WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ritzio Purchase Limited v. Domain Admin, PrivacyProtect.org / Timur Ziganshin / Lianna Tall, Escave Ltd / Private Whois, Global Domain Privacy Services Inc / Moniker Privacy Services
Case No. D2015-0875
1. The Parties
1.1 The Complainant is Ritzio Purchase Limited of Nicosia, Cyprus, represented by Mapa Trademarks SL, Spain.
1.2 The Respondents are Domain Admin, PrivacyProtect.org of Nobby Beach, Australia / Timur Ziganshin of Izhevsk, the Russian Federation / Lianna Tall, Escave Ltd of Mahe, Seychelles / Private Whois, Global Domain Privacy Services Inc of Marbella, Panama / Moniker Privacy Services of Fort Lauderdale, Florida, United States of America, represented by Boston Law Group, PC, United States of America.
2. The Domain Names and Registrars
2.1 The disputed domain names <casino-vulcan.co> and <vulcan-casino.co> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
2.2 The disputed domain names <club-vulcan.com>, <vulcan-cazino.org>, <vulcan-casino2.com>, <cazino-vulcan.com> and <vulcan-cazino.net> are registered with URL Solutions, Inc. How the disputed domain name <vulcan-cazino.net> came to be registered with URL Solutions Inc is addressed in the Procedural History section of this decision.
2.3 The disputed domain names are hereafter referred to collectively as the "Domain Names".
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 27, 2015. At that time the publicly available WhoIs details for the Domain Names identified the registrants as the privacy services "PrivacyProtect.org", "Global Domain Privacy Services Inc" and "Moniker Privacy Services".
3.2 On May 22, 2015, the Center transmitted by email to the concerned registrars a request for registrar verification in connection with the Domain Names. On May 29, 2015, the concerned registrars transmitted by email to the Center their verification responses disclosing the underlying registrants behind the various privacy services as "Lianna Tall" and "Timur Ziganshin" and providing those registrants' contact information.
3.3 The Center provided this information to the Complainant on June 5, 2015 inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 10, 2015.
3.4 The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
3.5 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced June 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response July 2, 2015. The Response was filed with the Center July 2, 2015, in the names of "Escave Limited" and by "Timur Ziganshin" and in this document "Escave Limited" and "Timur Ziganshin" accepted that they were the registrants of the Domain Names. In this decision references to the "Respondent" hereinafter is intended as a reference to these registrants unless the contrary is apparent.
3.6 The Complainant and the Respondent submitted Supplemental Filings on July 7 and July 17, 2015, respectively.
3.7 On June 25, 2015 the Center, having noted that one of the Domain Names <vulcan-cazino.net> was set to expire in September, sent an email in the usual form to Moniker Online Services LLC requesting confirmation of what if anything was required of the Parties to ensure that this Domain Name did not expire in the course of these proceedings. It would appear from subsequent correspondence between Moniker Online Services LLC, URL Solutions Inc and the Center, that whilst this Domain Name was unlocked to allow this Domain Name solely to be renewed, it was nevertheless permitted to be transferred to URL Solutions in apparent breach of paragraph 8 of the UDRP. However, URL Solutions appears to have placed this Domain Name on lock pending the outcome of these proceedings.
3.8 The Center appointed Matthew S. Harris, Olga Zalomiy and Paul M. DeCicco as panelists in this matter on July 28, 2015. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
3.9 On July 28, 2015, the Respondent filed yet another supplemental filing. In that filing the Respondent referred to proceedings filed on July 24, 2015 with the Russian trade mark office that sought to cancel a number of the Complainant's Russian trade mark registrations. On July 31, 2015, the Complainant filed a submission in response asking the Panel to suspend these proceedings for 30 days pursuant to Paragraph 18(a) of the Rules. Later that same day the Respondent filed a further submission opposing that suspension.
3.10 On August 7, 2015, the Panel informed the Parties that it was not minded to suspend the proceedings as requested by the Complainant. It stated that it would inform the Parties of it reasons for not doing so in it decision in this matter.
4. Factual Background
4.1 The Complainant is a company registered in Cyprus and is part of a business group that has been engaged in gaming and casino operations for over 20 years.
4.2 It would appear that until the mid 1990s this group had substantial operations in Russia. However, (according to the uncontested claims of the Respondent in this respect), in 2009 all bricks and mortar gambling operations in Russia became illegal save in a limited number of government approved locations. At that point the Complainant withdrew its on-the-ground operations in that country.
