WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dareos Ltd., Dareos Inc., and Ritzio Purchase Limited v. Irina Zenenkova and Dimitri Chikovani
Case No. D2019-0028
1. The Parties
Complainants are Dareos Ltd. of Nicosia, Cyprus, Dareos Inc. of Ajeltake Island, Marshall Islands, and Ritzio Purchase Limited of Nicosia, Cyprus, represented by Mapa Global Investments SL, Spain.
Respondents are Dimitri Chikovani of London, England and Irina Zenenkova of Kalinovka, Kazakhstan.
2. The Domain Names and Registrars
The disputed domain names <vulcanprestige2.com>, <vulcanprestige4.com>, <1vulkanprestige.com>, <4vulkanprestige.com>, <vulkanprestigeslots.com>, <playvulcanprestige.com>, <playvlcprestige.com>, <vulkanprestige777.com>, and <casinovulcanprestige.com> are registered with NameCheap Inc. (“NameCheap”).
The disputed domain names <vulcanprestige.com>, <vulcanprestige1.com>, <vulcanprestige3.com>, <2vulkanprestige.com>, and <3vulkanprestige.com> are registered with GoDaddy.com, LLC (“GoDaddy”).
Together, NameCheap and GoDaddy will be referred to as the “Registrars.”
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2019. On January 4, 2019, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On January 4, 2019 and January 7, 2019, respectively, NameCheap and GoDaddy transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to Complainants on January 8, 2019 providing the registrant and contact information disclosed by the Registrars, and inviting Complainants to submit an amendment to the Complaint; also on January 8, 2019, the Center sent a notice that the Complaint was administratively deficient. Complainants filed an amended Complaint on January 10, 2019, and then a second amended Complaint later on January 10, 2019.
The Center verified that the Complaint, as amended, 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”).
On January 17, 2019 the Center provided Complainants with notice that the Complaint provided prima facie grounds sufficient to warrant accepting the Complaint for the Panel’s final determination of the consolidation request on appointment.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondents of the Complaint, and the proceedings commenced on January 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2019. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on February 7, 2019.
The Center appointed David H. Bernstein as the sole panelist in this matter on February 13, 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. Procedural Matters
A. Consolidation of Complainants
Complainants request consolidation of their claims against Respondents.
Complainants allege that Ritzio Purchase Limited (“Ritzio”) is a licensee of Dareos Ltd. and Dareos Inc. for all of the trademarks at issue. Given that Complainants share a common grievance and that Respondents’ conduct has affected them similarly, the Panel finds that it would be equitable and efficient to allow the consolidation of Complainants’ claims. Accordingly, pursuant to paragraph 10(e) of the Rules, the Panel grants Complainants’ request to consolidate their claims. See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.11.1.
B. Consolidation of Respondents
Pursuant to paragraph 3(c) of the Rules, Complainants request consolidation of Respondents.
Nine of the disputed domain names are registered with NameCheap. These disputed domain names are registered under Respondent Irina Zenenkova’s name. The other five disputed domain names are registered with GoDaddy. These disputed domain names are registered under Respondent Dimitri Chikovani’s name.
Although Respondents’ names are different, and the contact information they each provided is different, Complainant has alleged facts that support an inference that these Respondents are in fact operating all 14 of the disputed domain names under common control. First, the websites to which all 14 disputed domain names resolve are identical in design. Second, some of the disputed domain names registered by Mr. Chikovani automatically redirect to a website operated by Ms. Zenenkova. For example, <vulcanprestige3.com>, which is registered with GoDaddy under Mr. Chikovani’s name, redirects to <vulcanprestige4.com>, which is registered with NameCheap under Ms. Zenenkova’s name. Third, the timing of the registrations, and the number ordering in the disputed domain names, further suggests that these disputed domain names are under common control. For example, <vulcanprestige1.com>, <vulcanprestige2.com>, <vulcanprestige3.com>, and <vulcanprestige4.com> were all registered on August 11, 2017. However, while <vulcanprestige1.com> and <vulcanprestige3.com> were registered with GoDaddy under Mr. Chikovani’s name, <vulcanprestige2.com> and <vulcanprestige4.com> were registered with NameCheap under Ms. Zenenkova’s name. Similarly, Mr. Chikovani’s registration of <3vulkanprestige.com> was done on the same day as Ms. Zenenkova’s registration of <4vulkanprestige.com>; both were registered on October 2, 2018. That the disputed domain names that are nearly identical except for the addition of a number (in numerical order) were registered the same day and resolve to nearly identical websites is powerful evidence that the registration of these disputed domain names was coordinated and that they are under common control. Fourth, the disputed domain names were all registered with the identical privacy service, WhoisGuard Protected. Finally, Respondents have not responded to the Complaint and have not come forward with any evidence to refute that these 14 disputed domain names are under common control.
In light of these compelling facts, the Panel finds that the disputed domain names are under common control and that consolidation would be fair and equitable to all parties. As such, pursuant to paragraph 10(e) of the Rules, the Panel grants Complainants’ request for consolidation of Respondents. See generally WIPO Overview 3.0 at section 4.11.2.
