The Complainants are Dareos LTD., Dareos Inc. and Ritzio Purchase Limited, Cyprus, represented by Mapa Trademarks SL, Spain.
The Respondents are Domain Admin, Privacy Protect, LLC (PrivacyP) / Denis Belov, Asocial Games Ltd., Belize and Domain Admin, Privacy Protect, LLC (PrivacyP), Russian Federation and Ivenkov Vitaly, Russian Federation. 2. The Domain Names and Registrar
The disputed domain names , ,
, , , ,
, , , , , , , ,
, and 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 June 6, 2019. On June 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 8, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondents were listed as the registrant of the disputed domain names, , , , , , , , , , , , , , , and and providing the contact details and contact information for the disputed domain names. The Registrar disclosed 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 June 14, 2019 providing the registrant and contact information disclosed by the Registrar, and requesting the Complainants to submit an amendment to the Complaint, either by adding the Registrar-disclosed registrant as a formal Respondent and providing relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control; and/or by filing a separate complaint in respect of . The Complainants filed an amended Complaint on June 19, 2019.
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 Respondents of the Complaint, and the proceedings commenced on June 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 15, 2019.
The Center appointed Antony Gold as the sole panelist in this matter on July 23, 2019. 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 first Complainant, Ritzio Purchase Limited (“Rizio”), is a gaming and casino operator which was formed in or about 1992. It is active in a number of countries, although a large proportion of its users are located in Russia. It presently has over 2,000 employees and operates over 230 gambling clubs, which are branded as either VOLCANO, VULKAN, or Вулкан. This last word is in Cyrillic script, with the Roman script equivalent being “Vulkan” (or, possibly, “Vulcan” – see below). These essentially similar trading styles have been in continuous use since 1992.
The second and third Complainants, Dareos Ltd and Dareos Inc., (collectively “Dareos”) are business partners of Ritzio. They are the owners of a portfolio of trade marks which comprise or include the words VULKAN, VOLCANO, and Вулкан in a variety of word and figurative formats. These include;
- International trade mark, registration No. 984297, for VULKAN (word only), registered on August 11, 2008 in multiple classes;
- International trade mark, registration No. 989103, for VOLCANO registered on August 11, 2008 in multiple classes;
- Russian Federation trade mark registration No. 361357, for Вулкан (in stylized form), registered on October 7, 2008 in multiple classes.
- International trade mark registration No. 791038, for Вулкан, registered on September 3, 2002 in class 41. This is for a figurative trade mark in which the word Вулкан, is in a very stylized form.
The trade mark registrations initially owned by Ritzio have been transferred to Dareos and Ritzio is now a licensee of those marks.
The table at section 6B below provides the dates of registration by the Respondents of each of the disputed domain names. With the exception of the first and fifth disputed domain names, all the disputed domain names resolve to websites which offer paid-for gambling and associated services to Internet users and prominently feature the Complainants’ figurative trade mark for Вулкан. The website to which the first disputed domain name resolves is described below. Attempts to access the website to which the fifth disputed domain name resolves produce a notice stating that access to it is restricted. 5. Parties’ Contentions A. Complainant
The Complainants say that the disputed domain names are identical or confusingly similar to its VULKAN and Вулкан trade marks. All the disputed domain names, save for the seventh, eighth, tenth, and sixteenth, include the word element VULKAN or VULCAN, which, taking into account the lack of an equivalent to the letter “C” in the Cyrillic alphabet, is identical to its VULKAN trade marks. The remaining disputed domain names comprise either misspellings of the Complainants’ marks, that is “vylcans” or “vylcan”, or acronyms of them, namely “vlc” or “vlk”.
Each disputed domain name also incorporates additional elements, typically a generic term, such as “partner”, “vip”, “online”, or “casino”. The addition of these terms does not affect the confusing similarity between the disputed domain names and the Complainant’s trade marks. In fact, as these additional terms have some association with the Complainants’ business, they accentuate the possibility of confusion. Each of these disputed domain names misleads Internet users into believing that they are either owned by, or associated with, the Complainants.
The Complainants assert that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents are not licensees of the Complainants’ trade marks, nor have they received any permission or consent to use them, nor are they commonly known by the disputed domain names. Moreover, they have purposely hidden themselves from the public by using privacy services. The disputed domain names bear no relationship to any legitimate business of the Respondents nor have the Respondents shown any demonstrable preparations to use them in connection with a bona fide offering of goods or services. In addition, the Respondents’ use is neither fair nor noncommercial.
Lastly, the Complainants say that the disputed domain names were registered and are being used in bad faith. Given the widespread reputation and use of the Complainants’ marks, any use of the disputed domain names by the Respondents would constitute an infringement of the Complainants’ trade mark rights. The Respondents have acted in bad faith by registering domain names that incorporate the Complainants’ marks and using them in content in order to attract, for commercial gain, Internet users to the websites to which the names resolve by creating a likelihood of confusion with the Complainants’ trade marks. Such fraudulent activity is clearly in bad faith.