4.3 Notwithstanding this physical withdrawal, the Complainant's business group has continued to operate elsewhere in the world. Undisputed evidence has been provided that shows that it still has operations in the form of 200 branded gaming clubs throughout Europe; in particular in Germany, Italy, Croatia, Romania, Belarus and Latvia. From 2006 to 2010 its revenues amounted to in excess of USD 5.5 billion.
4.4 It would appear that some, if not all, of these various operations have been conducted under variants of a single "Volcano" brand. "Вулкан" was used in Russia. "Вулкан" in Cyrillic is the equivalent of "Vulkan" in roman script. "Vulkan Stern" was and is still used in Germany, while "Vulcano della Fortuna" has been used in Italy and "Vulcan" has been used in Belarus.
4.5 The Complainant is also the owner of a number of registered trade marks around the world that incorporate or comprise variants of this brand. Many of these trade marks are registered in Russia. However, they also include the following marks:
(i) International trade mark no 791038 dated September 3, 2002 (based upon a Russian registration no 216203 dated July 3, 2002) in class 41 designating 14 different states, all of which either form part of the Commonwealth of Independent States (CIS) or were historically part of the Soviet Union. The mark has proceeded to grant in all of these states and takes the following form:
(the "Volcano Design Mark")
(ii) International trade mark no 989103 dated August 11, 2008 (based upon a Russian registration No. 307879 dated June 2, 2006) for the word mark VOLCANO in classes 9, 16, 21, 25, 28, 35, 38, 39, 41, 42, 43 and 45, designating Belarus, the European Community, Croatia, Kazakhstan, Serbia and the Ukraine. The mark proceeded to grant unchanged in Belarus, Croatia and Serbia. In Kazakhstan it has been subject to provisional refusal. It has proceeded to grant in all other designated countries save for in respect of a modified set of goods and services. For example, the application proceeded to grant as a Community Trade Mark on September 3, 2012 in respect of goods and services in classes 16, 21, 25, 28, 35, 39, 41, 43, 45.
(iii) International trade mark no 984297 dated August 11, 2008 (based upon a Russian registration No. 353692 dated June 25, 2006) for the word mark VULKAN in classes 9, 16, 21, 28, 32, 35, 38, 39, 41, 42, 43 and 45, designating Belarus, the European Community, Croatia, Kazakhstan, Serbia and the Ukraine. The mark proceeded to grant unchanged in Croatia but has been provisionally refused in Kazakhstan. It has proceeded to grant in all other designated countries in respect of a modified set of goods and services. For example, the application proceeded to grant as a Community Trade Mark on October 1, 2012 in respect of goods and services in classes 9, 16, 21, 28, 35, 38, 39, 41, 42, 43 and 45.
4.6 The Domain Names were registered on the following dates:
<club-vulcan.com> February 2, 2012
<cazino-vulcan.com> August 6, 2013
<vulcan-cazino.net> September 10, 2013
<vulcan-cazino.org> October 9, 2013
<vulcan-casino2.com> October 30, 2013
<casino-vulcan.co> July 31, 2014
<vulcan-casino.co> July 31, 2014
4.7 Shortly after registration control of each of the Domain Names was passed to GGS Limited ("GGS"), an Anguilla company.
4.8 GGS has operated a website from the domain name <vulcan-casino.com> since June 2011 and has operated similar websites from the Domain Names since their registration. At all relevant times these websites have offered online gaming services. The websites are in the Russian language and almost all of the users of those websites come from Russia and the Ukraine. The percentage of Russian visitors ranges from 46 percent in the case of the website operating from the Domain Name <club-vulcan.com>, to 82 percent in the case of visitors to the website operating from the Domain Name <vulcan-casino2.com>.
4.9 The websites operating from the Domain Names prominently feature the Volcano Design Mark. Although the websites are in Russian, the Complainant has provided uncontested translations of text that appears on the websites operating from the Domain Names as follows:
<casino-vulcan.co> and <cazino-vulcan.com>:
"Slots Volcano - a gaming brand, well-known in many countries. As for Russia and the CIS countries, there is, perhaps, there will be no such gamblers, who would not love to play clubs volcano.
The highest quality of service and the most generous slot machines on the market of gambling entertainment - these are our main features. It is because of this approach to business brand, 'Volcano' was the undisputed leader, and even synonymous with 'slots'. Have you caught yourself thinking 'Where to play slot machines?' Of course - in the volcano!
Keeping pace with the times, not so long ago we went out and the open spaces of the Internet. Now the old familiar games available right in your browser! Moreover - Casino- Vulcan.co on our site you can play slot machines for free, without registration and SMS."
"Official Game Club Volcano offers to play slot machines for free, without registration and sms! It is inconceivable that someone does not recognize good old red-and-blue logo 'Game Club Volcano.' Slot machines Vulcan were deservedly known throughout Russia and CIS countries.
