WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dareos Ltd, Dareos Inc, Ritzio Purchase Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Nikolay Korobov / Irina Zenenkova
Case No. D2018-2736
1. The Parties
The Complainants are Dareos Ltd of Nicosia, Cyprus, Dareos Inc of Majuro, Republic of Marshall Island, and Ritzio Purchase Limited of Nicosia, Cyprus, represented by Mapa Trademarks SL, Spain.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / Nikolay Korobov of St. Peterburg, Russian Federation / Irina Zenenkova of Grigorovka, Kazakhstan.
2. The Domain Names and Registrar
The disputed domain names <neonvulkan.com>, <slotsvulkanneon.com>, <slotsvulkanneon1.com>, <topvulkanneon.com>, <topvulkanneon1.com>, <topvulkanneon2.com>, <topvulkanneon3.com>, <vlkneon.com>, <vlkneon888.co>, <vulcanneon.com>, <vulcanneon1.com>, <vulcanneon2.com>, <vulcanneon3.com>, <vulcanneon4.com>, <vulcanneon5.com>, <vulcanneon6.com>, <vulcanneon7.com>, <777vn.club>, <777vulcanneon.net>, and <777vulcanneon1.com> are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2018. On November 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 28, 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 29, 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 December 4, 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 Respondent of the Complaint, and the proceedings commenced on December 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2018.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on January 11, 2019. 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 is a Cyprus company that has provided gaming and casino operations under the trademarks вулкан, вулкан & Design, VULKAN, and VOLCANO since 1992. For more than 25 years, the Complainant has conducted these activities through a variety of platforms, including online real money games. The Complainant has more than 2,000 employees, operates more than 230 bricks and mortar gaming clubs and more than 6,300 gaming machines throughout Europe all under the Complainant’s VULKAN and/or VOLCANO brand and the Cyrillic equivalent вулкан. Between 2006 and 2010, the Complainant’s operating revenue was in excess of $5.5 billion USD.
The Complainant owns many trademark registrations throughout the world, including the following:
International Trademark Registration for VULKAN – registration no. 984297 dated August 11, 2008;
International Trademark Registration for VOLCANO – registration no. 989103 dated August 11, 2008;
International Trademark Registration for VULCANO DELLA FORTUNA – registration no. 948438 dated October 30, 2007;
International Trademark Registration for VULCANO DI FORTUNA – registration no. 948439 dated October 30, 2007;
International Trademark Registration for VULCANO FORTUNOf – registration no. 948440 dated October 30, 2007;
International Trademark Registration for V Design registration no. 949162 dated January 26, 2007;
International Trademark Registration for вулкан & Design registration no. 977713 dated August 12, 2008.
The disputed domain names in the Complaint were registered on the following dates:
<vulcanneon.com> – December 27, 2016;
<vulcanneon1.com> – April 25, 2017;
<vulcanneon2.com> – April 25, 2017;
<vulcanneon3.com> – April 25, 2017;
<vulcanneon4.com> – April 25, 2017;
<vulcanneon5.com> – April 4, 2018;
<vulcanneon6.com> – April 4, 2018;
<vulcanneon7.com> – September 5, 2018;
<slotsvulkanneon.com> – March 15, 2018;
<slotsvulkanneon1.com> – May 24, 2018;
<topvulkanneon.com> – January 23, 2018;
<topvulkanneon1.com> – March 12, 2018;
<topvulkanneon2.com> – July 2, 2018;
<topvulkanneon3.com> – July 2, 2018;
<neonvulkan.com> – September 21, 2017;
<777vulcanneon1.com> – May 22, 2018;
<777vulcanneon.net> – August 1, 2018;
<vlkneon.com> – September 14, 2017;
<vlkneon888.co> – November 12, 2018;
<777vn.club> – May 22, 2018.
