WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ritzio Purchase Limited v. Twist Services LTD, Twist International
Case No. D2016-0967
1. The Parties
The Complainant is Ritzio Purchase Limited of Nicosia, Cyprus, represented by Mapa Trademarks SL, Spain.
The Respondent is Twist Services LTD of Limassol, Cyprus and Twist International of Belize City, Belize.
2. The Domain Names and Registrars
The disputed domain names <casinovulkan.info>, <mybestvulkan.com>, <vulkangames.info>, <vulkan-gamez.com>, <vulkanimgs.com>, <vulkanochance.com>, <vulkanogames.com>, <vulkanogamez.com>, <vulkanopartner.net>, <vulkanoplay.com>, and <vulkanwin.info> are registered with Moniker Online Services, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 14, 2016. On May 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 18, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2016. The Respondent sent an email communication to the Center on May 25, 2016. The Center sent an email communication to the Parties on May 26, 2016, referencing the Respondent's communication and inviting the Parties to explore settlement options. The Complainant did not file a suspension request before the Center and the Center notified the commencement of panel appointment on June 16, 2016.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on June 29, 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 for more than 20 years, since about 1992, has been in the business of providing gaming, casino, and entertainment products and services and other related products and services under the known By-κaH (which means in English "volcano" or "vulkan") and Vulkan brands.
According to the uncontested allegations of the Complainant, his operating revenue, between 2006 and 2010, was in excess of USD 5.5 billion.
The VULKAN and VOLCANO marks are registered, inter alia, long before the registration of the disputed domain names, in the Russian Federation, Latvia, Armenia, Belarus, Germany, Romania, Croatia, Italy, and the European Union, with the earliest mark registration on September 2, 2002.
The disputed domain names were registered in 2013 (1 domain name), 2014 (1 domain name) and 2015‑2016 (9 domain names). They are used in connection with functional online casinos.
5. Parties' Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain names and that the Respondent registered and is using the disputed domain names in bad faith.
The Respondent did not reply to the substance of the Complainant's contentions. It sent an email to the Center on May 25, 2016 saying that "they want to work legally under the name Vulkan". The Center sent an email to the Parties regarding the possibility of engaging in settlement discussions. The Parties did not request suspension for such purpose and the Center went on with the proceeding. No further communication by the Respondent was submitted to the Center.
6. Discussion and Findings
A. Joinder of multiple Respondents
The Complainant requests and asks to have the disputes against the two different Respondents joined in one proceeding. In the WIPO Overview of WIPO Panel Views on Selected UDRP questions, Second Edition ("WIPO, Overview, 2.0") paragraph 4.16 the question of consolidation of a case against multiple Respondents is discussed mentioning earlier decisions. According to paragraph 4.16 of the WIPO Overview 2.0, a consolidation against more than one Respondents may be allowed where (i) the disputed domain names or the websites to which they resolve are subject to common control and (ii) the consolidation would be fair and equitable to all parties. There are many relevant decisions such as Speedo Hodings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281; Ritzio Purchase Limited v. Legato LLC / V. Zaharchenko / Jimmy McColin / Chernovsky Vladimir Sergeevich / Domain Admin, PrivacyProtect.org, WIPO Case No. D2015-1182; Ritzio Purchase Limited v. Andrey Lykov / Rosalinda Corporation / Roy Delcy, COUNTSIDE Holding Corp / Registration private, Domains By Proxy, LLC, WIPO Case No. D2016-0633.
The Complainant says that the conditions required for consolidation of the case against the two Respondents are satisfied. It contends that there is only one real Respondent who controls all domain names in dispute. Further, the websites are cross-connected and they are controlled by the one same owner/person. Also, it is submitted that the consolidation will be fair and equitable to all parties. Accordingly, the Panel considers that consolidation is appropriate in this case.
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue relating to the Respondent's failure to submit a substantive response. The Complainant has the burden of proof, according to paragraph 4(a) of the Policy ("In the administrative proceeding, the complainant must prove that each of these three elements are present"). As such, the Panel can not merely grant the Complainant's request automatically, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic, WIPO Case No. D2007‑0668; Gaudi Trade SpA v. Transure Enterprise Ltd, WIPO Case No. D2009-1028.