By taking advantage of the Internet, we can now offer our customers an even greater service. One of our innovations is that you can play as well as in free slot machines for money in our club - Volcano online casino!"
<vulcan-casino.co> and <vulcan-cazino.net> <vulcan-cazino.org> and <vulcan-casino2.com>:
"We are sure that there is not a man that would not be familiar with the brand name 'Volcano'. We have long been a leading national network of gaming clubs, but after some changes in the Russian legislation, the club 'Volcano' had left his home and now we're working on the territory of countries such as Belarus, Latvia, Serbia, Italy, Germany, Romania, the Czech Republic, Peru and Bolivia.
We keep up with the progress and are ready to offer you a long-familiar and favourite games - now on the Internet. All of our old players, no doubt, already vkurse [sic] the advantages offered by the game at the 'volcano'.
Surely you are familiar with our brand, because not so long ago the gaming club 'Volcano' with blue-red sign can be found in any large, and not very city. Without false modesty we can say that Vulkan had the largest network of gaming clubs in Russia and Moscow. And now - in 2011 - we are glad to see you on our official web-site!"
"Club Volcano - familiar to many, if not all, gambling brand, has long become synonymous with big winnings and gambling Activity. Since the heyday of gaming network 'Volcano' Many years have passed, and now we have shifted our emphasis on Europe, Latin America, and most importantly - we are now represented on the Internet!"
"All lovers of the casino in real life yet, of course, is well remembered the blue-red sign gambling clubs 'Volcano'. He was in any major city. It was the largest network gaming establishments, which united a great many true connoisseurs of gambling in the casino. Now free slot machines you can play online casino Volcano."
4.10 There have been a number of previous UDRP decisions involving similar domain names to those that are the subject matter of the current proceedings. In particular:
(i) EvoPlay LLC v. Mr Timur Ziganshin / Moniker Privacy Services / Timur, WIPO Case No. D2015-0222 in which the Complainant's licensee brought proceedings in relation to the domain names <casino-vulcan.com>, <clubvulcan.com>, <vulcan-casino.com>, <Vulcan-casino.net> and <vulcan-casino.org> and <vulcan-cazino.com>; and
(ii) EvoPlay LLP v. Mardiros Haladjian / GGS Ltd, WIPO Case No. D2015-0252 in which the Complainant's licensee brought proceedings in relation to the domain names <bestvulkan.com> and <myvulkan.com>.
4.11 In each of these cases the complaint was rejected. The reasons of the panel in each of these case for doing so are addressed later on in this decision.
4.12 In contrast, the Complainant succeeded in Ritzio Purchase Limited v. Whoisguard Protected, Whoisguard, Inc / Zhoselin-Patrick Mandzela, WIPO Case No. D2015-0295 in relation to the domain name <volcano-online.com>. However, in that case the Respondent does not appear to have been involved and no response was filed.
5. Parties' Contentions
5.1 The Complainant refers to its various registered trade marks and claims that by reason of its activities these marks are famous worldwide. It claims that each of the Domain Names is confusingly similar to those marks.
5.2 The Complainant contends that the Respondent is not a licensee of Complainant, and that the Complainant has not authorised or consented to the Respondent's use of any of its trade marks. It maintains instead "that [the] Respondent simply acquired the [Domain Names] in hopes of intentionally attracting, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion". Further, it contends that none of the factors identified in paragraph 4(c) of the Policy apply in this cases. It, therefore, claims that the Respondent has no right or legitimate interest in the Domain Names.
5.3 Similarly the Complainant contends that each of the Domain Names was registered and used in bad faith. It claims that the use of the Domain Names infringes its trade mark rights. Further, it maintains that it is apparent from the websites operating from the Domain Names that the Respondent is effectively pretending to be the Complainant, when it is not.
5.4 The Complainant also contends that the Respondent's use of the Domain Names falls within the scope of paragraph 4(b)(iv) of the Policy. Further, the Complainant contends that the Respondent has sought to hide its true identity, inter alia, through the use of privacy services and that this is again an indicator of bad faith.
5.5 The Respondent begins its substantive response with a quote from Yogi Berra declaring: "It's déjà vu all over again." In this respect it refers to the two previous decisions (i.e,the decisions identified at paragraph 4.10 of this decision above) in which claims against the Respondent or related parties in respect of similar domain names failed. It claims that the arguments raised by the complainant in those cases were nearly identical to those in the current proceedings. The Respondent claims that for the same reasons given by the panels in those cases, the Complaint should be rejected. It also relies on the comments in paragraph 4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the "WIPO Overview 2.0") as to the desirability that panel decisions under the policy are "consistent with prior panel decisions dealing with similar fact situations".
