WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dareos Ltd. and Dareos Inc. v. Inna Feshchuk, Natalia Zelenina, Tatiana Deduch and Dmitry Shepilev

Case No. D2020-1232

1. The Parties

The Complainants are Dareos Ltd., Cyprus (the “First Complainant”) and Dareos Inc., Marshall Islands (the “Second Complainant”), represented by Mapa Global Investments SL (aka Mapa Trademarks), Spain.

The Respondents are Inna Feshchuk, Ukraine (the “First Respondent”), Natalia Zelenina, Ukraine (the “Second Respondent”), Tatiana Deduch, Russian Federation (the “Third Respondent”) and Dmitry Shepilev, Russian Federation (the “Fourth Respondent”).

2. The Domain Names and Registrars

The disputed domain name <24vgamble.org> is registered to the First Respondent with Moniker Online Services, LLC (the “First Registrar”).

The disputed domain name <wylckan24-gold.com> is registered to the Third Respondent with Key-Systems GmbH (the “Second Registrar”).

The disputed domain name <vulkan24.net> is registered to the Fourth Respondent with the First Registrar.

The disputed domain names <club-24vulkan.com>, <enjoy24wylcan.com>, <fairy24wlkan.com>, <go24vulkan.com>, <help24vulkan.xyz>, <play24vulc.com>, <play24wlkz.com>, <slot24vul.com>, <trust24wylkan.com>, <vlc-24.com>, <vlc24.com>, <vlkan24azart.com>, <vlkn24.com>, <vulcan24zlato.com>, <vulkandreams24z.com>, <vulkanlight24s.com>, <vulkanvpowerz.com>, <vulkanz24.org>, <vulkan24dreamzs.com>, <vulkan24gambler.com>, <vulkan24.xyz>, <vul24slots.com>, <vvulkan24player.com>, <vylcaner24.com>, <vylkanzdollar24z.com>, <wealth24wylkan.com>, <withwulcan24.com>, <wulcanwinner24.com>, <wulcanz24lucky.com>, <wulcan24carata.com>, <wulcan24gold.com>, <wulcan24magic.com>, <wulcan24yspeh.com>, <wykans24fairy.com>, <wylcaning24game.com>, <wylcan24golding.com>, <wylcan24yspehov.com>, <24slotsvulkan.net>, <24vlccgames.com>, <24vl-slots.com>, <24vl-slots.net>, <24vulcan-casino.com>, <24vulcanslots.com>, <24vulcanslots.net>, <24-vulcan.xyz>, <24vulcan.xyz>, <24vulcn.xyz>, <24vulkanadvancer.com>, <24vulkanaim.com>, <24vulkan.club>, <24vulkandream.com>, <24vulkan-god.com>, <24vulkankings.com>, <24-vulkan.net>, <24vulkan.net>, <24vulkan.org>, <24vulkan-riches.com>, <24vulkanss.com>, <24vulkanvictory.com>, <24vulkan-wish.com>, <24-vulkan.xyz>, <24vulkan.xyz>, <24vulkanz.org>, <24vulkanzz.com>, <24vulkanzz.org>, <24vulkan007.com>, <24vulkan5.com>, <24vulkan9.com>, <24vulkn.xyz>, <24vul-slot.org>, <24vul-slots.com>, <24vul-slots.net>, <24vuls.net> and <24vulz.net> are registered to the Second Respondent with the First and Second Registrars.

The disputed domain names listed above are collectively referred to as the “Domain Names” and the Registrars listed above are collectively referred to as the “Registrars”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2020. On May 15, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On May 18, 2020, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the Domain Names which differed from the named respondents and contact information in the Complaint. The Center sent an email communication to the Complainants on June 16, 2020, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on June 19, 2020.

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 July 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 3, 2020.

The Center appointed Nicholas Smith as the sole panelist in this matter on August 12, 2020. 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 Complainants are the successor entities to Ritzio Purchase Limited, that since 1992 has offered gaming, casino and entertainment services, both online and offline under the brands “Вулкан”, “Vulcan/Vulkan”, and “Volcano” (the latter being English translations/transliterations of the Russian word “Вулкан”). The Complainants operate over 230 gaming clubs throughout Europe, have more than 2,000 employees and operate 6,300 gaming machines.

The Complainants are the owner of international trademark registrations for a mark containing the word Vulkan (the “VULKAN Mark”), No. 984297 registered on August 11, 2008, a mark containing the word Volcano (the “VOLCANO Mark”), No. 989103 registered on August 11, 2008, and a device mark featuring the Russian word “Вулкан” in a distinctive design with stars behind the word and a prominent stylised reversed “V” (the “LOGO Mark”), No. 791038 registered on September 3, 2002. The Complainants also own an international device mark featuring the letter “V”, No. 949162 registered on January 26, 2007, and other trademarks featuring the VULKAN Mark, VOLCANO Mark or LOGO Mark (collectively the “Complainants’ Marks”), registered with various European trademark authorities.

