1.1 The Complainant is Ritzio Purchase Limited of Nicosia, Cyprus, represented by Mapa Trademarks SL, Spain.
1.2 The Respondents are Domain Admin, PrivacyP of Nobby Beach, Australia / Timur Ziganshin of Izhevsk, the Russian Federation / Lianna Tall, Escave Ltd of Mahe, Seychelles / Private Whois, Global Domain Privacy Services Inc of Marbella, Panama / Moniker Privacy Services of Fort Lauderdale, Florida, United States of America, represented by Boston Law Group, PC, United States of America. 2. The Domain Names and Registrars
2.1 The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainR.
2.2 The disputed domain names , , , and are registered with URL Solutions, Inc. How the disputed domain name came to be registered with URL Solutions Inc is addressed in the Procedural History section of this decision.
2.3 The disputed domain names are hereafter referred to collectively as the "Domain Names". 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 27, 2015. At that time the publicly available WhoIs details for the Domain Names identified the registrants as the privacy services "PrivacyP", "Global Domain Privacy Services Inc" and "Moniker Privacy Services".
3.2 On May 22, 2015, the Center transmitted by email to the concerned registrars a request for registrar verification in connection with the Domain Names. On May 29, 2015, the concerned registrars transmitted by email to the Center their verification responses disclosing the underlying registrants behind the various privacy services as "Lianna Tall" and "Timur Ziganshin" and providing those registrants' contact information.
3.3 The Center provided this information to the Complainant on June 5, 2015 inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 10, 2015.
3.4 The Center verified that the Complaint together with the amendment to 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").
3.5 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced June 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response July 2, 2015. The Response was filed with the Center July 2, 2015, in the names of "Escave Limited" and by "Timur Ziganshin" and in this document "Escave Limited" and "Timur Ziganshin" accepted that they were the registrants of the Domain Names. In this decision references to the "Respondent" hereinafter is intended as a reference to these registrants unless the contrary is apparent.
3.6 The Complainant and the Respondent submitted Supplemental Filings on July 7 and July 17, 2015, respectively.
3.7 On June 25, 2015 the Center, having noted that one of the Domain Names was set to expire in September, sent an email in the usual form to Moniker Online Services LLC requesting confirmation of what if anything was required of the Parties to ensure that this Domain Name did not expire in the course of these proceedings. It would appear from subsequent correspondence between Moniker Online Services LLC, URL Solutions Inc and the Center, that whilst this Domain Name was unlocked to allow this Domain Name solely to be renewed, it was nevertheless permitted to be transferred to URL Solutions in apparent breach of paragraph 8 of the UDRP. However, URL Solutions appears to have placed this Domain Name on lock pending the outcome of these proceedings.
3.8 The Center appointed Matthew S. Harris, Olga Zalomiy and Paul M. DeCicco as panelists in this matter on July 28, 2015. The Panel finds that it was properly constituted. Each member of 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.
3.9 On July 28, 2015, the Respondent filed yet another supplemental filing. In that filing the Respondent referred to proceedings filed on July 24, 2015 with the Russian trade mark office that sought to cancel a number of the Complainant's Russian trade mark registrations. On July 31, 2015, the Complainant filed a submission in response asking the Panel to suspend these proceedings for 30 days pursuant to Paragraph 18(a) of the Rules. Later that same day the Respondent filed a further submission opposing that suspension.
3.10 On August 7, 2015, the Panel informed the Parties that it was not minded to suspend the proceedings as requested by the Complainant. It stated that it would inform the Parties of it reasons for not doing so in it decision in this matter. 4. Factual Background
4.1 The Complainant is a company registered in Cyprus and is part of a business group that has been engaged in gaming and casino operations for over 20 years.
4.2 It would appear that until the mid 1990s this group had substantial operations in Russia. However, (according to the uncontested claims of the Respondent in this respect), in 2009 all bricks and mortar gambling operations in Russia became illegal save in a limited number of government approved locations. At that point the Complainant withdrew its on-the-ground operations in that country.
4.3 Notwithstanding this physical withdrawal, the Complainant's business group has continued to operate elsewhere in the world. Undisputed evidence has been provided that shows that it still has operations in the form of 200 branded gaming clubs throughout Europe; in particular in Germany, Italy, Croatia, Romania, Belarus and Latvia. From 2006 to 2010 its revenues amounted to in excess of USD 5.5 billion.
4.4 It would appear that some, if not all, of these various operations have been conducted under variants of a single "Volcano" brand. "Вулкан" was used in Russia. "Вулкан" in Cyrillic is the equivalent of "Vulkan" in roman script. "Vulkan Stern" was and is still used in Germany, while "Vulcano della Fortuna" has been used in Italy and "Vulcan" has been used in Belarus.