5.6 So far as the substantive issues in this case are concerned, the Respondent contends that for many years gambling has been illegal in Russia. As a consequence of this it is claimed that the Complainant's Russian marks have not been used in Russia since at least 2009 and that to "the extent they claim protection for gambling services, the Russian Registrations are invalid due to abandonment and non-use and are subject to cancellation". In this respect, the Respondent makes extensive submissions in relation to Russian gaming and intellectual property law.
5.7 The Respondent further claims that the Complainant's various international registrations rely upon those invalid registrations and "may still be 'dependent' (and thus vulnerable to cancellation) upon the validity of their underlying Russian registrations". The Respondent also appears to claim that the international registrations are invalid because the Complainant is a Cyprus corporation and therefore did not have "a real and effective industrial or commercial establishment in Russia" at the time the marks were registered.
5.8 The Respondent also contends that outside of Russia many other entities use "volcano trade[ ]marks" in respect of these services and this has "prevented [the] Complainant from registering such marks in several jurisdictions".
5.9 The Respondent claims that when it registered the Domain Names it did so "with the knowledge that trade[ ]mark rights no longer could exist in Russia for any gambling-related activities".
5.10 Further, the Respondent claims that the user of the Domain Names, GGS "has operated the [Domain Names] and their affiliated websites openly and with the implicit consent of [the] Complainant for nearly four years". In this respect it claims that the "Complainant has had extensive discussions with GGS regarding the [Domain Names] and the websites, including discussions about possible joint projects". In support of that assertion the Respondent relies upon an Affidavit from one Andrey Sevostianov. That affidavit claims that not only was such use with the implicit consent, but also the explicit consent, of the Complainant. However, no further details are provided as to when and in exactly what circumstances that consent was provided and what these supposed "joint ventures" were.
5.11 The Respondent contends that the use of a privacy service in relation to the Domain Name registrations is of "no relevance" since there are legitimate reasons for using such services (citing WWF-World Wide Fund for Nature v. Moniker Online Services LLC, WIPO Case No. D2006-0975).
5.12 Finally, the Respondent contends that this is a case where the Panel should make a finding of Reverse Domain Name hijacking.
C. The Parties' Supplemental Submissions
5.13 Both Parties have submitted supplemental submissions in these proceedings. None of these were called for by the Panel. The position as to the admissibility of unsolicited supplemental submissions is addressed in paragraph 4.2 of the WIPO Overview 2.0 as follows:
"Consensus view: As the UDRP Rules grant the panel sole discretion to request further statements and determine the admissibility of evidence which may include an unsolicited filing, such filings, when received from a party, would typically be put before the panel upon the panel's appointment - at no additional charge - for determination as to admissibility, and assessment of need for further procedural steps (if any). Normally in such cases, a panel would include a ruling on admissibility of any such received filings in its decision, or in the event that an opportunity to reply is offered to the other party, in an administrative panel order. Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of 'exceptional' circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order."
5.14 The Panel is sceptical that there is much in the Complainant's supplemental submission of July 7, 2015 that could not have been included in the original Complaint. This is particularly so given that the Respondent would appear to be repeating arguments that it put forward in the two previous cases involving the Respondent and an entity that claimed to be the Complainant's licensee. However, whether or not this is correct, the Panel has formed the view that it has not needed to take into account the Complainant's supplemental submission in this case save to note that the Complainant seems to dispute the Respondent's contention that gambling has since 2006 been unlawful in Russia. Given this, the Panel also has not considered the Respondent's supplemental submission in reply of July 17, 2015.
5.15 The Respondent's supplemental submission of July 28, 2015 is somewhat different in that it claims that on July 24, 2015 GGS has made an application to the Russian Intellectual Property Court to cancel a number of Russian trade marks, including marks registered in the name of the Complainant and marks in the name of an affiliated company of the Complainant. The marks attacked include each of the Russian trade marks upon which the international Trade Mark registrations identified in paragraph 4.5 above were based. Although no explanation is offered as to why these applications have been made only at this very late stage, the Panel is prepared to admit this submission in these proceedings.
5.16 In support of these claims the Respondent provides a copy of these applications in Russian. It would appear that these documents are consistent with the Respondent's claims that cancellation proceedings have been commenced challenging a number of the Complainant's marks, although those proceedings appear to be limited to the marks' class 41 registrations. If the Panel had considered the exact scope of those proceedings to be determinative of any issue in these proceedings, it would have ordered that the Respondent provide translations of the same in accordance with paragraph 11(b) of the Rules and would also have provided the Complainant with an opportunity to respond substantively to the same. For the reasons that are set out in greater detail later on in this decision, the Panel has not considered it necessary to do this.
