WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ritzio Purchase Limited / DAREOS Inc. / DAREOS Ltd. v. Registration Private, Domains By Proxy, LLC / Zhanabergenov Talgat / Vasiliy Lyapin, OOO Varna
Case No. D2018-2559
1. The Parties
The Complainants are Ritzio Purchase Limited of Nicosia, Cyprus / DAREOS Inc. of Majuro, Marshall Islands / DAREOS Ltd. of Nicosia, Cyprus, represented by Mapa Trademarks SL, Spain.
The Respondents are Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Zhanabergenov Talgat of Astana, Kazakhstan / Vasiliy Lyapin, OOO Varna of Moscow, Russian Federation.
2. The Domain Names and Registrar
The disputed domain names <vlk-stl.com>, <vulkan-on.com>, <vulkanstil.com>, <vulkan.style>, and <vulkanstyle.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2018. On November 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 9, 2018, 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 November 15, 2018 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 November 16, 2018.
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 Respondents of the Complaint, and the proceedings commenced on November 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 10, 2018.
The Center appointed Taras Kyslyy as the sole panelist in this matter on December 14, 2018. 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 (refers to the three Complainants Ritzio Purchase Limited, Dareos, Inc. and Dareos Ltd. in this consolidated case - see Section 6.A below) provides services relating to gambling. The Complainant has used variations of the words “Vulcan”, “Vulkan”, “Volcano”, and the Russian translation for those words (“Вулкан”) continuously since 1992 for gaming, casino and entertainment products and services. The Complainant owns several trademark registrations in numerous countries for such marks, including, for example:
VULKAN (Russian Federation) No. 353692 (Registered June 25, 2008) and ВУЛКАН (and Design) (Russian Federation) No. 342290 (Registered January 28, 2008)
The Respondent or Respondents in this consolidated case (see Section 6.A below) registered each of the disputed domain names on the dates set forth as follows:
<vulkanstyle.com> - May 14, 2018;
<vulkan.style> - May 22, 2018;
<vlk-stl.com> - May 22, 2018;
<vulkanstil.com> - May 22, 2018;
<vulkan-on.com> - July 20, 2018.
The disputed domain names resolve to websites offering gambling services.
5. Parties’ Contentions
The disputed domain names are identical or confusingly similar to the Complainant’s trademark. The disputed domain names either capture the Complainant’s trademark or constitutes its acronym. Adding generic terms “style”, “stl”, “stil”, “on” do not affect the confusing similarity with the Complainant’s trademark. The way the disputed domain names are used (respective websites copying Complainant’s web-sites and trademarks suggesting services similar to the Complainant’s) adds to the confusing similarity.
The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not licensee of the Complainant nor is authorized to use the Complainant’s trademarks in any way. The Respondent never used or made preparations to use the disputed domain names before the dispute. The Respondent is not known by the disputed domain names. The Respondent does not make legitimate noncommercial or fair use of the disputed domain names. Respondent in many ways falsely assures users that the disputed domain names belong to or are associated with the Complainant. The Respondent trades on the Complainant’s fame using the disputed names for commercial purpose, which is not fair or noncommercial use.
The disputed domain names were registered and are being used in bad faith. The disputed domain names and respective Respondent’s websites incorporate Complainant’s trademarks to intentionally attract, for commercial gain, Internet users to Respondent’s web-sites falsely pretending these relate to the Complainant or are under its authorization. The Respondent knew of the Complainant and its trademarks while registering the disputed domain names. The Respondent concealed its identity using privacy services.
The Respondents did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Preliminary Issues – Consolidation
The Complainants request the Panel hear the present dispute – brought by three complainants against three respondents – as a consolidated, “unitary” complaint.
Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” Paragraph 10(c) of the Rules provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with due expedition.”