5. Factual Background
As noted above, Respondents did not respond to the Complaint. Therefore, the following factual allegations of the Complaint are accepted as true for purposes of this proceeding.
Dareos Ltd. and Ritzio are incorporated in Cyprus. Dareos Inc. is incorporated in the Marshall Islands. Ritzio is a provider of gambling products and services, with an emphasis on gaming halls. Dareos Ltd. and Dareos Inc. have rights in all the relevant trademarks and license these trademarks to Ritzio.
Dareos Ltd. and Dareos Inc. have registered 46 trademarks comprising ВУЛКАН, VULKAN, VOLCANO, and modifications thereof in various styles (collectively, the “VULKAN Marks”). According to Complainants, the Cyrillic word “вулкан” is pronounced as “vulkan” and translates into English as “vulcan” or “volcano.”
Complainant’s VULKAN Marks are registered in numerous countries. They include:
- VULKAN (International Trademark number 984297), registered in Russia with designated extension to the European Union, Belarus, Croatia, Kazakhstan, and Serbia. The mark was registered August 11, 2008.
- ВУЛКАН and design (International Trademark number 791038), registered in Russia with designated extension to Armenia, Azerbaijan, Belarus, Estonia, Georgia, Kazakhstan, Kyrgyzstan, Latvia, Lithuania, Moldova, Tajikistan, Turkmenistan, Ukraine, and Uzbekistan. The mark was registered September 3, 2002.
- A stylized V trademark (International Trademark number 949162), registered in Russia with designated extension to Belarus, Estonia, Latvia, Lithuania, and Ukraine.
The VULKAN Marks were used starting in 1992 and were registered starting at least as early as 2002. The disputed domain names were registered many years later, in 2017 and 2018.
6. Complainants’ Contentions
Complainants have rights in the VULKAN Marks and have been using them continuously since as early as 1992. Ritzio provides high-quality gaming, casino, and entertainment products and services under the VULKAN Marks.
Complainants allege that Respondents used the VULKAN Marks without authorization with the intention of affiliating themselves with Ritzio’s gaming halls. Respondents registered the disputed domain names in 2017 and 2018 and are offering gambling services on the websites to which the disputed domain names resolve.
Most of the disputed domain names include the word “vulkan” or “vulcan”, which is identical to Complainants’ registered mark VULKAN and a transliteration of Complainants’ registered mark ВУЛКАН.
One of the disputed domain names, <playvlcprestige.com,> does not include “vulkan” or “vulcan” but only “vlc.” Complainants contend that the use of “vlc” in Ms. Zenekova’s disputed domain name constitutes typosquatting. Complainants allege that “vlc” is an abbreviation of “vulcan” and therefore still refers to Complainants’ business and VULKAN Marks. Complainants also allege that the <playvlcprestige.com> is designed identically to all of Respondents’ other pages, which demonstrates that Ms. Zenekova intended Internet visitors to understand the reference to “vlc” to refer to Vulcan gaming machines and gambling services. Additionally, <playvulcanprestige.com> redirects to <playvlcprestige.com>, which further demonstrates Ms. Zenekova’s intention that “vlc” would be understood as a reference to “vulcan.” Finally, Complainants allege that <playvlcprestige.com> incorporates Complainants’ V trademark, which is used in combination with the VULKAN Marks in Complainants’ gaming halls.
The disputed domain names also all incorporate terms like “prestige,” “slots, “play,” “casino,” or “777”. Complainants allege that these extra terms only add to the confusion due to their association with casinos.
Complainants allege that Respondents have no rights or legitimate interests in the disputed domain names because Respondents have no authorization from Complainants to use the VULKAN Marks. Additionally, Complainants’ assert, Respondents registered these disputed domain names in an attempt for commercial gain by creating a likelihood of confusion with Complainants’ brand. Complainants also allege that Respondents have not developed any legitimate interest related to the VULKAN Marks and that they have never been associated with the VULKAN Marks.
Complainants assert that Respondents registered the disputed domain names in bad faith because they intentionally attempted to attract users to their sites for commercial gain by creating a likelihood of confusion with Complainants’ VULKAN Marks and brand. Respondents were aware of Complainants’ trademarks as demonstrated by their reference to the history of Complainants’ brand and gaming clubs on the websites. Complainants also allege bad faith in light of Respondents’ use of a privacy service to conceal their identities. Complainants finally allege bad faith given that five of the disputed domain names were transferred from NameCheap to GoDaddy just prior to Complainants’ filing of their Complaint (though Complainants do not allege that this was cyberflight or that the transfer was done after notice of Complainants’ challenge to Respondent’s registration of these disputed domain names).
7. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainants must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainants have rights,
(ii) Respondents have no rights or legitimate interests in respect of the disputed domain names, and
(iii) Respondents’ disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Complainants’ trademark registrations conclusively establish that Complainants own trademark rights in the term VULKAN. WIPO Overview 3.0 at section 1.2.1 (“Where the complainant holds a nationally . . . registered trademark . . . this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”). And, as Complainants’ properly note, most of the disputed domain names wholly incorporate the terms VULKAN or VULCAN (which is pronounced identically to Complainants’ Cyrillic mark ВУЛКАН), which renders the disputed domain names confusingly similar for purposes of the Policy. Id. at section 1.7 (“[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”).