6. Discussion and Findings
6.1 To succeed in these proceedings the Complainant make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements in turn. However, before doing so, it is convenient to explain why the Panel did not accede to the Complainant's request that these proceedings be stayed and to respond to the Respondent's contention that this Complaint should be dismissed because the facts are essentially the same as those, and for the reasons given, in WIPO Case No. D2015-0222 and WIPO Case No. D2015-0252.
A. Previous decisions and the Complainant's Request for a Stay
6.3 As the Respondent points out, paragraph 4.1 of the WIPO Overview 2.0, although recognising that there is no formal doctrine of precedent under the Policy, records the view of panelists that it is desirable that decisions are "consistent with prior panel decisions dealing with similar facts". This, of course, does not mean that the mere fact that one or another party has succeeded in one case means that a panel should unquestionably come to the same conclusion in a similar case. Instead one would usually expect the panel deciding the latter case to engage with the reasoning in the earlier case and if it disagrees with the earlier case, to explain why this is so. That is the way in which discussion under the Policy progresses and, hopefully, consensus on certain issues is achieved.
6.4 That is not to say that a panel must discuss and follow or distinguish every case cited by a party in proceedings. Some may be unremarkable and others may be historical and not reflect mainstream views on the operation of the policy. The WIPO Overview 2.0 which sets out certain consensus positions, although similarly not binding on panels, is particularly useful in this respect.
6.5 In the present case, the Respondent is perhaps making a different point. It contends that this is not just a case where the facts are similar to those in the earlier decisions relied upon. It claims that, save for the identity of the Domain Names involved, this case is factually identical to the two earlier cases decided in its favour and which involved connected, if not the same, parties. The Panel accepts that in such circumstances, if the Panel is to depart from the reasoning in these earlier cases, it should at least explain why this is so.
6.6 In both WIPO Case No. D2015-0222 and WIPO Case No. D2015-0252 the panels did not reach a positive conclusion either that the Respondent had a right or legitimate interest under the Policy or that these were registrations in good faith. Instead, in WIPO Case No. D2015-0222 the majority of the panel concluded that "the Complainant has not carried its burden of proving that Respondent registered and used the Domain Names in bad faith within the meaning of the Policy". The only substantive reasoning that is provided in this respect is as follows:
"As the sheer mass of documentation accompanying the parties' submissions in this case tends to indicate, this dispute is not well suited for resolution under the Policy. In this case, there are potential issues surrounding the Complainant's standing as purported licensee to bring this proceeding, the validity of the underlying trademark rights upon which the Complaint is based, possible trademark abandonment issues, the possible acquiescence of the purported licensors (Bartlett and Ritzio) in the Respondent's conduct, possible issues of the Complainant's unclean hands, and so forth.
The Policy does not contemplate this Panel serving as a tribunal of general jurisdiction over any and all disputes which are somehow related to domain names. The issues raised by the parties here exceed the relatively narrow confines of the Policy, which is designed chiefly to address clear cases of cybersquatting. See, e.g., Libro v. NA Global Link, WIPO Case No. D2000-0186."
6.7 The reasoning of the panel in WIPO Case No. D2015-0252 was slightly more detailed. In particular, it stated as follows:
"Complainant itself, citing prior cases decided under the Policy, points out to us that issues of trademark validity are generally outside the purview of UDRP proceedings. For that very reason (among others), Complainant's case fails. The facts of this case do not establish a clear-cut case of cybersquatting, and much of the substance of the dispute between the parties turns on issues of trademark ownership, validity, and licensing. If Complainant's predecessors in interest never had valid trademark rights in the marks, or if they have since become abandoned, Respondent would have every right to make such usage. These are complex issues best addressed through the court system rather than under the Policy.
Considerable factual and legal disputes appear to remain regarding the validity of the trademarks owned by Ritzio and Bartlett, as well as about the precise scope of the rights conveyed to Complainant, and whether such scope includes the power to act under the Policy to challenge the registration or use by Respondent of domain names to which Complainant itself had no rights whatsoever at the time of the domain name registrations."
It then proceeded to cite and adopt the reasoning of the Panel in WIPO Case No. D2015-0222.
6.8 Although these and other decisions assert that the Policy was only designed to deal with "clear cut cases of cybersquatting", this is a statement that needs to be treated with some care. "Cybersquatting" is not a defined term under the Policy. Ultimately, what matters is whether the Complainant can show whether the requirements of paragraph 4(a) of the Policy are fulfilled. Similarly the words "clear cut" do not appear in the Policy. As has already been stated the test is one of on the balance of probabilities (or to use US terminology "the preponderance of the evidence"); See WIPO Overview 2.0 paragraph 4.7.