4.5 The Complainant is also the owner of a number of registered trade marks around the world that incorporate or comprise variants of this brand. Many of these trade marks are registered in Russia. However, they also include the following marks:
(i) International trade mark no 791038 dated September 3, 2002 (based upon a Russian registration no 216203 dated July 3, 2002) in class 41 designating 14 different states, all of which either form part of the Commonwealth of Independent States (CIS) or were historically part of the Soviet Union. The mark has proceeded to grant in all of these states and takes the following form:
(the "Volcano Design Mark")
(ii) International trade mark no 989103 dated August 11, 2008 (based upon a Russian registration No. 307879 dated June 2, 2006) for the word mark VOLCANO in classes 9, 16, 21, 25, 28, 35, 38, 39, 41, 42, 43 and 45, designating Belarus, the European Community, Croatia, Kazakhstan, Serbia and the Ukraine. The mark proceeded to grant unchanged in Belarus, Croatia and Serbia. In Kazakhstan it has been subject to provisional refusal. It has proceeded to grant in all other designated countries save for in respect of a modified set of goods and services. For example, the application proceeded to grant as a Community Trade Mark on September 3, 2012 in respect of goods and services in classes 16, 21, 25, 28, 35, 39, 41, 43, 45.
(iii) International trade mark no 984297 dated August 11, 2008 (based upon a Russian registration No. 353692 dated June 25, 2006) for the word mark VULKAN in classes 9, 16, 21, 28, 32, 35, 38, 39, 41, 42, 43 and 45, designating Belarus, the European Community, Croatia, Kazakhstan, Serbia and the Ukraine. The mark proceeded to grant unchanged in Croatia but has been provisionally refused in Kazakhstan. It has proceeded to grant in all other designated countries in respect of a modified set of goods and services. For example, the application proceeded to grant as a Community Trade Mark on October 1, 2012 in respect of goods and services in classes 9, 16, 21, 28, 35, 38, 39, 41, 42, 43 and 45.
4.6 The Domain Names were registered on the following dates:
February 2, 2012
August 6, 2013
September 10, 2013
October 9, 2013
October 30, 2013
July 31, 2014
July 31, 2014
4.7 Shortly after registration control of each of the Domain Names was passed to GGS Limited ("GGS"), an Anguilla company.
4.8 GGS has operated a website from the domain name since June 2011 and has operated similar websites from the Domain Names since their registration. At all relevant times these websites have offered online gaming services. The websites are in the Russian language and almost all of the users of those websites come from Russia and the Ukraine. The percentage of Russian visitors ranges from 46 percent in the case of the website operating from the Domain Name , to 82 percent in the case of visitors to the website operating from the Domain Name .
4.9 The websites operating from the Domain Names prominently feature the Volcano Design Mark. Although the websites are in Russian, the Complainant has provided uncontested translations of text that appears on the websites operating from the Domain Names as follows: and :
"Slots Volcano - a gaming brand, well-known in many countries. As for Russia and the CIS countries, there is, perhaps, there will be no such gamblers, who would not love to play clubs volcano.
The highest quality of service and the most generous slot machines on the market of gambling entertainment - these are our main features. It is because of this approach to business brand, 'Volcano' was the undisputed leader, and even synonymous with 'slots'. Have you caught yourself thinking 'Where to play slot machines?' Of course - in the volcano!
Keeping pace with the times, not so long ago we went out and the open spaces of the Internet. Now the old familiar games available right in your browser! Moreover - Casino- V on our site you can play slot machines for free, without registration and SMS."
and
"Official Game Club Volcano offers to play slot machines for free, without registration and sms! It is inconceivable that someone does not recognize good old red-and-blue logo 'Game Club Volcano.' Slot machines Vulcan were deservedly known throughout Russia and CIS countries.
By taking advantage of the Internet, we can now offer our customers an even greater service. One of our innovations is that you can play as well as in free slot machines for money in our club - Volcano online casino!" and and :
"We are sure that there is not a man that would not be familiar with the brand name 'Volcano'. We have long been a leading national network of gaming clubs, but after some changes in the Russian legislation, the club 'Volcano' had left his home and now we're working on the territory of countries such as Belarus, Latvia, Serbia, Italy, Germany, Romania, the Czech Republic, Peru and Bolivia.
We keep up with the progress and are ready to offer you a long-familiar and favourite games - now on the Internet. All of our old players, no doubt, already vkurse [sic] the advantages offered by the game at the 'volcano'.
Surely you are familiar with our brand, because not so long ago the gaming club 'Volcano' with blue-red sign can be found in any large, and not very city. Without false modesty we can say that Vulkan had the largest network of gaming clubs in Russia and Moscow. And now - in 2011 - we are glad to see you on our official web-site!" :
"Club Volcano - familiar to many, if not all, gambling brand, has long become synonymous with big winnings and gambling Activity. Since the heyday of gaming network 'Volcano' Many years have passed, and now we have shifted our emphasis on Europe, Latin America, and most importantly - we are now represented on the Internet!"
and
"All lovers of the casino in real life yet, of course, is well remembered the blue-red sign gambling clubs 'Volcano'. He was in any major city. It was the largest network gaming establishments, which united a great many true connoisseurs of gambling in the casino. Now free slot machines you can play online casino Volcano."
