Complainant is EvoPlay LLC, of the United Kingdom of Great Britain and Northern Ireland, represented by Reed Smith LLP, United States of America.
Respondent is Mr Timur Ziganshin / Moniker Privacy Services / Timur, of the Russian Federation ("Russia") / Seychelles / United States of America, represented by Boston Law Group, PC, United States of America. 2. The Domain Names and Registrars
The disputed domain names , , , and are registered with Moniker Online Services, LLC and the disputed domain name is registered with URL Solutions, Inc. (the "Registrars"). The six disputed domain names will be referred to collectively as the "Domain Names" unless context otherwise requires. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 11, 2015. On February 11, 2015, the Center transmitted by e-mail to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Names. On February 13, 2015, Moniker Online Services, LLC transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on February 13, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 16, 2015.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2015. The Response was filed with the Center on March 9, 2015.
On February 25, 2015 the Center received an e-mail from Moniker Online Services, LLC informing that, in spite of the registrar lock, the Respondent had transferred the disputed domain name to URL Solutions, Inc. On February 27, 2015, the Center sent an e-mail to URL Solutions, Inc. requesting it to confirm that the Domain Name had been placed in registrar lock and asking it to inform the registration details for the Domain Name . On the same date, URL Solutions, Inc. replied to the Center confirming registrar lock and informing the registrant's contact information.
Complainant has filed a supplemental filing on March 11, 2015 including copies of both license agreements referred to in the Complaint as Annex 6. On the same date, Respondent has filed a supplemental filing requesting ten days to respond to Complainant's supplemental filing. On March 17, 2015 Complainant filed another supplemental filing in rebuttal to Respondent's Response.
The Center appointed Robert A. Badgley, Michelle Brownlee and Paul M. DeCicco as panelists in this matter on March 27, 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.
Both parties made supplemental submissions, which the Panel in its discretion reviewed. 4. Factual Background
The parties, and particularly the Complainant, submitted more than 1,000 pages of exhibits in this case. The Panel need not, and will not, summarize the massive record submitted here beyond what is necessary to reach and explain its decision in this case.
The Complainant alleges that it is the exclusive licensee of the Russian trademarks Вулкан1, Вулкан (& Design), Vulkan and Volcano trademarks, among other Вулкан, Vulkan, and Volcano composite marks (hereinafter the "VULKAN Marks").
It is alleged that on December 8, 2014, the Complainant executed agreements with Bartlett Corporation ("Bartlett") and Ritzio Purchase Limited ("Ritzio"), both of which are controlled by the same person. Pursuant to these agreements, the Complainant has the exclusive right to use the identified VULKAN trademarks owned by Ritzio and Bartlett, as well as any applications or registrations owned by Ritzio and Bartlett in Russia. Additionally, the agreements grant the Complainant the right and authority, subject to Bartlett's and Ritzio's approval, to initiate an action to prevent and/or remedy the unauthorized use of any of the licensed VULKAN trademarks by third parties. It is alleged that the Complainant, Bartlett and/or Ritzio have been continuously using these marks since at least as early as 1992. The Complainant is allegedly the exclusive licensee of registrations for the VULKAN Marks in numerous countries around the world, including but not limited to the following registrations in Russia:
Country
Trademark
Registration No./ Date
Goods/Services
Registrant
Russia
Вулкан (& Design)
193239
August 28, 2000
Entertainment; provision of equipment and maintenance of gaming halls; provision and maintenance of slot machines.
Bartlett Corporation
Russia
Вулкан (& Design)
216203
July 3, 2002
Games of chance; information on entertainment; providing online electronic publications; leisure; organization of lotteries; organization of entertainment for recreation; provision of gaming halls; entertainment of guests; and casino services.
Bartlett Corporation
Russia
Вулкан (& Design)
353694
June 25, 2008
Automatic vending machines and mechanisms for coin-operated apparatus; data processing equipment and computers; ticket machines; automatic equipment for monitoring and control of electronic machinery; computer and computer game programs; computer programs; [etc.]