6.9 In some cases there may be complex factual issues in dispute between the parties where who is right may be relevant to an issue in the UDRP proceedings but which a panel is ill-equipped to determine. In such cases, the panel may conclude that the complainant has not made out its case or simply dismiss the case without substantive comment regarding the Policy factors. Further, particular care may need to be taken where one of these issues is already before some court or other tribunal, which is better able to determine that issue. In such circumstances, a panel may consider it more appropriate to leave that issue to be determined in another forum. However, the mere fact that the parties may be involved in a broader and more complex dispute and even parallel proceedings does not necessarily mean that proceedings under the Policy cannot continue. It will depend upon exactly what is in dispute, what any other court or tribunal in any parallel proceedings is determining and whether either actually has any bearing on the issues the panel has to consider in proceedings under the Policy.
6.10 As was stated in IFA Hotels & Resorts FZE v. Jaffar Sharif WIPO Case No. D2008-0895:
"The Panel certainly accepts that there is broader dispute here between the parties and that the Panel should be wary of trespassing into areas that are the preserve of the relevant trade mark registries in which that dispute is ongoing. However, it does not follow simply from the fact of the existence of parallel proceedings that a Panel should refuse to consider the substance of the Complaint. Instead the Panel believes that the correct approach is to examine each of the requisite elements of the Policy in turn. In the context of that examination it may become apparent that there is a substantive factual dispute between the parties that cannot be resolved under the Policy and/or is being addressed and/or can be better determined in another forum. Only at this stage does the question raise its head whether the Panel should decline to consider that issue further."
6.11 This is the approach that the Panel has decided to adopt in this case. As the Panel will describe, having conducted this exercise it has concluded that this case is not as complex as it first seems and that it is able to come to a determination as to whether each of the elements of the Policy has been shown.
6.12 The Panel has also decided that it is neither necessary nor appropriate to grant the Complainant's request for a stay. The Complainant claims that the application by GGS to invalidate certain Russian marks is intended to delay the present proceedings under the Policy but states that a decision in those Russian proceedings would "purify the picture for the Panel regarding 'questionable' issues raised by [the Respondent]". It, therefore, seeks a stay under Paragraph 18(a) of Rules. This paragraph states:
"In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision."
6.13 The Respondent resists this application. It denies that it wants to delay the present proceedings and has "no interests other than to have [these UDRP proceedings] quickly and efficiently resolved". It also contends that the Russian proceedings "are not directly related to the [D]omain [N]ames at issue in this proceeding" and that therefore paragraph 18(a) of the Rules does not apply.
6.14 Whether or not paragraph 18(a) applies depends upon whether court or other proceedings seeking to invalidate a trade mark that is relied upon in UDRP proceedings (as opposed to proceedings in relation to the relevant domain name itself) are proceedings "in respect of a domain-name dispute". No decision has been cited by either party in this respect and the Panel has been unable to find any case which directly addresses this issue.
6.15 In the absence of more detailed argument from either of the Parties, the Panel is unconvinced that paragraph 18(a) applies, but ultimately it does not matter. The reason is that even if it does, the issue of whether or not to stay the proceedings is a matter of discretion for the Panel. In this case, the Panel has formed the view that it is possible to come to a determination in these proceedings, regardless of the ultimate outcome of the Russian proceedings. In these circumstances, there is no good reason for exercising its discretion so as to order a stay and it declines to do so.
B. Identical or Confusingly Similar
6.16 Each of the Domain Names, can only be sensibly read as the term "Vulcan" in combination with some non-distinguishing ordinary word such as "club" or "casino" and the ".co" country code Top Level Domain ("ccTLD") or the ".net", ".com" or ".org" generic Top Level Domains (gTLDs). The addition of the number "2", in the case of one of the Domain Names, does not prevent such a reading.
6.17 The Panel also accepts that the term "Vulcan" is phonetically identical to the Complainant's VULKAN word marks identified in paragraph 4.5 (iii) above. Given this, the Domain Names are each "confusingly similar" (as that term is understood under the Policy), with a trade mark in which the Complainant has rights.
6.18 This international registration and the marks that flow from it were initially based upon a Russian trade mark. That Russian registration now appears (at least in part) to be subject to challenge. However, the Respondent's attempt to cast doubt on the validity of the non-Russian marks because they "may still be" dependent on the original Russian registration is wholly unconvincing. The relevant international registration is over 5 years old and therefore under Article 6 of the Madrid Protocol these registrations are no longer dependent upon the original Russian marks. Therefore, even if the current invalidity proceedings are successful, the Complainant will still have registered trade marks for the term "Vulcan" elsewhere. The Respondent does not contend that these other marks are invalid for any other reason.