The Panel shall now proceed to the analysis of the evidence in this case, in accordance with the three elements of paragraph 4(a) of the Policy.
B. Identical or Confusingly Similar
The Complainant has presented evidence to demonstrate that he owns registered trademark rights in the marks VULKAN, VOLCANO and By-κaH and that they have been actively using these marks since 1992.
The mere fact that the Respondent has added to the disputed domain names generic words like "mybest", words which relate to the business of the Complainant like "casino", "games", "gamez", "chance", "partner", "play", "win", and the generic top-Level Domains ("gTLDs") ".com", ".info", and ".net", do not affect in the present case the essence of the matter: the disputed domain names are confusingly similar to the trademarks of the Complainant and, in the circumstances of this case, is by itself sufficient to fulfil the first criteria of the Policy, as many previous UDRP panels have found. See e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd., WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC, WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252; Nationwide Mutual Insurance Company v. Whois Agent, Whois Privacy Protection Service, Inc./Zhichao Yang, WIPO Case No. D2015‑1129; Facebook, Inc., v. on behalf of customers, WIPO Case No. D2016-0244; Ritzio Purchase Limited v. Legato LLC / V. Zaharchenko / Jimmy McColin / Chernovsky Vladimir Sergeevich / Domain Admin, PrivacyProtect.org, WIPO Case No. D2015-1182; Ritzio Purchase Limited v. Andrey Lykov / Rosalinda Corporation / Roy Delcy, COUNTSIDE Holding Corp / Registration private, Domains By Proxy, LLC, WIPO Case No. D2016-0633.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain names <casinovulkan.info>, <mybestvulkan.com>, <vulkangames.info>, <vulkan-gamez.com>, <vulkanimgs.com>, <vulkanochance.com>, <vulkanogames.com>, <vulkanogamez.com>, <vulkanopartner.net>, <vulkanoplay.com> and <vulkanwin.info>, are confusingly similar to the Complainant's trademarks VULKAN and VOLCANO.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant's right to or legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case.
(i) Use or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services prior to the dispute. In the Panel's opinion the Respondent is not making a bona fide offering of its goods. In fact, the Respondent is using the disputed domain names to divert traffic from the Complainant's websites, which is not a bona fide offering of goods and services.
(ii) An indication that the Respondent has been commonly known by the disputed domain names, even if it has acquired no trademark rights; in this case, there is no such indication from the present record.
(iii) Legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue; again, in this case there is no such indication from the record.
The Respondent does not seem to have any trademark registrations including the terms "Vulkan", "Volcano" "By-κaH". Additionally, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.
As a conclusion on this point, the Panel finds that the Complainant has established an uncontested, prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the Respondent has not rebutted such prima facie case. Therefore, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
In reviewing the present case, it appears that the Respondent has registered the disputed domain names in bad faith.
The Panel finds it highly unlikely that the Respondent would register randomly and unintentionally the 11 disputed domain names that are confusingly similar to the Complainant's VULKAN and VOLCANO trademarks. Further, the websites at the disputed domain names either incorporate graphical elements containing the Complainant's design mark or else redirect to third-party casino services. Rather, on a reasonable examination of the evidence, it seems to this Panel more likely that such registrations and use would be motivated by a hoped-for capitalization, i.e., commercial gain from the Complainant's reputation.
The Complainant is well-known in the business of casino and games and the Respondent tried to gain from its reputation. Further, the fact that the Respondent wrote on May 25, 2016 asking to work legally under the name Vulkan, implies to the Panel that the Respondent considered his position was not legally correct since he wanted to find a legal way to operate. This is also evidence of bad faith registration and use.
The Panel also notes that the Respondent has not addressed the Complainant's contentions, which in the present circumstances "reinforces the inference of bad faith registration and bad faith use". The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915.
As a consequence of the above, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith.
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, <casinovulkan.info>; <mybestvulkan.com>; <vulkangames.info>; <vulkan-gamez.com>; <vulkanimgs.com>; <vulkanochance.com>; <vulkanogames.com>; <vulkanogamez.com>; <vulkanopartner.net>; <vulkanoplay.com>; and <vulkanwin.info> be transferred to the Complainant.
Christos A. Theodoulou
Date: July 11, 2016