The Domain Names were all registered between 2013 and 2019, with the majority registered in 2018. At the time of this decision, the Domain Names owned by the First, Third and Fourth Respondents, as well as a majority of the Domain Names owned by the Second Respondent (a minority are inactive) resolve to a Russian-language website at “www.goldcazinos.com” (the “Respondent’s Website”) which purports to offer gaming services in direct competition with the Complainants, refers to itself as Casino Vulcan 24 and reproduces the Complainants’ LOGO Mark. At the time of filing of the Complaint, the Domain Names, many of which were redirected to “www.sweetcazinos.com”, were all active and were used in a very similar manner as described above.

5. Parties’ Contentions

A. Complainants

The Complainants make the following contentions:

(i) that the Domain Names are identical or confusingly similar to the Complainants’ Marks;

(ii) that the Respondents have no rights nor any legitimate interests in respect of the Domain Names; and

(iii) that the Domain Names have been registered and are being used in bad faith.

The Complainants are the owners of the Complainants’ Marks, having registered the Complainants’ Marks in various jurisdictions since 2002. Each of the Domain Names reproduces either the word element “Vulcan” or “Vulkan” or was registered with clear intent to confuse Internet users by containing acronyms, abbreviations or misspellings of the Complainants’ Marks. Most of the Domain Names also add descriptive terms relating to the gaming industry that the Complainants operate in.

There are no rights or legitimate interests held by the Respondents in respect of the Domain Names. The Respondents are not commonly known as the Domain Names, nor do the Respondents have any authorization from the Complainants to register the Domain Names. The Respondents are not making a legitimate noncommercial or fair use of the Domain Names. Rather the Respondents are using them to resolve to the identical websites that capitalise on the Complainants’ reputation in the Complainants’ Marks to offer services in direct competition with the Complainants’ gaming services.

The Domain Names were registered and are being used in bad faith. The Domain Names resolve to the identical websites where the Respondents offers competing gaming services while passing themselves of as the Complainants (by reproducing the Logo Mark). The Respondents are using the Domain Names to divert Internet users searching for gaming services provided by the Complainants to the Respondent’s websites for commercial gain. Such conduct amounts to registration and use of the Domain Names in bad faith.

B. Respondents

The Respondents did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1. Preliminary Matter

A. Consolidation of Multiple Complainants

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides at section 4.11.1, in respect of the issue “Multiple complainants filing against a single respondent” that:

“Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.

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 present proceeding involves two Complainants bringing a single complaint against multiple Respondents (the consolidation of the Respondents is discussed below). The Complainants have made a request for consolidation and bear the onus of establishing that such a consolidation is justified.

The Panel is satisfied, based on the material filed, that the Complainants have a specific common grievance against the Respondent, in that the Complainants are related entities that both hold and use the Complainants’ Marks.

The Panel has considered whether it would be equitable and procedurally efficient to permit the consolidation. The Panel finds that it is equitable and procedurally efficient to grant the Complainants’ request for consolidation and grants the request.

B. Consolidation of Respondents

As identified in section 2. above there are four named registrants of the Domain Names. UDRP proceedings are normally brought against a single respondent. However, paragraph 10(e) of the Rules states that in certain circumstances a panel may consolidate multiple domain name disputes. The WIPO Overview 3.0, section 4.11.2, states:

“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.

UDRP 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 behaviour, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”

Based on the information before it, the Panel is prepared to allow the consolidation of the proceedings against the named registrants on the basis that the Domain Names are under common control. The Domain Names owned by the First, Third and Fourth Respondents (and a significant proportion of the Domain Names owned by the Second Respondent) all resolve to the identical Respondent’s Website with identical contact details. This is clear evidence that each of the Domain Names are under common control (noting that the remaining inactive domain names are all held by the Second Respondent).

Finally, the Panel notes that none of the Respondents have denied any association with the other or objected to the consolidation of the proceedings requested by the Complainants. The Panel finds that, on the balance of probabilities, the Domain Names are subject to common control and that the consolidation would be fair and equitable to all the Parties. As such, for the purposes of the decision going forward, the Panel will, when appropriate, refer to the named registrants of the Domain Names as a single Respondent.

6.2. Substantive Matters

A. Identical or Confusingly Similar

To prove this element the Complainants must have trade or service mark rights and each Domain Name must be identical or confusingly similar to the Complainants’ trade or service mark.

