The Complainant is EvoPlay LLP of Hertfordshire, the United Kingdom of Great Britain and Northern Ireland, represented by Reed Smith LLP, United States of America.
The Respondent is Mardiros Haladjian, GGS Ltd. of Anguilla, Overseas Territory of the United Kingdom, represented by Boston Law Group, PC, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 17, 2015. On February 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 17, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced February 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response March 18, 2015. On March 10, 2015, the Center received the Complainant's first supplemental filing. On the same day, the Respondent requested an extension of response due date. On March 11, 2015, the Center granted the request of extension and the due date to submit a response was March 30, 2015. The Response was filed with the Center March 30, 2015. On April 1, 2015, the Center received the Complainant's second supplemental filing. On April 24, 2015, the Center received the Respondent's supplemental filing. On April 29, 2015, the Center received the Complainant's third supplemental filing.
The Center appointed Michael A. Albert, Maxim H. Waldbaum and Paul C. Van Slyke as panelists in this matter on May 4, 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. 4. Factual Background
This Complaint arises from a dispute between the parties over ownership of a Russian mark which both parties transcribe into Roman letters as VULKAN.
Complainant asserts that it is the exclusive licensee of these marks and that its predecessors in interest have been using them in commerce since 1992. It provides copies of certain trademark registrations. Respondent denies that the license in question gives Complainant standing to assert the claims herein.
The Disputed Domain Names were registered in 2012 and 2014, respectively. 5. Parties' Contentions A. Complainant
Complainant alleges that on December 8, 2014, it entered into agreements with Bartlett Corporation ("Bartlett") and Ritzio Purchase Limited ("Ritzio") to acquire exclusive rights to use the VULKAN trademarks as well as any trademark applications those parties owned in the Russian Federation. The agreements also grant Complainant the right to initiate actions for unauthorized use of the marks against third parties.
Complainant further alleges that Bartlett and Ritzio owned Russian trademarks incorporating the VULKAN name, some of which also include a design component. Such trademark registrations date back, variously, to dates between 2000 and 2008, although Complainant claims first use in commerce dating back to 1992.
Complainant asserts that the VULKAN Marks are famous and known world-wide in the gaming and entertainment industries, citing, for example, Ritizio's alleged operating revenue of over USD 5 billion between 2006 and 2010 in connection with these marks.
Complainant wrote to Respondent about its use of the Disputed Domain Names but received no response.
Respondent uses the Disputed Domain Names in connection with online casino and gaming services.
Complainant alleges that the Disputed Domain Names are confusingly similar to its VULKAN marks; that Respondent has no rights or legitimate interests in such domain names because Respondent has developed no bona fide business under or in connection with the VULKAN marks, has not been known by them, and has not been licensed to use them. For similar reasons, Complainant alleges bad faith registration and use. Specifically, it alleges that Respondent must have known of Complainant's marks because of how well-known they were in the industry in which Respondent operates, and that in any event Respondent has falsely identified itself as affiliated with Complainant, and is engaged in creating fraudulent "copycat" websites. B. Respondent
Respondent asserts that Complainant employed, until recently, a business model similar to that which it now complains about Respondent using, namely to register and use various domain names containing the term "vulkan" without authorization from the entities which it now claims were the owners of those marks.
Respondent further alleges that Complainant lacks standing to assert the claims herein because it does not claim to be the owner of the marks in question, and it does not have an exclusive license to use them.
Respondent further alleges that use of the marks in connection with gaming would be illegal in the Russian Federation, which banned gambling in 2006.
Respondent further asserts that the marks in question were rejected for registration in Ukraine.
Respondent alleges that its own use of the marks as part of domain names goes back to 2011, by which time Complainant and/or its predecessors could not be legally using the marks in connection with gaming in Russia (where virtually all of the visits to the disputed domain name's corresponding web sites came from, since it is a Russian-language site). Respondent appears to therefore be alleging that Complainant or its predecessors had abandoned the use of the marks.