The Respondents are not only very well aware of the Complainants’ trade marks, but the content of the websites to which the disputed domain names resolve refers to the Complainants’ history and reputation and reinforces the impression of a connection with them. B. Respondent
The Respondents did not reply to the Complainants’ contentions. 6. Discussion and Findings Procedural Issue – consolidation of Complaints
Section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains that; “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”.
Rizio is a licensee of the trade marks owned by Dareos. Section 1.4 of the WIPO Overview 3.0 explains that; “A trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint”.
Having regard to the relationship between the Complainants and the fact that they have a common grievance against the Respondents and jointly complain about the same conduct, the Panel considers it equitable and appropriate to permit consolidation of the Complainants’ claims. Procedural Issue – consolidation of Respondents
The registrant of the first disputed domain name is Ivenkov Vitaly. The registrant of the remaining disputed domain names is Denis Belov, Asocial Games Ltd. The dates of registration are as follows;
No.
Domain name
Date of registration
1
(“the first disputed domain name”)
June 16, 2013
2
(“the second disputed domain name”)
March 14, 2017
3
(“the third disputed domain name”)
November 20, 2017
4
(“the fourth disputed domain name”)
August 9, 2017
5
(“the fifth disputed domain name”)
December 14, 2017
6
(“the sixth disputed domain name”)
November 20, 2017
7
(“the seventh disputed domain name”)
August 7, 2017
8
(“the eighth disputed domain name”)
July 5, 2017
9
(“the ninth disputed domain name”)
April 30, 2019
10
(“the tenth disputed domain name”)
April 12, 2018
11
(“the eleventh disputed domain name”)
December 12, 2018
12
(“the twelfth disputed domain name”)
December 13, 2018
13
(“the thirteenth disputed domain name”)
March 14, 2017
14
(“the fourteenth disputed domain name”)
December 12, 2016
15
(“the fifteenth disputed domain name”)
December 12, 2018
16
(“the sixteenth disputed domain name”)
July 26, 2017
17
(“the seventeenth disputed domain name”)
April 30, 2019
Whilst neither the Policy nor the Rules expressly provides for the consolidation of claims against multiple respondents into a single administrative proceeding, the principles applied by panels considering requests for consolidation are set out at paragraph 4.11.2 of the WIPO Overview 3.0. This explains that “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”. See also Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281.
Among the factors considered by panels in determining whether consolidation is appropriate, are similarities in or relevant aspects of (i) the registrants’ contact information (ii) the content or layout of websites corresponding to the disputed domain names, (iii) whether the registrants are targeting a specific sector), (iv) the relevant language/scripts of the disputed domain names.
The Complainants have provided screen prints of many, but not all, of the websites to which the disputed domain names resolve. Section 4.8 of the WIPO Overview 3.0 explains that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.
The Panel has accordingly visited the websites to which the disputed domain names resolve. With two exceptions, they resolve to gambling websites, in Cyrillic script, which are stylistically either very similar (and, in some cases, identical) to each other. The fifth disputed domain name does not presently resolve to an active website. The first disputed domain name (being the sole disputed domain name registered by Ivenkov Vitaly) resolves to a website which is both stylistically and functionally different from the rest. It was also registered some years earlier.
Nonetheless, there are strong indications that all the disputed domain names are under common control. First, they all show the same Registrar in the contact details and all, save for the twelfth disputed domain name, have had the details of the underlying registrant concealed by the same privacy service. Second, one of the purposes of the website to which the first disputed domain name resolves appears to be to solicit affiliates for the suite of websites operated by the Respondents. It also prominently features the Complainants’ figurative mark for Вулкан. Third, the Complainants have encountered the same two Respondents in other proceedings under the Policy, specifically Ritzio Purchase Limited v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyP / Denis Belov, Asocial Games Ltd. / Ivenkov Vitaly, WIPO Case No. D2017-1294 where they were also acting in concert.
The Panel is satisfied that the overall evidence points to all the disputed domain names being under common control and that it is procedurally efficient, as well as fair and equitable to all parties, for the Complainants’ case, in respect of all the disputed domain names, to be dealt with within a single Complaint. Substantive issues
Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainants prove each of the following three elements in order to succeed in their Complaint:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights;
(ii) the Respondents have no rights or legitimate interests with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
For the purpose of considering whether the disputed domain name is identical or similar to the Complainants’ trade marks, the generic Top-Level Domains (“gTLDs”) “.com”, “.net”, and “.org” are disregarded as these are technical requirements of registration.