(I) Consolidation of Respondents
Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarizes the consensus view of UDRP panels on the consolidation of multiple respondents, in part, as follows: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”
The Complainants assert, among other things, that the Respondents should be treated as one respondent in this proceeding, as the Respondents appear to be the same person controlling connected websites with identical design containing copyright notices, all referring to the same company. The Panel accepts these arguments in favor of consolidation and grants the request to consolidate.
(II) Consolidation of Complainants
Section 4.11.1 of the WIPO Overview 3.0 summarizes the consensus view of UDRP panels on the consolidation of multiple complainants, in part, as follows:
“In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.”
The Complainants have indicated that Ritzio Purchase Limited transferred its trademark registrations to its partners Dareos Inc. and Dareos Ltd., and that Ritzio is a licensee for use of the trademark registrations. Accordingly, the Complainants have made out a case that they share common legal and business interests regarding the use of the concerned trademarks, and the Complainants allege they have “a specific common grievance against the Respondent[s]” as their trademark rights were infringed “in a similar fashion” by the Respondents.
There is no reason to require each of the Complainants (referred to herein collectively as “the Complainant”) to submit an almost identical complaint against the Respondents with nearly identical facts, legal arguments and requested relief. Moreover, the Respondents (referred to herein collectively as “the Respondent”) will not suffer any prejudice, and consolidation will not affect rights in responding to the Complaint.
The Panel accepts these arguments in favor of consolidation and grants the request to consolidate.
B. Identical or Confusingly Similar
The gTLDs “.com” and “.style” in the disputed domain names are viewed as a standard registration requirement and may be disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing.
According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
The above applies in full to the disputed domain names <vulkanstyle.com>, <vulkan.style>, <vulkanstil.com> and <vulkan-on.com>. The disputed domain names include the Complainant’s trademark, adding descriptive and/or meaningless words “style”, “stil”, “-on” and/or the gTLDs “.com”, “.style” which does not preclude a finding of confusing similarity between the disputed domain names and the Complainant’s trademark.
As to the disputed domain name <vlk-stl.com> though it does not verbatim match any of the Complainant’s marks, the phonetic significance of the letters “vlk” in relation to the “Vulkan” trademarks owned by the Complainant, together with the nature of its use (redirection to web-site with design and services similar to the Complainant’s), creates confusing similarity. This conforms with position of previous UDRP panels taken under similar circumstances (see, e.g. Ritzio Purchase Limited / Dareos Inc. / Dareos Ltd. v. Registration Private, Domains By Proxy, LLC / Moniker Privacy Services / Natalia Zelenina, WIPO Case No. D2018-0759).
Considering the above the Panel believes the disputed domain names are confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names.
Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain names.
The Respondent is not commonly known by the disputed domains names, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its registered trademark by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain names could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).
The disputed domain names redirected Internet users to websites with a logo similar to the Complainant’s trademarks and with design similar to the Complainant’s website to make the Internet users believe that they actually accessed the Complainant’s website or a website authorized by the Complainant. Past UDRP panels confirmed that such actions prove that a registrant has no rights or legitimate interests in a disputed domain name (see Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598; Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211).
Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
At the time of the registration of the disputed domain names the Respondent knew, or at least should have known about the existence of the Complainant’s prior registered and known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. In this case, the disputed domain names were resolving to websites using the Complainant’s trademark and designed to intentionally attract, for commercial gain, Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source of the websites and its service. The Panel finds the above confirms the disputed domain names were registered and used in bad faith.
Moreover, the Respondent used a privacy service to register the disputed domain names. According to section 3.6 of the WIPO Overview 3.0, the use of a privacy or proxy service merely to avoid being notified of a UDRP proceeding, may support an inference of bad faith; a respondent filing a response may refute such inference. However, no such response was provided by the Respondent. The Panel finds that such use of the privacy service in this particular case confirms registration of the disputed domain names in bad faith.
Considering the above, the Panel finds the disputed domain names were registered and are being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
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, <vlk-stl.com>, <vulkan-on.com>, <vulkanstil.com>, <vulkan.style>, and <vulkanstyle.com> be transferred to the Complainant.
Date: December 27, 2018