Respondent goes on to allege that neither Bartlett nor Ritzio had enforceable trademark rights in the disputed marks, because the claimed Russian registrations are invalid as in violation of Russian law. Moreover, it alleges that Complainant fails to offer proof that the marks were used in commerce.
Lastly, Respondent contends that, with respect to domain names, the license granted to Complainant was non-exclusive, and Complainant thus lacks standing to pursue this case.
In any event, Respondent argues, it adopted the domain names in good faith and with legitimate rights and interests, because Ritzio and Bartlett had not been using the marks for several years in Russia and Respondent believed in good faith that they were available for use. C. Supplemental Filings
In a first supplemental filing, Complainant submits copies of the relevant license agreement. In a second supplemental filing, Complainant argues that it has standing because the license in question is indeed exclusive; and in any event that non-exclusive licensees may have standing. It further argues that Respondent's challenge to the validity of the Russian trademark registrations is out of place here because "issues concerning trademark validity . . . are clearly not within the purview of any UDRP proceeding and are best left for administrative and/or judicial adjudication." Second Supplemental Submission at page 4, quoting Gerber Childrenswear Inc. v. David Webb,WIPO Case No. D2007-0317.
Respondent, in a supplemental filing, calls the Panel's attention to a ruling in a case filed by Complainant herein against Timur Ziganshin (EvoPlay LLC v. Mr. Timur Ziganshin / Moniker Privacy Services / Timur,WIPO Case No. D2015-0222) (the "Ziganshin Case"). In that case, on facts substantially identical to those at issue in this case, the three-member panel denied the complaint, finding that the complainaint had not carried its burden of proving bad faith registration and use.
In a third supplemental filing, Complainaint asserts that this Panel is required to assess the case independently of the prior panel because it involves a different Respondent and Registrar. 6. Discussion and Findings
The Panel agrees with Complainant that it cannot simply follow the Ziganshin Case but must review the file of this case and exercise its own independent judgment as to the facts. Having reviewed the extensive record of this case, however, this Panel comes to essentially the same conclusion as did the Ziganshin panel.
This Panel finds that the issues raised in this proceeding are outside the scope of proceedings under the Policy and are properly decided by traditional (e.g., appropriate judicial) means. Therefore the Complaint should be dismissed. See, e.g., Clinomics Biosciences, Inc. v. Simplicity Software, Inc.,WIPO Case No. D2001-0823; Libro AG v. NA Global Link Limited,WIPO Case No. D2000-0186.
Complainant itself, citing prior cases decided under the Policy, points out to us that issues of trademark validity are generally outside the purview of UDRP proceedings. For that very reason (among others), Complainant's case fails. The facts of this case do not establish a clear-cut case of cybersquatting, and much of the substance of the dispute between the parties turns on issues of trademark ownership, validity, and licensing. If Complainant's predecessors in interest never had valid trademark rights in the marks, or if they have since become abandoned, Respondent would have every right to make such usage. These are complex issues best addressed through the court system rather than under the Policy.
Considerable factual and legal disputes appear to remain regarding the validity of the trademarks owned by Ritzio and Bartlett, as well as about the precise scope of the rights conveyed to Complainant, and whether such scope includes the power to act under the Policy to challenge the registration or use by Respondent of domain names to which Complainant itself had no rights whatsoever at the time of the domain name registrations.
In arriving at its decision, the majority of the Ziganshin Panel found 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." The majority continued:
"[T]his 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."
In a concurring opinion in the Ziganshin Case, the third panelist simply found that the dispute is not well suited for resolution under the Policy and recommended denying the requested relief without considering the merits of the case.
This case is, in all material respects, virtually identical to the Ziganshin Case, and this Panel finds, similarly, that it falls outside the scope of the relatively narrow confines of the Policy, which is designed chiefly to address clear cases of cybersquatting. 7. Decision
For the foregoing reasons, the Complaint is denied.
Michael A. Albert
Presiding Panelist
Maxim H. Waldbaum
Panelist
Paul C. Van Slyke
Panelist
Date: May 18, 2015
Full & Egal Universal Law Academy