policy ¶4(b)(iii) because the Respondent’s Disputed domain name is confusingly similar to the Complainant’s trademarks and the website at the Disputed domain name features multiple links to the Complainant’s competitors. See S. Exposure v. S. Exposure, Inc., FA 94864 (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 94385 (NAF July 7, 2000) (finding that the minor degree of variation from the Complainant's marks suggests that the Respondent, the Complainant’s competitor, registered the names primarily for the purpose of disrupting the Complainant's business).

The Respondent has ignored the 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”).

Finally, on balance of the facts set forth above, it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark, and the Respondent should be found to have registered and used the Disputed domain names in bad faith. See Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., FA D2014-1754 (WIPO January 12, 2014) (“the Panel makes its finding regarding bad faith registration by asking whether it is more likely than not from the record of the evidence in the proceeding that Respondent had the ELECTRIC FOOTBALL trademark in mind when registering the Domain Name.”).

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown the Disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

I. RIGHTS

The Disputed domain name is confusingly similar to the Complainant’s registered trademarks since it reproduces the Complainant’s mark ‘CHATROULETTE’, merely adding the CC top level domain identifier ‘.SX’ at the end.

II. NO RIGHTS OR LEGITIMATE INTERESTS

The Respondent has not submitted any reply. Therefore, it has submitted no information on possible rights or legitimate interests it might hold. On its part, the Complainant has submitted information and arguments which allow it to be reasonably assumed that the Respondent has no rights or legitimate interest in the Disputed domain name in dispute.

As the WIPO Arbitration and Mediation Center pointed out in UDRP case No. D2002-0856:

“As mentioned above in section 3, the Respondent has not filed a Response and is therefore in default. In those circumstances when the Respondent has no obvious connection with the disputed Domain Names, the prima facie showing by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest exists. WIPO Case No. D2002-0273 <sachsen-anhalt>; WIPO Case No. D2002-0521 <volvovehicles.com>”.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed domain name.

As assessed in Andrey Ternovskiy dba Chatroulette v. Alexander Ochki, WIPO Case No. D2017-0334:

"By not responding to the Complainant's contentions, the Respondent in this proceeding has not attempted to demonstrate its rights or legitimate interests.

The Panel further notes that there is no evidence that before any notice of the dispute with the Complainant, that the Respondent was using the disputed domain names for a bona fide offering of goods or services. Instead, the Respondent redirects users to the websites providing online video chat services and online video social introduction and networking services, in direct competition with the Complainant".

Furthermore, apparently the Respondent did not reply to the C&D letters sent by the Complainant.

III. BAD FAITH

The Respondent has, as a result of his default, not invoked any circumstances which could invalidate the Complainant´s allegations and evidence with regard to the Respondent´s registration and use of the Disputed domain name in bad faith.

Paragraph 4(b) (iiii) of the Policy provides that the following circumstances are deemed to be evidence that the Respondent has registered and is using the Disputed domain name in bad faith:

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Complainant's CHATROULETTE trademark is well-known as a popular chat site and has been for many years before the registration of the Disputed domain name. The Respondent's registration of the first disputed domain name wholly incorporating a well-known third-party mark is, in the Panel´s view, indicative of bad faith.

As mentioned in Andrey Ternovskiy dba Chatroulette v. Alexander Ochki, WIPO Case No. D2017-0334:

"It is clear in the Panel's view that in the mind of an Internet user, the disputed domain names could be directly associated with the Complainant's trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327)."