The Complainant is Ritzio Purchase Limited of Nicosia, Cyprus, represented by Mapa Trademarks SL, Spain.
The Respondent is Vladislav Morkovko c/o Dynadot of San Mateo, California, United States of America. 2. The Domain Name and Registrar
The disputed domain names , and are registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2017. On February 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2017. The Complainant submitted a Supplemental Filing on March 8, 2017.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on March 9, 2017. 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 a company registered in Cyprus and is part of a business group that has been engaged in gaming and casino operations since 1992.
The Complainant has been conducting its business under the Вулкан, Vulkan and Volcano marks which are registered all over the world. The Complaint owns numerous registered trademarks, including:
- international trademark registration No. 989103, dated August 11, 2008 (based upon a Russian registration No. 307879 dated June 2, 2006) for the wordmark VOLCANO in classes 9, 16, 21, 25, 28, 35, 38, 39, 41, 42, 43 and 45;
- international trademark registration No. 791038, dated September 3, 2002 (based upon a Russian registration No. 216203 dated July 3, 2002) for a stylized version of ВУЛКАН mark in class 41.
The disputed domain name was registered on October 5, 2012. The disputed domain names and were registered on September 19, 2013. Each resolves, or shortly before the Complaint was filed resolved, to a web page which appears for all practical purposes to be identical. Each of these webpages uses the Complainant’s stylized ВУЛКАН mark and purports to offer gaming and other entertainment services offered by the Complainant. 5. Parties’ Contentions A. Complainant
First, the Complainant requests the Panel to consolidate the proceedings against two Respondents which were named in the Complaint as “Vladislav c/o Dynadot” and “Vladislav Morkovko c/o Dynadot”. The Complainant asserts that there is only one actual Respondent who controls all the disputed domain names: the websites that they resolve to are identical and two disputed domain names were registered on the same day.
Secondly, the Complainant submits that the disputed domain names are identical or confusingly similar to its trademarks. According to the Complainant, the disputed domain names incorporate the VOLCANO mark, adding only the generic terms “clubs”, “clubslot” or “slotclub”, which are irrelevant under the Policy. The Complainant asserts that the words “clubs”, “club”, “slot” even create extra confusion, due to direct association with the gambling business in which the Complainant operates. In the Complainant’s opinion, the disputed domain names mislead consumers into believing that the domain names are either owned by or associated with Complainant.
Thirdly, the Complainant contends that the Respondent is not a licensee of the Complainant, nor is he authorized to use of any of the VOLCANO mark in any way. Further, the Complainant submits that the disputed domain names bear no relationship to any legitimate business of the Respondent nor it has shown any demonstrable preparations to use the domain names in connection with any bona fide offering of goods or services.
Fourthly, the Complainant contends that the Respondent has registered the disputed domain name in bad faith to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion. According to the Complainant, the disputed domain names are operating as full-functional online-casinos and copy the look-and-feel of the Complainant’s gambling clubs. The Complainant asserts that the Respondent use its stylized Вулкан mark on the websites to which the disputed domain names resolve. Furthermore, the Complainant emphasizes that the Respondent demonstrates that disputed domain names are associated with the Complainant in text descriptions available on these websites.
In the Supplemental Filing of March 8, 2017, the Complainant asserts that the Respondent, in order to mislead the Panel, ceased the access to the disputed domain name , and slightly changed the logo available at the websites under the disputed domain names and which nevertheless corresponds with the Complainant’s Вулкан mark. The Complainant finds these actions are further proof of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
(i) Consolidation of the Proceeding Against Two Respondents
The names, addresses and telephone numbers of both Respondents named in the Complaint (“Vladislav c/o Dynadot” and “Vladislav Morkovko c/o Dynadot”) are the same and the disputed domain names resolve to identical websites. Therefore, the Panel finds that the above mentioned entities are one and the same, and that these proceedings are pursued against the Respondent only and that there is no need for consolidation.
(ii) Merits of the Case
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 the 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 the 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 the 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) the 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
The Complainant has provided evidence and has thus established its trademark rights in the VOLCANO mark. 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 disputed domain names reproduce the VOLCANO mark in its entirety and simply add generic terms, which relate to the Complainant’s gaming and casino business (“slot” and “club”). 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).
Moreover, 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).
For these reasons, the Panel finds that the disputed domain names are 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 names. B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (See Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to the lack of rights or legitimate interests of the Respondent in the disputed domain names: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use the VOLCANO mark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain names; (d) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. In particular, the use of the disputed domain names for operating online casinos with layouts based on the Complainant’s Вулкан mark cannot be qualified as a bona fide offering of goods or services.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain names, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and concludes that the second element of paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain names.
The disputed domain names were registered in 2012 and 2013. By that date the Complainant’s business under the VOLCANO mark had been established for many years since its commencement in 1992. Considering the number of disputed domain names, the reproduction of the Complainant’s Вулкан mark on the Respondent’s websites and the fact that both parties operate in the gambling industry, the Panel infers that the Respondent was well aware of the Complainant’s business and of its use of the VOLCANO mark when it registered each of the disputed domain names. It is apparent that it did so for its own commercial purposes and therefore the Panel finds that the Respondent registered each of the disputed domain names in bad faith.
Moreover, the circumstances described above together indicate that the Respondent has sought to confuse Internet users into thinking that its business is associated with the Complainant when the Respondent is actually offering online casino services for its own commercial gain. This constitutes bad faith use of the disputed domain names under paragraph 4(b)(iv) of the Policy.
It follows that the Panel finds that each of the disputed domain names have been both registered and used in bad faith and that the Complaint succeeds under this element of the Policy. 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 names , and be transferred to the Complainant.
Piotr Nowaczyk
Sole Panelist
Date: March 22, 2017
Full & Egal Universal Law Academy