The Complainant is Ritzio Purchase Limited of Nicosia, Cyprus, represented by Mapa Trademarks SL, Spain.
The Respondent is Whoisguard Protected, Whoisguard, Inc of Panama, Panama / ... of Vernon, France. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 23, 2015. On February 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 27, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 27, 2015.
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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2015. The Respondent was filed an informal Response with the Center on March 20, 2015, and with a subsequent email dated March 25, 2015, the Respondent confirmed that its submission of March 20, 2015 contained all the information that it intended to provide.
The Center appointed Assen Alexiev as the sole panelist in this matter on March 27, 2015. 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 Complainant is part of the Ritzio International Group, which has offered gaming, casino and entertainment products and services under the Вулкан and Vulkan brands for more than 20 years. 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. The Group has more than 2,000 employees, and operates in Germany, Romania, Latvia, Belarus, Croatia and Italy. Between 2006 and 2010, Ritzio's operating revenue was in excess of USD 5.5 billion.
The Complainant is the owner of a number of trademark registrations containing the term Вулкан, Vulkan, or Volcano (the "VOLCANO trademark"), including the following registrations:
- the word trademark VOLCANO with registration number 307879, registered on June 2, 2006 in the Russian Federation for goods and services in International Classes 09, 16, 21, 28, 35, 38, 39, 41, 42, 43 and 45;
- the combined trademark ВУЛКАН ("VULKAN" in Latin transliteration) with a lightning bolt logo, with registration number 342290, registered on January 28, 2008 in the Russian Federation for goods and services in International Classes 03, 09, 16, 18, 21, 24, 25, 26, 27, 28, 30, 32, 33, 34, 35, 36, 37, 38, 39, 41, 42, 43 and 45;
- the word trademark VOLCANO with registration number IR 989103, registered as an International trademark on August 11, 2008 for goods and services in International Classes 09, 16, 21, 25, 28, 35, 38, 39, 41, 42, 43 and 45;
- the word trademark VULKAN with registration number IR 984297, registered as an International trademark on August 11, 2008 for goods and services in International Classes 09, 16, 21, 28, 32, 35, 38, 39, 41, 42, 43 and 45; and
- the combined trademark ВУЛКАН ("VULKAN" in Latin transliteration) with registration number IR 791038, registered as an International trademark on September 3, 2002 for services in International Class 41.
The disputed domain name was registered on March 7, 2013 and is linked to a website offering online gambling and casino services. 5. Parties' Contentions A. The Complainant
The Complainant contends that its VOLCANO trademark enjoys a worldwide reputation in connection with high quality products and services in the gaming and entertainment industries. According to the Complainant, the disputed domain name is confusingly similar to the VOLCANO trademarks, as it fully incorporates the VOLCANO word element. The only difference is the addition of the descriptive word "online" which is not distinctive. The website at the disputed domain name copies the design of the Complainant's ВУЛКАН ("VULKAN" in Latin transliteration) trademark, which makes it likely that Internet users may be confused into believing that there is some relation between the Respondent and the Complainant when no such relation exists.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to use the VOLCANO trademark. The Complainant has commenced to use the VOLCANO trademark about 20 years before the registration of the disputed domain name in 2013. The disputed domain name is not derived from the Respondent's name, and the Respondent does not appear to hold any trademark rights for it. The Complainant points out that the Respondent is using the disputed domain name for a website that offers online gaming services which are not authorized by the Complainant. The Respondent's website copies the look and feel of the Complainant's gaming clubs, copies the Вулкан ("VULKAN" in Latin transliteration) trademark with lightning bolt logo exactly, and misrepresents that the disputed domain name and the website associated to it are affiliated to the Complainant. The Respondent attempts to benefit from the goodwill of the VOLCANO trademarks, and its conduct is not a bona fide offering of goods or services for the purposes of the Policy.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent was aware of the VOLCANO trademarks when it registered the disputed domain name, because the website at the disputed domain name copies the design of the VOLCANO trademarks and offers identical services to the services offered by the Complainant under the VOLCANO trademark. By using the Complainant's VOLCANO trademark, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion. B. The Respondent
The Respondent did not submit a formal Response in this proceeding. The only statement made by it is that after the submission of the Complaint, the Respondent has removed from the website at the disputed domain name the content described in the Complaint, and that the website is now "used by [the Respondent's] partners for commercial purposes and doesn't infringe any intellectual rights". 6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…" A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its trademark rights in the VOLCANO trademark. The Panel notes that the trademarks referred to by the Complainant contain either the word element "volcano", or the word element "вулкан" or "vulkan", which means "volcano" in Russian and in other languages. Therefore, these trademarks can be regarded as protecting essentially the same concept with different language localizations.
