WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ritzio Purchase Limited v. Andrey Lykov / Rosalinda Corporation / Roy Delcy, COUNTSIDE Holding Corp / Registration private, Domains By Proxy, LLC
Case No. D2016-0633
1. The Parties
The Complainant is Ritzio Purchase Limited of Nicosia, Cyprus, represented by Mapa Trademarks SL, Spain.
The Respondents are Andrey Lykov of Moscow, the Russian Federation / Rosalinda Corporation of Belize, Belize / Roy Delcy, COUTNSIDE Holding Corp of Mahe, the Seychelles / Registration private, Domains By Proxy, LLC of Scottsdale Arizona, United States of America.
2. The Domain Names and Registrar
The disputed domain names <ikvclub.com>, <ikvolcano.com> and <ikvulkan.com> are registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2016. On April 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 4, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 7, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 8, 2016.
The Center verified that the Complaint together with the amended 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 10, 2016. The Panel finds that it was properly constituted. 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.
4. Factual Background
The Complainant has been providing gaming, casino and entertainment products and services since about 1992. It has more than 200 branded gaming clubs throughout Europe and more than 5,800 gaming machines. It has more than 2,000 employees in Russia, Germany, Romania, Latvia, Belarus, Croatia and Italy. Between 2006 and 2010, its operating revenues exceeded USD 5.5 billion. It promotional activities include sponsorship of the Russian Paralympic team at the 2006 Winter Paralympic Games in Turin.
According to the Complaint, these activities have been carried on since 1992 under and by reference to VULCAN or вулкан (which, according to the Complaint, translates into English as “volcano” or “Vulcan”).
The Complaint includes evidence of numerous registered trademarks. Examples include:
(a) Russian Trademark No. 353692, VULKAN, in respect of gaming machines and services, registered from November 18, 2005;
(b) Trademark No 791038, for a stylized version of вулкан, registered from September 3, 2002 in Armenia, Azerbaijan, Belarus, Estonia, Georgia, Kyrgyzstan, Kazakhstan, Lithuania, Latvia, Moldova, Tajikstan, Turkmenistan, Ukraine and Uzbekistan;
(c) Community Trademark No. 00989103, VOLCANO, registered from August 11, 2008 for a range of gaming machines and services;
(d) Community Trademark No. 00984297, VULKAN, also registered from August 11, 2008 for a range of gaming machines and services; and
(e) Trademark No. 949162, for a stylized version of “V”, registered from January 26, 2007 in Estonia, Latvia, Belarus, Kazakhstan, Lithuania and Ukraine.
The disputed domain names were registered on, respectively, July 10, 2012, October 4, 2013 and February 16, 2015. Each resolves, or shortly before the Complaint was initiated resolved, to a web page which appears for all practical purposes to be identical. Each of these webpages uses the Complainant’s stylized вулкан trademark, otherwise bears a striking resemblance to the Complainant’s websites and purports to offer gaming and other entertainment services offered by the Complainant.
5. Discussion and Findings
For the reasons discussed in section 5A below, the Panel considers it is appropriate to allow the Complaint to proceed against all the Respondents.
No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondents.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Joinder of multiple Respondents
The Complainant seeks to have all three disputes joined in one proceeding and dealt with at once.
The circumstances in which complaints against multiple respondents may be joined in one dispute are summarized in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16. Relevant principles and a number of earlier decisions were considered carefully also in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.
From those discussions, it may be observed that the decisions made by UDRP panels have been informed by two main considerations. First, recognition that an important objective of the Policy is to resolve disputes falling within the purview of the Policy efficiently and expeditiously. Secondly, it is of paramount importance to ensure that each respondent is treated fairly and joinder would not be prejudicial.
Each of the disputed domain names is ostensibly registered in the name of a different person and each of the Respondents appears to be located in very different parts of the world. However, each of the disputed domain names has been registered through the same Registrar. More importantly, each resolves, or shortly before the Complaint was initiated resolved, to a website which provides gambling and gaming services. Each has essentially the same get up. Prior to the Complaint being filed, each had the same contact information at the bottom of the home page.
In the present case, therefore, it appears that, despite the facially different registrant names and their geographical dispersion, the websites to which the disputed domain names resolve (or resolved) are in fact under common control or are being operated by the same person. While the trademarks the Complainant relies on are to some extent different they are in the same family, and the considerations arising from those relatively minor differences do not impose unduly burdensome issues in this case. Accordingly, the Panel considers that joinder will promote the efficient and expeditious resolution of the dispute without prejudicing the fairness or equity of the treatment of the Respondents.
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks VULKAN, VOLCANO, the stylized version of вулкан and the stylized “V” referred to above. The Complainant has also presented evidence showing that the stylized versions of вулкан and “V” have been used prominently on its gaming establishments in countries which use the Cyrillic alphabet.
The first disputed domain name (<ikvulkan.com>) differs from the Complainant’s trademark VULKAN by the prefix “ik” and the addition of the generic Top Level Domain (“gTLD”), “.com”. The latter component may be disregarded as a functional aspect of the domain name system: WIPO Overview 2.0, paragraph 1.2.
The Panel would not ordinarily consider that the prefixing of the sign VULKAN with the letters “ik” would be sufficient to avoid a finding of confusing similarity. In the present case, the Complainant points out that the letters “ik” are a transliteration into Roman characters of the initials of the words in Russian for “gaming hall”. The use of those letters, therefore, reinforces the potential for association with the activities covered by the Complainant’s registered trademark and for which it uses its VULKAN trademark.
The same reasoning applies to the second disputed domain name (<ikvolcano.com>) and the Complainant’s VOLCANO trademark.
The third disputed domain name (<ikvclub.com>) is not as straightforward as often a sign consisting of three letters could apply to quite a diverse range of activities and entities. In the present case, however, the Complainant has a registered trademark for a stylized “V”. When comparing that to a domain name, it would normally be represented as a “V”. Bearing in mind the significance of “ik” in this context, therefore, the Panel considers that the Complainant has satisfied the standing requirement in relation to the third disputed domain name as well.
Accordingly, the Panel finds that the Complainant has established that the disputed domain names are confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondents have no rights or legitimate interests in each of the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainant states that it has not authorised any of the Respondents to use any of the disputed domain names. Nor are any of the Respondents in any way affiliated with it. None of the disputed domain names is obviously derived from any of the Respondents’ names.
Prior to the Complaint being initiated, each of the disputed domain names resolved to a gambling or gaming website which purported to be a website operated by the owner of the Complainant’s trademarks. Such use does not qualify as use in good faith under the Policy.
In these circumstances, the Complainant has established a clear prima facie case that the Respondents have no rights or legitimate interests in any of the disputed domain names. The Respondents have not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy.
D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that each disputed domain name has been both registered and used in bad faith: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by a third party (usually) such as the complainant.
Those inferences may be drawn readily in the present case. The terms “volcano”, or “Vulcan” or the letter “V” do not have any descriptive or semiotic meaning in association with gaming and gambling services other than through their adoption and long use by the Complainant in respect of its establishments and services. Accordingly, the Panel finds that the Complainant has established the third requirement under the Policy also.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <ikvclub.com>, <ikvolcano.com> and <ikvulkan.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: May 23, 2016