The only disputed domain name that does not include VULKAN or VULCAN is <playvlcprestige.com>. This disputed domain name raises the question of whether “vlc” is sufficiently similar to Complainants’ VULKAN Marks to find confusing similarity for purposes of the Policy.
As the WIPO Overview 3.0 makes clear, the assessment of confusing similarity, for purposes of the Policy, takes a number of factors into account. At its core, the question is one of standing — is the domain name sufficiently similar to complainant’s trademarks to give complainant standing to challenge the domain name registration? Id. To assess standing, panels generally consider a side-by-side comparison of the domain name and trademarks at issue; they may also consider other evidence that bears on the likelihood that the domain name would be understood — either by human Internet users or by automated bots that catalogue websites — as having some relationship with the trademarks at issue. Such additional evidence may include other terms included in the domain name, other domain names registered by the respondent (either in the same proceeding or otherwise, and whether targeting the complainant or other brand owners, perhaps in the same industry), evidence of respondent’s intent, and the contents of the website to which the domain name resolves. Id. (“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 confusing 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.”); see also id. at section 1.15 (“[T]he content of the website associated with a domain name [may help] to confirm [a finding of] confusing similarity . . . [if it shows] that the respondent seeks to target a trademark through the disputed domain name”); NU Science Corporation v. Mike Henkel and Robert Henkel, WIPO Case No. D2012-1063 (domain names <evstorey.com> and <uncle-evs.com> found confusingly similar to Complainant’s registered EVERETT STOREY mark because “ev” was an abbreviation for “Everett” and “s” was an abbreviation for “Storey,” and the websites at issue referred to Everett Storey as “Uncle Ev”).
In this case, the evidence as well as a reasonable common-sense understanding of the Policy strongly supports a finding that <playvlcprestige.com> is confusingly similar to Complainants’ VULKAN Marks.
First, “vlc” is visually and phonetically similar to VULCAN. Those letters are among the distinctive letters within the word VULCAN, and appear to be an abbreviation for VULCAN.
Second, the additional words in the disputed domain name reinforce, to an Internet user, that the “vlc” is meant to refer to VULCAN. The addition of “play” and “prestige” reinforces that “playvlcprestige” invites Internet users to “play” at Vulcan casinos.
Third, the fact that Respondents registered so many other domain names that include the words “vulkan” or “vulcan” and “prestige” further reinforces that “vlcprestige” is meant to be understood as a reference to “VULCAN prestige.” That some of those disputed domain names also include words like “casino” and “slots”, and the numbers “777” (a classic winning combination in slot machines), further reinforces this relationship.
Fourth, the disputed domain name resolves to a website that features the ВУЛКАН trademark, which further establishes the clear intent that “vlc” should be read as “vulcan”. The website also features gambling, which is the same service as that offered by Complainants. This fact further links the “vlc” reference to Complainants’ VULKAN Marks and further supports a finding of confusing similarity for purposes of the Policy.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to the VULKAN Marks and that Complainants have satisfied the requirement under paragraph 4(a)(i) of the Policy with respect to all disputed domain names.
B. Rights or Legitimate Interests
Complainants have made a prima facie showing that Respondents have no rights or legitimate interests in the disputed domain names. Respondents are not known as VULKAN, have no license to use Complainants’ VULKAN Marks, and are not making a legitimate noncommercial or fair use of the disputed domain names. To the contrary, Respondents appear to be running commercial gambling websites in direct competition with Complainants and in violation of Complainants’ trademark rights. In light of Respondents’ failure to rebut this prima facie showing, the Panel finds that Complainants have established that Respondents lack any rights or legitimate interests under paragraph (4)(a)(ii) of the Policy. WIPO Overview 3.0 at section 2.1.
C. Registered and Used in Bad Faith
Respondents’ registration of domain names incorporating Complainants’ trademarks, and their use of those domain names for competitive gambling websites that infringe Complainants’ trademark rights, is classic bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy, which provides that bad faith registration and use may be found where “(iii) [the respondent] ha[s] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent] ha[s] intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site.” Respondents appear to be passing off their competitive gambling websites as being from Complainants; they even copied the design elements of Complainants’ ВУЛКАН and design trademark on the home page of their websites, which appears to establish counterfeiting. These websites will inevitably confuse consumers into believing that these websites are associated with Complainants. See WIPO Overview 3.0 at sections 3.1.3, 3.1.4, 3.2.1.
Accordingly, the Panel finds that Complainants have proven bad faith in satisfaction of the requirement 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 <vulcanprestige.com>, <vulcanprestige1.com>, <vulcanprestige2.com>, <vulcanprestige3.com>, <vulcanprestige4.com>, <1vulkanprestige.com>, <2vulkanprestige.com>, <3vulkanprestige.com>, <4vulkanprestige.com>, <vulkanprestigeslots.com>, <playvulcanprestige.com>, <playvlcprestige.com>, <vulkanprestige777.com>, and <casinovulcanprestige.com> be transferred to Complainants.
David H. Bernstein
Date: February 27, 2019