ANDREY TERNOVSKIY dba CHATROULETTE v. Thomas Senkel / Ken Zacharias / Janine Hesse
Claim Number: FA1409001582646
Complainant is ANDREY TERNOVSKIY dba CHATROULETTE (“Complainant”), represented by Stina Pilotti of CSC Digital Brand Services AB, Sweden. Respondent is Thomas Senkel / Ken Zacharias / Janine Hesse (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chatroulette-iphone.com>, <funchatroulette.com>, <runchatroulette.com>, <chatroulette-classic.com>, <chatroulette-german.com>, <chatroulettenet.com>, <leschatroulette.com>, <uschatroulette.com>, <gay-chatroulette.com>, <lesbian-chatroulette.com>, <onechatroulette.com>, <chatroulette-cam.com>, and <chatroulettetv.com>, registered with Cronon Ag; Mesh Digital Limited.
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.
Debrett G. Lyons 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-iphone.com>, <chatroulette-classic.com>, <chatroulette-german.com>, <chatroulettenet.com>, <leschatroulette.com>, <uschatroulette.com>, <chatroulette-cam.com>, and <chatroulettetv.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 October 6, 2014, Mesh Digital Limited confirmed by e-mail to the National Arbitration Forum that the <funchatroulette.com>, <runchatroulette.com>, <gay-chatroulette.com>, <lesbian-chatroulette.com>, and <onechatroulette.com> domain names are registered with Mesh Digital Limited and that Respondent is the current registrant of the names. Mesh Digital Limited has verified that Respondent is bound by the Mesh Digital Limited 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-iphone.com, postmaster@funchatroulette.com, postmaster@runchatroulette.com, postmaster@chatroulette-classic.com, postmaster@chatroulette-german.com, postmaster@chatroulettenet.com, postmaster@leschatroulette.com, postmaster@uschatroulette.com, postmaster@gay-chatroulette.com, postmaster@lesbian-chatroulette.com, postmaster@onechatroulette.com, postmaster@chatroulette-cam.com, postmaster@chatroulettetv.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 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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.
The Panel has issued 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. In that regard, Panel notes that the Registration Agreements are in German, thereby making German the language of the proceedings. Pursuant to Rule 11(a), Panel determines that the language requirement has been satisfied through the German language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in CHATROULETTE and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant owns United States Patent and Trademark Office ("USPTO") Reg. No. 4,445,843, filed Jan. 10, 2011, for the mark CHATROULETTE;
2. The trademark is used by Complainant in relation to its online video chat services and social networking services;
3. The disputed domain names were registered between March 2012 and July 2014;
4. The domain names either resolve to blank pages or to websites which offer services competitive to those offered by Complainant. Some feature adult material.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
Preliminary Issue: Multiple Respondents
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The holders of the disputed domain names differ. Complainant alleges that the holders (Thomas Senkel, Ken Zacharias, Janine Hesse) are effectively controlled by the same person or entity and is in each case an alias for the actual person or entity controlling the domain names. In support of that claim, Complainant points to (i) the common e-mail address boxtox84@[redacted].de given for the WHOIS record for many of the disputed domain names, (ii) the common holder location in Germany, and (iii) the fact that the majority of the domain names were registered in 2012.
Panel does not consider that these facts alone paint the most compelling picture of common control of the domain names but in the absence of any contest 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. Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory (see, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000); Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)) and so Panel is in this instance willing to treat all three holders as the one “Respondent”.
Primary Issues : Policy
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 and is being used in bad faith.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. Complainant’s USPTO registration on the Principal register for CHATROULETTE gives it trademark rights in that term.
All the disputed domain names carry the gTLD extension, “.com”, which can be disregarded for the purposes of comparison with the trademark (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The disputed domain names then only differ from the trademark by way of punctuation and the addition of generic and geographically descriptive terms which do nothing to avoid confusing similarity (see, for example, Alticor Inc v. Cao Mai, FA1521565 (Nat. Arb. Forum Nov. 5, 2013) where the panel stated that, “the domain name buy-artistry.com is unquestionably confusingly similar to [c]omplainant’s famous ARTISTRY mark” as a result of the domain name differing from the complainant’s mark by no more than the generic term “buy” and a hyphen; Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”)).
Panel is satisfied that the disputed domain names are confusingly similar to Complainant’s trademark and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in respect of all of the domain names.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information lists Respondent as either “Thomas Senkel,” “Ken Zacharias” or “Janine Hesse” and so there is no prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
There is no evidence that the disputed domain names have been used in connection with a bona fide offering of goods or services prior to notice of the dispute. The disputed domain names resolve to blank pages or to websites which offer services competitive to those offered by Complainant. Some also feature pornographic material. In particular, there is evidence from the Complaint that the <chatroulette-iphone.com>, <funchatroulette.com>, <runchatroulette.com>, <chatroulette-german.com>, <chatroulettenet.com>, <gay-chatroulette.com>, <lesbian-chatroulette.com>, and <onechatroulette.com> domain names resolve to websites which display the trademark and offer video chat services and emulate Complainant itself. Such use is not protected by either paragraph 4(c)(i) or (iii) of the Policy (see Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use; Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Further, the evidence is that the <chatroulette-classic.com>, <uschatroulette.com>, <leschatroulette.com>, <chatroulette-cam.com>, and <chatroulettetv.com> domain names resolve to blank or “error” pages which do nothing to show a legitimate interest in the names (see Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) where the panel wrote, “Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Finally, it has been long held that redirection of users to adult-oriented material is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name (see, for example, Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003)).
Panel finds that Complainant has established prima facie cases and so the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, those cases are not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s use of the <chatroulette-iphone.com>, <funchatroulette.com>, <runchatroulette.com>, <chatroulette-german.com>, <chatroulettenet.com>, <gay-chatroulette.com>, <lesbian-chatroulette.com>, and <onechatroulette.com> domain names to offer video chat services that are comparable to the services provided by Complainant is an action caught squarely under paragraph 4(b)(iv) above. Panel finds that Respondent is using the domain names to intentionally attract, for commercial gain, internet users to Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademark (see Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) where the panel wrote, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
In relation to the inactive domain names, <chatroulette-classic.com>, <uschatroulette.com>, <leschatroulette.com>, <chatroulette-cam.com>, and <chatroulettetv.com> , Complainant argues, inter alia, for application of the principle first laid out in Telstra Corporation v. Nuclear Marshmallows, (WIPO Case No. D2000-0003). Albeit not the strongest case, Panel is here influenced by the distinctive character of the trademark and the substantial use thereof, together with the apparent lack of good faith, and so finds it reasonable to draw the conclusion, as in the Telstra case, that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate...”.
Accordingly, Complainant has established the third and final leg of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in respect of the following domain names and so Orders that those domain names be TRANSFERRED from Respondent to Complainant: <chatroulette-iphone.com>, <funchatroulette.com>, <runchatroulette.com>, <chatroulette-classic.com>, <chatroulette-german.com>, <chatroulettenet.com>, <leschatroulette.com>, <uschatroulette.com>, <gay-chatroulette.com>, <lesbian-chatroulette.com>, <onechatroulette.com>, <chatroulette-cam.com>, and <chatroulettetv.com> .
Debrett G. Lyons, Panelist
Dated: December 7, 2014
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