The Complainants are the owner of the Complainants’ Marks, having registrations for the Complainants’ Marks as trademarks internationally and in various European jurisdictions. Disregarding the respective Top-Level Domains (“TLDs”) as a necessary element of a domain name a significant proportion of the Domain Names reproduce one or more of the Complainants’ Marks along with one or more dictionary words or numbers or letters. The addition of a dictionary term or number or letter to a complainant’s mark is insufficient to dispel the impression of confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056.

With respect to the remaining Domain Names, each of them involves an abbreviation or misspelling of one or more of the Complainants’ Marks. Furthermore, as noted in section 1.15 of the WIPO Overview 3.0 “In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name”. Given the similarities between each of the Domain Names and the Complainant’s Marks, and the use of the Domain Names, at the time of filing of the Complaint, for the identical websites that sought, through the reproduction of the Complainants’ LOGO Mark, to pass itself of as the Complainants, the Panel finds that each of the Domain Names were registered targeting the Complainant’s Marks, and precisely because the Respondent believed that the Domain Names are in fact confusingly similar to one or more of the Complainants’ Marks. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent is not affiliated with the Complainants in any way. It has not been authorized by the Complainants to register or use the Domain Names or to seek the registration of any domain name incorporating the Complainants’ Marks or a mark similar to the Complainants’ Marks. There is no evidence that the Respondent is commonly known by any of the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial or fair use.

There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. The Respondent is using the Domain Names to resolve to either inactive websites or to the Respondent’s Website where it offers competing gaming services under the Complainants’ LOGO Mark (in a manner that may constitute infringement of the Complainants’ LOGO Mark). Such conduct, involving the representation that the Respondent’s Website is in some way connected to the Complainants does not, on its face, amount to the use of the Domain Names for a bona fide offering of goods or services.

The Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Names under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) 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:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).

The Panel finds that the Respondent was aware of the Complainants and their reputation in the Complainants’ Marks at the time each of the Domain Names was registered. The Complainants and their predecessor in title had used the Complainants’ Marks in connection with betting and gaming services for over 20 years at the point the Respondent registered the earliest of the Domain Names. The Respondent’s Website offers services similar to those offered by the Complainants and directly reproduces the Complainants’ Logo Mark. The registration of the Domain Names in awareness of the Complainants’ Marks and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.

The Respondent has used the Domain Names, being confusingly similar to the Complainants’ Marks, to attract visitors to its website where it offers gaming services in direct competition with the Complainants, under the Complainants’ LOGO Mark. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants and the Complainants’ Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website (Policy, paragraph 4(b)(vi)).

Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <club-24vulkan.com>, <enjoy24wylcan.com>, <fairy24wlkan.com>, <go24vulkan.com>, <help24vulkan.xyz>, <play24vulc.com>, <play24wlkz.com>, <slot24vul.com>, <trust24wylkan.com>, <vlc-24.com>, <vlc24.com>, <vlkan24azart.com>, <vlkn24.com>, <vulcan24zlato.com>, <vulkandreams24z.com>, <vulkanlight24s.com>, <vulkanvpowerz.com>, <vulkanz24.org>, <vulkan24dreamzs.com>, <vulkan24gambler.com>, <vulkan24.net>, <vulkan24.xyz>, <vul24slots.com>, <vvulkan24player.com>, <vylcaner24.com>, <vylkanzdollar24z.com>, <wealth24wylkan.com>, <withwulcan24.com>, <wulcanwinner24.com>, <wulcanz24lucky.com>, <wulcan24carata.com>, <wulcan24gold.com>, <wulcan24magic.com>, <wulcan24yspeh.com>, <wykans24fairy.com>, <wylcaning24game.com>, <wylcan24golding.com>, <wylcan24yspehov.com>, <wylckan24-gold.com>, <24slotsvulkan.net>, <24vgamble.org>, <24vlccgames.com>, <24vl-slots.com>, <24vl-slots.net>, <24vulcan-casino.com>, <24vulcanslots.com>, <24vulcanslots.net>, <24-vulcan.xyz>, <24vulcan.xyz>, <24vulcn.xyz>, <24vulkanadvancer.com>, <24vulkanaim.com>, <24vulkan.club>, <24vulkandream.com>, <24vulkan-god.com>, <24vulkankings.com>, <24-vulkan.net>, <24vulkan.net>, <24vulkan.org>, <24vulkan-riches.com>, <24vulkanss.com>, <24vulkanvictory.com>, <24vulkan-wish.com>, <24-vulkan.xyz>, <24vulkan.xyz>, <24vulkanz.org>, <24vulkanzz.com>, <24vulkanzz.org>, <24vulkan007.com>, <24vulkan5.com>, <24vulkan9.com>, <24vulkn.xyz>, <24vul-slot.org>, <24vul-slots.com>, <24vul-slots.net>, <24vuls.net> and <24vulz.net> be transferred to the Complainants.

Nicholas Smith
Sole Panelist
Date: August 26, 2020