5. Parties’ Contentions
The Complainant contends that it owns registered trademark rights in the trademarks VULKAN, VOLCANO, V Design, вулкан, and вулкан Design (hereinafter referred to as the “Complainant’s VULKAN Trademarks”). Of the 20 domain names in question, 17 of them include the word element VULKAN or VULCAN. The remaining 3 domain names contain an acronym or abbreviation of the word VULKAN, namely VLK, VLC, or VN. The Complainant submits that each of the domain names adds only the generic terms, “neon”, “slots”, “top”, or the numbers “777”, to the Complainant’s registered trademarks. As such, the disputed domain names are confusingly similar to the Complainant’s VULKAN Trademarks.
The Complainant further submits that the Respondent is not licensed or authorized in any way to use the Complainant’s registered trademarks. The Respondent is not commonly known by the Complainant’s VULKAN Trademarks.
The Complainant also contends that the Respondent is not using the disputed domain names in association with a bona fide offering of goods and services as defined under the Policy. In particular, the Respondent is using the disputed domain names in association with a competing online gaming site. Further, the Respondent’s websites actually replicate the look of the Complainant’s website by featuring the registered V Design and the вулкан Design Trademarks. The Respondent has deliberately attempted to trade on the reputation and goodwill of the Complainant for purposes of monetary gain.
The Complainant also contends that the disputed domain names redirect users between the disputed domain names. The Respondent has hidden its identity by using privacy protection.
The Complainants submits that with the evidence filed, the Respondent has no rights or legitimate interests in the disputed domain names and has registered and used the disputed domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Multiple Respondents
The Policy provides that multiple respondents may be joined in one dispute in certain circumstances. WIPO Overview of WIPO Panel View on Selected UDRP Questions, Third Edition (“Overview 3.0”), paragraph 4.11.2, provides useful commentary on the relevant procedures:
“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.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).
The domain names in dispute are ostensibly registered by two different individuals, but the evidence submitted shows that each of the disputed domain names was registered through the same Registrar, and several of those were registered on the same day. The disputed domain names all revert to a website that features identical design graphics, layouts, texts, and the same set of online games all of which reproduce visual elements taken from the Complainant. Further, the disputed domain names all feature the same notice “DMCA PROTECTED 2011-2018. The Volcano Grand”. The identity of the registrants of the disputed domain names are hidden behind Privacy Services.
These factors support the Complainant’s request, and accordingly the Panel finds that joinder will promote the efficient resolution of this dispute without prejudicing the fairness or equity of the treatment of the Respondents.
6.2. Substantive Issues
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
With respect to the disputed domain names: <vulcanneon.com>, <vulcanneon1.com>, <vulcanneon2.com>, <vulcanneon3.com>, <vulcanneon4.com>, <vulcanneon5.com>, <vulcanneon6.com>, <vulcanneon7.com>, <slotsvulkanneon.com>, <slotsvulkanneon1.com>, <topvulkanneon.com>, <topvulkanneon1.com>, <topvulkanneon2.com>, <topvulkanneon3.com>, <neonvulkan.com>, <777vulcanneon2.com> and <777vulcanneon.net>, all of these domain names contain the Complainant’s registered trademark VULKAN (or the English equivalent VULCAN) combined with a generic word such as “neon”, “top”, “slots”, or numbers. None of these additions are sufficient to distinguish the disputed domain names from the Complainant’s registered trademarks and are therefore confusingly similar.
The disputed domain names <vlkneon.com> and <vlkneon888.co> are also confusingly similar to the Complainant’s registered trademark, because the letters “vlk” and “vlkn” can be viewed as obvious acronyms or abbreviations of the trademark VULKAN.
In considering the issue of confusingly similarity with respect to <777vn.club>, the Panel has considered the reasoning in the earlier cases of: Ritzio Purchase Limited v. Andrey Lykov/Rosalinda Corporation/Roy Delcy, Countside Holding Corp/Registration Private, Domains by Proxy, LLC, WIPO Case No. D2016-0633 and Ritzio Purchase Limited v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org/Denis Belov, Asocial Games Ltd./Ivenkov Vitaly, WIPO Case No. D2017-1294. In particular, in WIPO Case No. D2016-0633, the panel ruled that the domain names <ikvulkan.com>, <ikvolcano.com>, and <ikvclub.com>, were confusingly similar to the VULKAN trademarks. Similarly, in WIPO Case No. D2017-1294, the panel found the disputed domain name <vclubfinder.com> was confusingly similar to Complainant’s V mark.