The Panel notes that there is a common practice under the Policy to disregard in appropriate circumstances the generic Top-Level Domain ("gTLD") such as ".com" for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name that has to be analyzed is its "volcano-online" section, which is a combination of the elements "volcano" and "online". The first of these elements is identical to the Complainant's VOLCANO word trademark and confusingly similar to the Complainant's ВУЛКАН and VULKAN trademarks. The second element is descriptive of the online offering of products and services, and thus do not render the disputed domain name dissimilar to the VOLCANO trademark. Rather, it is more likely that Internet users would mistakenly regard the disputed domain name as related to the Complainant's business and to the products and services it offers to customers.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the VOLCANO trademark in which the Complainant has rights, and the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests
The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that it is not authorized or licensed to use the VOLCANO trademark, that there is no relationship between the Complainant and the Respondent, and that the disputed domain name is used for a website that copies the Complainant's VOLCANO trademarks and the design of the Complainant's website, and offers services that compete with those of the Complainant, misrepresenting that this website is related to the Complainant. Thus, the Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent, although given a fair opportunity to do so, chose not to present to the Panel a formal response in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any legitimate reason for the registration and use of the disputed domain name, it could have brought it to the attention of the Panel. In particular, the Respondent has failed to deny the contentions of the Complainant and to contend that any of the circumstances described in Policy, paragraph 4(c), is present in its favor. The only statement made by the Respondent was that it had replaced the content of the website at the disputed domain name with other content. Notably, the Respondent has not denied any of the statements made in the Complaint.
In this situation, the only information available about the Respondent is the contentions of the Complainant and the evidence submitted with the Complaint, the WhoIs information for the disputed domain name, provided by the Registrar and the content of the website at the disputed domain name. The WhoIs information for the disputed domain name contains no indication that the Respondent is or has been commonly known by the disputed domain name. The disputed domain name itself is confusingly similar to the VOLCANO trademark of the Complainant, which was registered and used long before the registration of the disputed domain name. As contended by the Complainant and undisputed by the Respondent, the Respondent has used the disputed domain name for a website that copies the Complainant's VOLCANO trademarks and the design of the Complainant's website, and offers services that compete with those of the Complainant, while misrepresenting that this website is somehow related to the Complainant. In this situation, it is more likely than not that Internet users may be confused as to the source of services offered on the Respondent's website or led to wrongly believe that the Respondent's website is related to or endorsed by the Complainant.
In the Panel's view, these circumstances show that the Respondent must have been well aware of the Complainant and of its VOLCANO trademark when the disputed domain name was registered. The registration and use of the disputed domain name took place without the consent of the Complainant. The Panel finds it more likely than not that this registration was made in an attempt to benefit from the reputation of the VOLCANO trademark to attract customers to the Respondent's website and then offer them services that compete with the Complainant's products and services. The Panel is of the opinion that such conduct cannot give rise to rights or legitimate interests in the disputed domain name, and finds that the Complainant's prima facie case has not been rebutted. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your website or location or of a product or service on your website or location."
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
The Complainant has provided evidence of the scope of its activities internationally. The disputed domain name is confusingly similar to the VOLCANO trademark and was registered without the consent of the Complainant, and the Respondent has failed to show any rights or legitimate interests in it. The VOLCANO trademark of the Complainant was registered and used long before the registration of the disputed domain name, and the website at the disputed domain name was linked to a website that copies the Complainant's VOLCANO trademarks and the design of the Complainant's website, and offers services that compete with those of the Complainant, while misrepresenting that this website is somehow related to the Complainant. In these circumstances, the Panel is satisfied that the disputed domain name was registered with knowledge of, and in view of the popularity of, the Complainant and its VOLCANO trademark and the goodwill attached to it. Therefore, the Panel accepts that the disputed domain name was registered in bad faith.
The disputed domain name is linked to a website that offers online gaming services which are not authorized by the Complainant. The Respondent's website copies the look and feel of the Complainant's gaming clubs, copies exactly the ВУЛКАН ("VULKAN" in Latin transliteration) trademark with a lightning bolt logo, and on top of this does not feature a disclaimer for the lack of relation with or endorsement by the Complainant. The Panel does not regard such conduct as being made in good faith. Rather, it appears that the Respondent, by using the disputed domain name, attempts to attract to its own website for commercial gain the consumers that are looking for the online gaming services offered by the Complainant by creating a likelihood of confusion with the Complainant's VOLCANO trademark as to the source or affiliation of the Respondent's website.
Therefore, and in the lack of any denial or allegation to the contrary, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith. 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 disputed domain name be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: April 14, 2015
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