6.19 The ownership of a trade mark registered with a recognised trade mark office is sufficient for the purposes of paragraph 4(a)(i) of the Policy to show rights in a mark. As is recorded at paragraph 1.1 of the WIPO Overview 2.0:
"If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use)…and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel's determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP."
6.20 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
6.21 The Panel notes that in both WIPO Case No. D2015-0222 and WIPO Case No. D2015-0252 one of the issues that concerned the panels was the fact that the complainant in those cases (a putative licensee of the Complainant here) was not the owner of the marks relied upon. Instead, it claimed to be a licensee of the relevant marks and the scope and validity of that licence appeared to be contested. This is not an issue in the present case as the Complainant is the registered owner of the relevant registered marks.
C. Rights or Legitimate Interests
6.22 The Respondent's claim in support of their having rights or legitimate interests is essentially that as the Complainant's trade mark rights are liable to revocation in Russia for non-use, the Respondent can as a matter of Russian law, legitimately adopt those trade marks in connection with its business in Russia without infringing any right of the Complainant. The Respondent therefore contends that it can lawfully use these Domain Names in Russia and that consequentially the Respondent has rights or legitimate interests in the same.
6.23 As explained above, the Panel considers it inappropriate to venture upon a discussion as to whether the Complainant's marks are, or are not, valid in Russia. In any event, it is prepared to assume (without deciding) in the Respondent's favour that these marks are indeed invalid and unenforceable in Russia by reason of their non-use. However, it does not necessarily and inevitably follow from this that the Respondent has rights or legitimate interests in the Domain Names.
6.24 This Respondent's argument assumes that simply because the use of a domain name cannot be stopped as a matter of local law in a particular country then the registrant must have a right or legitimate interest in that domain. However, the Panel does not think this is right. It is not uncommon under the Policy for a complainant to own registered trade mark rights in a term in a large number of countries and for that term also to be known in other countries where a mark has not yet been obtained. Should someone register and use a domain name that incorporates that term in a country where trade mark rights do not yet exist with a view to taking unfair advantage of that reputation (for example to sell a competing product), it is unlikely that under the Policy the registrant will have a relevant right or legitimate interest. This is so, even if the complainant cannot demonstrate that the registrant's use of the domain name is unlawful in a particular jurisdiction.
6.25 Of course, the present case is not one where the Complainant has not got round to applying for a mark in Russia. It is one where those marks have been obtained but are claimed to be invalid. But the point is that the existence of a right or legitimate interest for the purposes of the Policy and whether the use of a domain name is unlawful as a matter of local law, is not necessarily the same thing.
"Paragraph 15(a) of the UDRP provides that a panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the UDRP, the UDRP Rules, and any rules and principles of law that it deems applicable. Rooted in generally-recognized principles of trademark law, and designed to operate in the context of the world wide web, the decision framework of the UDRP generally does not require resort to concepts or jurisprudence specific to national law (other than with respect to the question of whether trademark rights exist). For example, WIPO panels have recognized that bad faith under the UDRP may be assessed by reference to the consistent body of prior UDRP decisions."
6.27 For rights or legitimate interests to exist under the Policy, usually something else other than mere absence of illegality is required. Non-exclusive examples of that "something else" are to be found in paragraph 4(c) of the Policy. This states that any one of the following will demonstrate rights or legitimate interests:
"(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;
(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; and
(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 trademark or service mark at issue."
6.28 Paragraph 4(c)(iii) is not relevant in this case since the Respondent's use of the Domain Names is commercial in nature. So far as paragraph 4(c)(ii) is concerned, the Respondent does not contend that it is commonly known by any of the Domain Names or the term "Vulcan" nor is there any evidence in the record that supports such a position. Indeed, as the Panel goes on to address in greater detail in the context of the discussion of bad faith later on in this decision, it seems to be undisputed that the way in which the Respondent (or those to whom it has handed control of the Domain Names) has conducted business is to represent to the Russian speaking public that the person responsible for the websites operating from the Domain Names either is the Complainant or is in some manner the legitimate successor in business to the Complainant, when in reality it is not. One cannot claim to be commonly known by a name in circumstances where one is using that name to impersonate someone else.