In this matter, with respect to the disputed domain name <777vn.club> the Complainant presumably relies on its registered trademark for the letter V. The addition of the set of numbers “777” is said to be descriptive of a winning set of numbers on slot machines, and is therefore easily recognizable to the gaming community. The critical question is whether that 2 letters “vn” in combination with “777” can be reasonably viewed as confusingly similar to the VULKAN trademarks. In the specific circumstances of this case, the Panel is mindful of the guidelines set out in WIPO Overview 3.0(s.1.7):
“In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusingly similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity.
In this context, panels have also found that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant.”
As set out below, in Sections B and C, Complainant has provided compelling evidence of a pattern of behaviour whereby Respondent is using multiple disputed domain names which revert to websites featuring logos, graphics, layout and content identical to those used by the Complainant. In these specific circumstances, the Panel is prepared to find that the disputed domain name <777vn.club> is confusingly similar to the Complainant’s mark.
The Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy with respect to all of the disputed domain names.
B. Rights or Legitimate Interests
Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to lack of rights and legitimate interests. The Complainant clearly owns rights in the VULKAN Trademarks as noted in paragraph 4 of this Decision. The Complainant has used the VULKAN Trademarks for more than 20 years in association with bricks and mortar gaming clubs and online gaming. The uncontested evidence filed in this proceeding, namely the identical logos, graphics, and layout used on the Respondents website, supports a finding that they were aware of the Complainants’ trademark rights when they registered the disputed domain names.
The Respondents were not authorized or licensed to use the Complainant’s trademark, and the Respondents are not commonly known by the mark VULKAN, VOLCANO, the Cyrillic equivalent вулкан or the вулкан logo.
The Respondents are using the disputed domain names in association with a single website that features online gaming services which are in direct competition of the Complainant’s services and which literally copy the Complainant’s marks, logos, graphics, and layouts, all of which supports the conclusion that the Respondent is not using the disputed domain in association with an offering of bona fide goods and/or services.
In this situation, the burden shifts to the Respondent to bring forward evidence of rights and legitimate interests. The Respondent did not respond to the Complaint.
Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The evidence filed in this proceeding, which was not contested by the Respondent, suggests that the Respondent was obviously aware of the Complainant’s trademark rights. The Respondent is using each of the disputed domain names to revert to websites which feature identical logos, graphics, layout, and content of the Complainant. The evidence also shows that the Respondent is using the disputed domain names in close association with each other, in that the disputed domain names are redirected among the group. Taken together with the other factors in this case, the conduct supports a conclusion of bad faith. Therefore, it is obvious the Respondent is attempting to trade on the reputation and goodwill of the Complainant for purposes of monetary gain, all of which is evidence of bad faith.
The Panel is prepared to accept the claims made by the Complainant, and finds that the Respondent registered and has used the disputed domain names in bad faith.
The Complainant has therefore satisfied the requirements 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 <neonvulkan.com>, <slotsvulkanneon.com>, <slotsvulkanneon1.com>, <topvulkanneon.com>, <topvulkanneon1.com>, <topvulkanneon2.com>, <topvulkanneon3.com>, <vlkneon.com>, <vlkneon888.co>, <vulcanneon.com>, <vulcanneon1.com>, <vulcanneon2.com>, <vulcanneon3.com>, <vulcanneon4.com>, <vulcanneon5.com>, <vulcanneon6.com>, <vulcanneon7.com>, <777vulcanneon.net>, <777vulcanneon1.com>, and <777vn.club> be transferred to the Complainant.
Christopher J. Pibus
Date: February 8, 2019