The Complainants’ evidence of its many trade marks for VULKAN establish their trade mark rights in this word. For the purpose of considering whether the disputed domain names are confusingly similar or identical to this mark, Panel applies the test outlined at section 1.7 of the WIPO Overview 3.0, that is a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. With this in mind, the disputed domain names can be categorized as follows:
- the fifth disputed domain name contains the work “vulkan”. Subject to the discussion below on the additional content within each disputed domain name, this element is identical to the Complainants’ trade mark;
- the thirteenth disputed domain name contains the pluralization, “vulkans”. This is also confusingly similar to the Complainants’ mark;
- the first, second, third, sixth, ninth, eleventh, twelfth, fourteenth, fifteenth, and seventeenth disputed domain names each incorporate the word “vulcan”. As the Cyrillic alphabet does not have an equivalent to the letter “c”, “Вулкан” can equally be transcribed in Roman script as “vulcan” and this word is therefore also confusingly similar to the Complainants’ mark;
- the fourth disputed domain name contains the pluralization “vulcans” and is likewise confusingly similar;
- the seventh and eighth disputed domain names contain typosquat variations of this mark, namely “vylcans” and “vylcan” respectively. These would appear to be intentional misspellings of the Complainants’ trade mark and are therefore found to be confusingly similar to it (see section 1.9 of the WIPO Overview 3.0);
- the tenth and sixteenth disputed domain names include components which are not close approximations of the Complainant’s marks, namely “vlc” and “vlk”.
In circumstances where the similarity between a domain name and a complainant’s mark is, perhaps, borderline, but the overall circumstances suggest that the registrant had intended Internet users to make a connection between them, it can be of assistance to consider the website to which the domain name resolves in order to ascertain if that helps inform the decision. See the WIPO Overview 3.0, section 1.7, “panels have also found that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant”. See also Golden Goose S.p.A. v. Phillipp Fischer,WIPO Case No. D2017-1010.
These disputed domain names redirect to websites that promote a variety of games and prominently feature the Complainants’ figurative Вулкан trade mark. The Respondents evidently registered each of these disputed domain names because they believed they were confusingly similar to one or more of the Complainants’ trade marks. Accordingly, the “vlc” and “vlk” component of these disputed domain names are found to be confusingly similar to the Complainants’ VULKAN trade mark.
All the disputed domain names couple the Complainants’ mark with other words such as “win-lucky”, “online”, and “clubplay”. These do not serve to render these disputed domain names dissimilar to the Complainant’s trade marks. See section 1.8 of the WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Panel therefore finds that each of the disputed domain names is confusingly similar to a trade mark in which the Complainants have rights. B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name. These are, summarized very briefly:
(i) if the respondent has been using the domain name in connection with a genuine offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate non-commercial or fair use of the domain name.
Dealing with these circumstances in reverse order, paragraph 4(c)((iii) is inapplicable as the use of the disputed domain names is commercial in character. There is no evidence to suggest that the Respondents have been commonly known by the disputed domain names and so paragraph 4(c)(ii) is equally inapplicable.
So far as paragraph 4(c)(i) is concerned, it is clear from the evidence that the Respondents have not been using the disputed domain names in connection with a genuine offering of goods and services. The majority of the disputed domain names resolve to websites which masquerade as being operated by, or on behalf of the Complainants and therefore mislead Internet users into believing that the services offered on them are connected in some way to the Complainants. See at section 2.13.1 of the WIPO Overview 3.0; “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”. Using a website to solicit affiliates to point to the Respondents’ other websites (as per the website to which the first disputed domain name resolves) does not comprise a bona fide offering of goods and services, nor does posting a notice on a website stating that access to it is restricted (as per the fifth disputed domain name).
The Respondents have not attempted to challenge the Complainants’ assertions. The Panel accordingly finds that the Respondents have no rights or legitimate interests with respect to the disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances set out in paragraph 4(b)(iv) of the Policy are if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The use to which the Respondents have put the majority of disputed domain names falls squarely within these circumstances in that they point to websites which purport to be operated by, or with the authorisation of, the Complainants and to offer online gaming services. The belief of Internet users that they have found one of the Complainants’ websites will be reinforced because of the confusing similarity between the disputed domain names and the Complainant’s VULKAN trade mark. The addition of words such as “win-lucky”, “casino”, and “clubplay”, which are descriptive, albeit to varying degrees, of the services offered by the Complainants, accentuates the false impression of a connection with the Complainants. It is obvious from the number of disputed domain names registered by the Respondents as well as their involvement as Respondents in very similar proceedings brought by the Complainants under the Policy (see Ritzio Purchase Limited (supra) that this is intentional on their part.
The registration and use of the first domain name to solicit affiliates for the Respondents’ other websites falls broadly within the circumstance of bad faith and use set out at paragraph 4(b) of the Policy in that it has evidently been registered primarily for the purpose of disrupting the business of the Complainants. The passive holding by the Respondents of the fifth disputed domain name is also in bad faith (see section 3.3 of the WIPO Overview 3.0). In particular, the Respondents have not submitted a response or provided any evidence of actual or contemplated good faith use, they have sought to conceal their identity and it is not possible to conceive of a good faith use to which this disputed domain name could be put.
For these reasons, the Panel finds that all the disputed domain names have been 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 the disputed domain names, , , , , , , , , , , , , , , , , and , be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: August 6, 2019
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