6.29 Further, so far as paragraph 4(c)(i) is concerned, it appears to be undisputed that the Respondent was aware of the Complainant's claimed rights when it registered and started to use the Domain Names. Accordingly, it is highly questionable whether the Respondent's use was before notice of the relevant dispute. Further and in any event, the Panel is of the view that the use of a name or trade mark so as to impersonate another does not constitute a bona fide offering of goods or services under the Policy. Indeed, such activity is usually seen as a positive indicator that rights or legitimate interests do not exist (see, for example, Saks & Company v. saksfifthavenue-hours.net, WIPO Case No. D2014-1194)
6.30 The Panel also notes that the Respondent contends at great length that gambling in Russia is illegal. The Panel is not in a position to conclude as to whether this is right or wrong. This is precisely the sort of issue which is ill suited to determination under the UDRP. Nevertheless, it is worth recording that this is an argument which if correct, undermines rather than supports the Respondent's case.
6.31 As far as the Panel can tell, this argument as to the legality of gambling law is advanced to provide the reason why the Complainant cannot have used its marks in Russia for a number of years and therefore why its Russian marks must be invalid. As has already been explained, even if the Panel would be prepared to accept for the purposes of these proceedings that the Complainant's marks are invalid based on the illegality of gambling in Russia, given that the Respondent's activities also involve gambling and are primarily directed to persons in Russia, it follows that the Respondent's own activities are also illegal.
6.32 Therefore, it would appear that the Respondent is trying to contend that it has rights or legitimate interests in the Domain Names because its activities are not contrary to Russian trade mark law even though it posits that those same activities are illegal as a matter of Russian gambling law. The Respondent cannot simultaneously have its cake and eat it.
6.33 In the circumstances, the Panel finds that Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
6.34 Despite the extensive arguments put forward by the Respondent, there appears to be no real dispute that the Respondent was aware of the Complainant's marks at the time that the Domain Names were registered and has essentially set up websites that are intended to lead Internet users to believe that these have been set up by the Complainant or by an entity that is the Complainant's successor in business.
6.35 This is apparent not only from the fact that the websites prominently display the Volcano Design Mark, but also from the text that appears on these websites. For example, according to the undisputed translations provided in the Complainant, the following text appears on the website that is or was displayed from four of the Domain Names:
"Surely you are familiar with our brand, because not so long ago the gaming club 'Volcano' with blue-red sign can be found in any large, and not very city. Without false modesty we can say that Vulkan had the largest network of gaming clubs in Russia and Moscow. And now - in 2011 - we are glad to see you on our official web-site!"
6.36 The reference to the brand and the reference to "Vulkan [having] had the largest network of gaming clubs in Russia and Moscow" is clearly a reference to the Complainant. As such this text provides clear evidence as to both the reputation of the Complainant's marks in 2011 in Russia and the Respondent's own knowledge of the Complainant's marks at that time. Further, the sentence that follows this and the reference to this being an "official website" can only be sensibly understood as amounting to a claim that the operator of the website is either the business that used to run the Complainant's "network of gaming clubs" or somehow connected or authorised by the entity that did.
6.37 The Respondent contends that Complainant has consented to the registration and use of the Domain Names in this manner. Were this true, that would most likely provide an answer to the Complainant's claims in this case. However, there is no real evidence before the Panel to this effect. Although Mr. Sevostianov claims this to be the case in an affidavit, this is little more than a bare assertion. No further explanation, elaboration or evidence as to exactly what form such consent took is provided. There is a reference to joint venture discussions, but it is not alleged that the Respondent's activities have been pursuant to such a joint venture and the mere fact that one enters into joint venture discussions with someone does not mean that one is implicitly, let alone explicitly, consenting to their activities to that date.
6.38 At its heart, therefore, and despite the extensive argument and submissions filed by both the Parties, ultimately this is a relatively simple case of impersonation. The Respondent (or at least persons on behalf of whom the Respondent has registered the Domain Names) has registered and is using the Domain Names in order to pass themselves off as the Complainant (or in some way authorised by the Complainant) when it is not, in order to thereby draw Internet users to gambling websites for commercial gain. Registration and use of a domain name for such a purpose is a classic example of registration and use in bad faith. So far as use is concerned it is activity that falls within the scope of paragraph 4(b)(iv) of the Policy.
6.39 Whether such impersonation and passing off offends against Russian trade mark law the Panel is not in a position to say. However, in the opinion of the Panel even if it does not offend against Russian law, that does not prevent a finding of bad faith registration and use in this case.
6.40 In the circumstances, the Panel concludes that Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <casino-vulcan.co>, <cazino-vulcan.com>, <club-vulcan.com>, <vulcan-casino.co>, <vulcan-casino2.com>, <vulcan-cazino.net> and <Vulcan-cazino.org> be transferred to the Complainant.
Matthew S. Harris
Paul M. DeCicco
Date: August 12, 2015