4.10 There have been a number of previous UDRP decisions involving similar domain names to those that are the subject matter of the current proceedings. In particular:
(i) EvoPlay LLC v. Mr Timur Ziganshin / Moniker Privacy Services / Timur,WIPO Case No. D2015-0222 in which the Complainant's licensee brought proceedings in relation to the domain names , , , and and ; and
(ii) EvoPlay LLP v. Mardiros Haladjian / GGS Ltd,WIPO Case No. D2015-0252 in which the Complainant's licensee brought proceedings in relation to the domain names and .
4.11 In each of these cases the complaint was rejected. The reasons of the panel in each of these case for doing so are addressed later on in this decision.
4.12 In contrast, the Complainant succeeded in Ritzio Purchase Limited v. Whoisguard Protected, Whoisguard, Inc / ...,WIPO Case No. D2015-0295 in relation to the domain name . However, in that case the Respondent does not appear to have been involved and no response was filed. 5. Parties' Contentions A. Complaint
5.1 The Complainant refers to its various registered trade marks and claims that by reason of its activities these marks are famous worldwide. It claims that each of the Domain Names is confusingly similar to those marks.
5.2 The Complainant contends that the Respondent is not a licensee of Complainant, and that the Complainant has not authorised or consented to the Respondent's use of any of its trade marks. It maintains instead "that [the] Respondent simply acquired the [Domain Names] in hopes of intentionally attracting, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion". Further, it contends that none of the factors identified in paragraph 4(c) of the Policy apply in this cases. It, therefore, claims that the Respondent has no right or legitimate interest in the Domain Names.
5.3 Similarly the Complainant contends that each of the Domain Names was registered and used in bad faith. It claims that the use of the Domain Names infringes its trade mark rights. Further, it maintains that it is apparent from the websites operating from the Domain Names that the Respondent is effectively pretending to be the Complainant, when it is not.
5.4 The Complainant also contends that the Respondent's use of the Domain Names falls within the scope of paragraph 4(b)(iv) of the Policy. Further, the Complainant contends that the Respondent has sought to hide its true identity, inter alia, through the use of privacy services and that this is again an indicator of bad faith. B. Response
5.5 The Respondent begins its substantive response with a quote from Yogi Berra declaring: "It's déjà vu all over again." In this respect it refers to the two previous decisions (i.e,the decisions identified at paragraph 4.10 of this decision above) in which claims against the Respondent or related parties in respect of similar domain names failed. It claims that the arguments raised by the complainant in those cases were nearly identical to those in the current proceedings. The Respondent claims that for the same reasons given by the panels in those cases, the Complaint should be rejected. It also relies on the comments in paragraph 4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the "WIPO Overview 2.0") as to the desirability that panel decisions under the policy are "consistent with prior panel decisions dealing with similar fact situations".
5.6 So far as the substantive issues in this case are concerned, the Respondent contends that for many years gambling has been illegal in Russia. As a consequence of this it is claimed that the Complainant's Russian marks have not been used in Russia since at least 2009 and that to "the extent they claim protection for gambling services, the Russian Registrations are invalid due to abandonment and non-use and are subject to cancellation". In this respect, the Respondent makes extensive submissions in relation to Russian gaming and intellectual property law.
5.7 The Respondent further claims that the Complainant's various international registrations rely upon those invalid registrations and "may still be 'dependent' (and thus vulnerable to cancellation) upon the validity of their underlying Russian registrations". The Respondent also appears to claim that the international registrations are invalid because the Complainant is a Cyprus corporation and therefore did not have "a real and effective industrial or commercial establishment in Russia" at the time the marks were registered.
5.8 The Respondent also contends that outside of Russia many other entities use "volcano trade[ ]marks" in respect of these services and this has "prevented [the] Complainant from registering such marks in several jurisdictions".
5.9 The Respondent claims that when it registered the Domain Names it did so "with the knowledge that trade[ ]mark rights no longer could exist in Russia for any gambling-related activities".
5.10 Further, the Respondent claims that the user of the Domain Names, GGS "has operated the [Domain Names] and their affiliated websites openly and with the implicit consent of [the] Complainant for nearly four years". In this respect it claims that the "Complainant has had extensive discussions with GGS regarding the [Domain Names] and the websites, including discussions about possible joint projects". In support of that assertion the Respondent relies upon an Affidavit from one Andrey Sevostianov. That affidavit claims that not only was such use with the implicit consent, but also the explicit consent, of the Complainant. However, no further details are provided as to when and in exactly what circumstances that consent was provided and what these supposed "joint ventures" were.
5.11 The Respondent contends that the use of a privacy service in relation to the Domain Name registrations is of "no relevance" since there are legitimate reasons for using such services (citing WWF-World Wide Fund for Nature v. Moniker Online Services LLC,WIPO Case No. D2006-0975).
5.12 Finally, the Respondent contends that this is a case where the Panel should make a finding of Reverse Domain Name hijacking. C. The Parties' Supplemental Submissions
5.13 Both Parties have submitted supplemental submissions in these proceedings. None of these were called for by the Panel. The position as to the admissibility of unsolicited supplemental submissions is addressed in paragraph 4.2 of the WIPO Overview 2.0 as follows:
"Consensus view: As the UDRP Rules grant the panel sole discretion to request further statements and determine the admissibility of evidence which may include an unsolicited filing, such filings, whe