Ritzio Purchase Limited
Russia
Вулкан
361357
October 7, 2008
Same as above.
Bartlett Corporation
Russia
VULKAN
353692
November 18, 2005
Same as above.
Ritzio
Purchase Limited
Russia
VOLCANO
307879
June 2, 2006
Same as above.
Ritzio Purchase Limited
The Complainant alleges further that, for more than 20 years, "Ritzio has been in the business of providing high-quality gaming, casino and entertainment products and services, including but not limited to the operation and management of gaming halls, thedesign, development, provision and maintenance of games of chance, including betting bingo and slot machines, the provision of interactive real-money games through a computer network, and other related products and services under the well-known Вулкан and Vulkan brands." According to the Complaint: "Today, Ritzio is one of the leading gaming operators with more than 200 branded gaming clubs and more than 5,800 gaming machines deployed throughout Europe."
Ritzio's business operations extend beyond Russia into a number of countries, including Germany, Romania, Latvia, Belarus, Croatia and Italy. The Complainant asserts that the VULKAN Marks constitute one of the most recognized and well-known brands in Europe. Between 2006 and 2010, Ritzio's operating revenue was in excess of USD 5.5 billion.
The Respondent registered the Domain Names on various dates between June 15, 2011 and October 30, 2012.
The Complainant asserts that, on December 15, 2014, upon discovering the Respondent's registration and operation of the Domain Names, Ritzio and Bartlett both sent letters to the suspected owner(s), advising them that the Complainant is the exclusive licensee of the VULKAN Marks, and that it has the legal authority to prevent any unauthorized use of the VULKAN Marks by third parties. However, it is alleged that no response was ever received.
According to the Complainant, the Respondent has used the Domain Names to resolve to websites which offer online casino and gaming services in competition with the services offered under the VULKAN marks. The Complainant alleges further that the Respondent "has copied the look and feel of Ritzio's gaming clubs, copied the Вулкан word mark and lightning bolt logo exactly, created 'copycat' websites," and is "intentionally misrepresenting" that the websites to which the Domain Names resolve are "directly connected to, and/or affiliated with, Ritzio's land-based gaming clubs."
According to the Respondent, online gambling was banned from Russia in its entirety in late 2006 (meaning that, as of 2006 Ritzio could not have had any legal online operations in Russia), and Ritzio ceased all brick-and-mortar gambling operations in Russia and Ukraine in early 2009 as a result of a Russian law that made all gambling illegal in nearly all of Russia. Because of the illegality of gambling operations, the Respondent contends, the Vulkan Marks are invalid due to abandonment and non-use and are subject to cancellation.
In 2011 – more than five years after Russia had banned Internet gambling, more than three years after Ritzio and Bartlett were legally prohibited from operating casinos, and more than three years after they ceased using the VULKAN Marks in Russia and Ukraine – the Respondent registered the Domain Names. The Respondent states that it did so knowing that rights in the VULKAN Marks "could not properly survive with regard to an activity which was prohibited by Russia."
Immediately after registering each of the Domain Names, the Respondent asserts, the Respondent transferred operation and control of each, including any websites to which the Domain Names resolve, to GGS Ltd., an Anguilla company ("GGS"), which continues to operate each of the Domain Names and their websites. Thus, the Respondent alleges, "the operation and control of the Domain Names and their websites lay solely with GGS."
The Respondent alleges further that "almost all of the visitors to the [websites accessible via the Domain Names] come from Russia and Ukraine –where Ritzio and Bartlett can possess no rights in the Disputed Marks." Moreover, the Respondent asserts, these websites are "available only in Russian and are aimed only at Russian-speaking users."
The Respondent alleges that GGS has operated the Domain Names and their websites "openly and with the implicit consent of Ritzio (and Bartlett) for nearly four years." Indeed, the Respondent alleges, "over the years, Ritzio has had extensive discussions with GGS regarding the Disputed Domains and their websites, including discussions about possible joint projects."
