Complainant is Ritzio Purchase Limited of Nicosia, Cyprus, represented by Mapa Trademarks SL, Spain.
Respondent is Domain Admin, Privacy Protection Service Inc d/b/a PrivacyP of Nobby Beach, Queensland, Australia / Denis Belov of Belize City, Belize. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and (the "Disputed Domain Names") are registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 4, 2016. On November 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 7, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 9, 2016 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 November 14, 2016.
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 Respondent of the Complaint, and the proceedings commenced on November 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 7, 2016.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on December 20, 2016. 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
Complainant is a company incorporated in Cyprus and is active in the gaming, casino and entertainment business. Complainant holds numerous trademarks, including the following:
- word mark VULKAN, registered with WIPO on August 11, 2008 under no. 984297 in classes 9, 16, 21, 28, 32, 35, 38, 39, 41, 42, 43 and 45;
- word mark VOLCANO, registered with WIPO on August 11, 2008 under no. 989103 in classes 9, 16, 21, 25, 28, 35, 38, 39, 41, 42, 43 and 45;
- figurative mark, registered with WIPO on September 3, 2002 under no. 791038 in class 41;
- figurative mark, registered with the EUIPO on September 23, 2015 under no. 014193544 in classes 28 and 41.
The 40 Disputed Domain Names were registered on 9 different dates between October 21, 2013 and September 8, 2016.
The Disputed Domain Names all appear to refer to websites offering gaming and online casino services. 5. Parties' Contentions A. Complainant
Complainant contends that the Disputed Domain Names are identical or confusingly similar to Complainant's trademarks, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, and that the Disputed Domain Names have been registered and are being used in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
(i) the Disputed 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 Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there are VULKAN, VOLCANO, and Вулкан trademarks in which it has rights. The trademarks have been registered and used in various countries.
25 Disputed Domain Names reproduce Complainant's VOLCANO trademark in its entirety and simply add hyphens, numbers and generic terms, some of which relate to Complainant's gaming and casino business (e.g., "slot" and "casino").
The 15 remaining Disputed Domain Names include the sign "VULCAN" and adds hyphens, numbers and the generic terms "azart" and "slot". The word "azart" is the English transliteration of the Russian word "Азарт" which means "excitement" or "ardor". In the Panel's view, the sign "VULCAN" is confusingly similar to Complainant's VULKAN trademark. Moreover, the association is strengthened by the addition of the word "slot", which directly refers to Complainant's business.
The Panel is of the opinion that the mere addition of non-distinctive text to a complainant's trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395, where the domain name was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783, where the domain name was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva/C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially given the addition of the word "download" because users typically download complainant's software).
Accordingly, Complainant has made out the first of the three elements of the Policy that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the disputed domain name.
It is well established under the Policy that it is sufficient for a complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the respondent. See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Names and that Respondent does not seem to have acquired trademark or service mark rights. Respondent's use and registration of the Disputed Domain Names was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
Complainant provides evidence of the fact that the Disputed Domain Names refer to websites with identical pages and offering gaming and online casino services. Complainant also states that all websites linked to the Disputed Domain Names mention Complainant's trademarks, and even copy Complainant's figurative trademark including the Russian word "Вулкан". The foregoing is not disputed by Respondent.
Therefore, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the Disputed Domain Names. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and that they are being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
In the instant case, Complainant provides evidence of the reputation of its trademarks and states that the Disputed Domain Names refer to websites offering products and services which are in direct competition with Complainant's business. Moreover, Complainant also states that the websites linked to the Disputed Domain Names even copy Complainant's figurative trademark including the Russian word "Вулкан". Finally, the Panel notes that many Disputed Domain Names include generic terms referring to Complainant's business. In these circumstances, the Panel finds that Respondent must have had knowledge of Complainant's rights in the VULKAN and VOLCANO trademarks at the moment it registered the Disputed Domain Names. The Panel therefore finds that Respondent's awareness of Complainant's trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix ("voip") suggested knowledge of the complainant's rights in the trademarks).
As mentioned above, Complainant states that the Disputed Domain Names refer to websites offering products and services which are in direct competition with Complainant's business, and that the websites linked to the Disputed Domain Names bear one or more trademarks of Complainant. Moreover, Complainant claims that Respondent expressly confuses Internet users by referring to Complainant's history and reputation on the "About" pages of the websites linked to the Disputed Domain Names. Complainant provides evidence in support of these statements with regard to at least 2 of the Disputed Domain Names. According to the Panel, this shows that by using the Disputed Domain Names, Respondent intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the websites or of a product on the websites. In the Panel's view, this is an indication of bad faith use.
Moreover, given the number of the Disputed Domain Names, the Panel finds that Respondent has engaged in a pattern of domain name registrations in order to prevent Complainant from reflecting its mark in corresponding domain names. This is yet another indication of bad faith use.
Finally, by failing to respond to the Complaint, Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions from this it considers appropriate.
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Names were registered and are being used 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 all Disputed Domain Names:
, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: January 3, 2017
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