The Complainants are Ritzio Purchase Limited of Nicosia, Cyprus, Dareos Inc. of Ajeltake Island, Majuro, Republic of Marshall Islands and Dareos Ltd. of Nicosia, Cyprus, represented by Mapa Trademarks SL, Spain.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“US”) / Moniker Privacy Services of Fort Lauderdale, Florida, US / Natalia Zelenina of Kiev, Ukraine. 2. The Domain Names and Registrars
The disputed domain names , and are registered with Key-Systems GmbH dba . The domain name is registered with GoD, LLC. The domain names , , , , and are registered with Moniker Online Services, LLC 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2018. On April 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 9 and April 10, 2018, the Registrars transmitted by email to the Center their 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 the Complainant on April 18, 2018, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 19, 2018.
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 the Respondent of the Complaint, and the proceedings commenced on April 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2018.
The Center appointed Evan D. Brown as the sole panelist in this matter on June 5, 2018. 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 following facts, relevant to the Panel’s determination, are set forth in the Complaint and are not disputed by the Respondent.
The Complainant (such term is used to refer to the three Complainants Ritzio Purchase Limited, Dareos, Inc. and Dareos Ltd. in this consolidated case - see Section 6.A. below) provides products relating to gambling. The Complainant has used variations of the words Vulcan, Vulkan, Volcano and the Russian translation for those words (“Вулкан”) continuously since 1992 for gaming, casino and entertainment products and services. The Complainant owns several trademark registrations in numerous countries for such marks, including, for example:
VULKAN (Russian Federation) No. 353692 (Registered June 25, 2008)
VULKAN (and Design) (Germany) No. 302008017149 (Registered February 24, 2009)
The Respondent (such term is used to refer to the various Respondents in this consolidated case - see Section 6.A. below) registered each of the disputed domain names on the dates set forth as follows:
- November 5, 2013
- March 30, 2016
- March 30, 2016
- February 3, 2016
m - July 25, 2014
- April 8, 2015
- October 30, 2017
- September 3, 2015
- September 3, 2015
- March 24, 2017
The Respondent is accused of, among other things, (1) using the disputed domain names to establish identical websites that offer the same services the Complainant provides and that mimic the look and feel of the Complainant’s gaming clubs, and (2) making intentional misrepresentations in the descriptions of such websites to lead users to believe that such websites are directly connected to or affiliated with the Complainant’s gaming clubs. The Complainant has never authorized the Respondent to use the Complainant’s marks in the disputed domain names and the Respondent has not been commonly known by the disputed domain names. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
All three of these elements have been met in this case. A. Preliminary Issues - Consolidation
The Complainants request the Panel hear the present dispute – brought by three complainants (referred to herein collectively as “the Complainant”) against two respondents (referred to herein collectively as “the Respondent”) – as a consolidated, “unitary” complaint. The Panel grants the request.
Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” Paragraph 10(c) of the Rules provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with due expedition.” (I) Consolidation of Respondents
Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarizes the consensus view of UDRP panels on the consolidation of multiple respondents, in part, follows:
“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”
The Complainant asserts, among other things, that the Respondents should be treated as one respondent in this proceeding, as the Respondents appear to be the same person (Zelenina Natalia); the Respondents have the same email address according to the WhoIs of the disputed domain names, and the disputed domain names resolved to identical websites. The Panel accepts these arguments in favor of consolidation and grants the request to consolidate. (II) Consolidation of Complainants
Section 4.11.1 of the WIPO Overview 3.0 summarizes the consensus view of UDRP panels on the consolidation of multiple complainants, in part, as follows:
“In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.”
The Complainants assert they are related corporate entities and have a common legal interest sufficient to justify consolidation. There is no reason to require each of them to submit an almost identical complaint against the Respondents with nearly identical facts, legal arguments and requested relief. Moreover, the Respondents will not suffer any prejudice, and consolidation will not affect the Respondents rights in responding to the Complaint.
The Panel accepts these arguments in favor of consolidation and grants the request to consolidate. B. Identical or Confusingly Similar
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of various registered marks including VULCAN, VULKAN, VOLCANO, and the Russian equivalent of same, as noted above.
Each of the disputed domain names is confusingly similar to a mark in which the Complainant has rights. The inclusion of the number “24” to the disputed domain names does not create any basis on which the disputed domain names may be meaningfully distinguished from the Complainant’s marks. The inclusion of the word “casino” in one of the disputed domain names adds to the confusing similarity, given the nature of the Complainant’s services (comprised of gambling-related services). And though the disputed domain name does not verbatim match any of the Complainant’s marks, the phonetic significance of the letters “vlk” in relation to the “Vulkan” trademarks owned by the Complainant, together with the nature of the services provided at the disputed domain name’s website, creates confusing similarity.
Accordingly, the Complainant has succeeded on this first element of the Policy. C. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by assessing whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of production demonstrating rights or legitimate interests in respect of the disputed domain names shifts to the Respondent.
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. By failing to respond to the Complaint, the Respondent did not overcome its burden of production demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent’s favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, there are several indicators concerning the Respondent’s lack of rights or legitimate interests. The Respondent is not commonly known by the disputed domain names, nor is there any evidence in the record showing the Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute.
Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain names. D. Registered and Used in Bad Faith
The Policy requires the Complainant to establish that the disputed domain names were registered and are being used in bad faith. Based on the available record, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith. The presence of the words “volcano”, “vulcan”, “vulkan” and “vlk” in the disputed domain names, reinforces the likelihood of confusion with the Complainant’s trademarks. Using the disputed domain names to establish websites that offer services identical to those provided by the Complainant, and allegedly using those sites to mimic the identity of the Complainant, are strong examples of bad faith under 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
be transferred to the Complainant.
Evan D. Brown
Sole Panelist
Date: June 25, 2018
Full & Egal Universal Law Academy