The Respondent further alleges:
Although Complainant attempts to conflate itself, Bartlett, and Ritzio, to do so, Complainant must omit a large part of its own history. Complainant alleges that it received a trademark license from Bartlett on December 8, 2014. What Complainant fails to inform the panel, however, is that it has itself been operating domains and websites incorporating the Disputed Marks since at least as early as 2011 – without any authorization or license from the trademark holder that it now claims to have a non-exclusive license.
In other words, Complainant operated gambling websites for more than three years, apparently without any concern that it was violating Ritzio's (or anyone's) trademark rights. It did so because it knew that the Disputed Marks were void and unenforceable. Indeed, it was only when EvoPlay decided to try to reverse hijack Respondent's domains that it sought a purported license.
Indeed, prior to this dispute, Complainant and GGS were in a business relationship wherein they shared information regarding operating gambling websites. As a result of this relationship, GGS understands that Complainant has registered at least 18 domain names relating to the Disputed Marks and has operated websites incorporating such marks since at least December 2011 (after Respondent had registered two of the Disputed Domains and GGS began operating them).
The domain names registered by the Complainant include: (registered on December 12, 2012), (registered on February 27, 2013), and (registered on March 28, 2014). 5. Parties' Contentions A. Complainant
The salient factual allegations set forth in the Complaint are summarized above. The Complainant asserts that it has satisfied the three elements required under the Policy for the transfer of each of the Domain Names. B. Respondent
The Respondent's main factual contentions are set forth above. The Respondent raises myriad arguments to dispute this Complaint, only some of which will be taken up by the Panel here. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to each of the Domain Names at issue in this case:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel need not decide this issue in view of its conclusion below with respect to the "bad faith" element under the Policy. B. Rights or Legitimate Interests
The Panel need not decide this issue in view of its conclusion below with respect to the "bad faith" element under the Policy. C. Registered and Used in Bad Faith
For each of the Domain Names at issue, paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation", are evidence of the registration and use of the Domain Names in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or
(ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
A majority of the Panel concludes, for each of the Domain Names at issue, that the Complainant has not carried its burden of proving that Respondent registered and used the Domain Names in bad faith within the meaning of the Policy.
As the sheer mass of documentation accompanying the parties' submissions in this case tends to indicate, this dispute is not well suited for resolution under the Policy. In this case, there are potential issues surrounding the Complainant's standing as purported licensee to bring this proceeding, the validity of the underlying trademark rights upon which the Complaint is based, possible trademark abandonment issues, the possible acquiescence of the purported licensors (Bartlett and Ritzio) in the Respondent's conduct, possible issues of the Complainant's unclean hands, and so forth.
The Policy does not contemplate this Panel serving as a tribunal of general jurisdiction over any and all disputes which are somehow related to domain names. The issues raised by the parties here exceed the relatively narrow confines of the Policy, which is designed chiefly to address clear cases of cybersquatting. See, e.g., Libro v. NA Global Link,WIPO Case No. D2000-0186.
In view of the foregoing and possibly other issues, the Panel majority concludes that the Complainant has not made out or proven a cognizable case under the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Presiding Panelist
Michelle Brownlee
Panelist
Paul M. DeCicco
Panelist (Concurring)
Date: April 16, 2015
CONCURRING OPINION
Having found that "this dispute is not well suited for resolution under the Policy" and further that "the issues raised … exceed the relatively narrow confines of the Policy," I would simply deny the requested relief without considering the merits under Policy 4(a)(iii). See Clinomics Biosciences, Inc. v. Simplicity Software, Inc., WIPO Case D2001-0823 (Panel declining to rule on the merits after finding that the dispute centered on subject matter outside the scope of the UDRP Policy).
Paul M. DeCicco
Panelist (Concurring)
Date: April 16, 2015
1 The English translation of Вулкан is "Vulcan" or "Volcano." The transliteration of this trademark in Roman letters is "Vulkan" since Cyrillic has no equivalent of the letter "C," only "K," for the "K" sound.
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