The Complainant is Dareos LTD., and Dareos INC., Cyprus, (hereinafter referred to, jointly and severally, as “Complainant”) represented by Mapa Trademarks SL, Spain.
The Respondent is Pavel Balabanov, Bahamas, Vladimir Luchaninov, Isys, Ukraine, Oleksandr Zakharov, Ukraine, Irina Zayats, Russia, Evgeniy Lavryonov, Ukraine, Sergey Adamenko, Ukraine, Domain Admin, Whois Privacy Corp., Bahamas, Super Privacy Service LTD c/o Dynadot, United States of American (hereinafter referred to, jointly and severally, as “Respondent”.) 2. The Domain Names and Registrars
The disputed domain names:
1. are registered with Name.com, Inc. (Name.com LLC), Internet Domain Service BS Corp, NameSilo, LLC, Dynadot, LLC, and NameCheap, Inc. (hereinafter referred to, jointly and severally, as the “Registrar”). Hereinafter, the Panel, for ease of reference, may refer to the individual domains by the numbers assigned above. For example, a reference to DN1 is a reference to number one in the list, The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2020. On January 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 20, 2020, 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 January 24, 2020 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 January 29, 2020. 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 February 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 27, 2020. The Center appointed M. Scott Donahey as the sole panelist in this matter on March 11, 2020. 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. Request for Consolidation Complainant has requested consolidation of this matter pursuant to the Policy, paragraph 4. f, which provides in pertinent part: In the event of multiple disputes between [the domain name registrant] and a complainant, either you or the complainant may petition to consolidate the disputes before a single Administrative Panel. [The] Administrative Panel may consolidate before it any or such disputes in its sole discretion, provided that the disputes being consolidated are governed by this Policy or a later version of this Policy adopted by ICANN. Complainant cites the decision in F. Hoffmann-La Roche AG v. Aleksandr Bannikov, Ahmad Shefa/na, Alexander Sivkov, Amr Nayel/na, Amy Burke/na, Name Redacted/na, Name Redacted/PRIVATE, Andrew Jun/PRIVATE, Andrey Knish, Name Redacted/na, Angela Rubineau/na, Annette Stokes/na, Arihant Jain/na, Arnold Fong/na, Bennie Johnson/na, Bogdan Orlovskiy, Brenton Smith/na, Bruce Vanhouweling/PRIVATE, Cesar Veloso/na, Chada Ashok/PRIVATE, Daniel Engeberg/na, Daniel Reyes-Villa/PRIVATE, David Dunn/na, David Walls/PRIVATE, Davindra Jailall/na, Debora Meitz/na, Ded Lopytyt/na, Denis Kozenko, Dmitrij Shuvalov, Domain Manager/Deactivated Domains, Domain Manager/Moniker WIPO Disputed/Moniker Privacy Service, Donald Koehler/ PRIVATE, Dred Polk/na, Edward Prince/na, Evgeniy Foloev, Funty Aerok/na, Garrett Chumney/PRIVATE, George Nicoloff/na, Name Redacted/PRIVATE, Hamilton Platt/na, Hauld Timm/na, Heywood Gay/na, Hing Frank/PRIVATE, Irina Shcherban, Ivan/Ivan Pavlov, Ivan Mironov, James Benjamn/PRIVATE, Jill Haltigan/na, John Arnold/na, John Blumer/na, Joon-Seok Jeon/PRIVATE, Kelrko Roman/na, Ken Tashiro/PRIVATE, Kirill Ruzakov, Klaert Alrk/na, Krontak Ladik/Krontak Ladik Koroleva, Lars Van Gaal/ N/A, Name Redacted/PRIVATE, Mamatha Yeturu/na, Martha Severino/na, Name Redacted/na, Natalia Gerdt, Natalia Gerdt, Poloyanskyy Piter/na, Rajaa Zayoud/PRIVATE, Rajan Raj/na, Raymond Briski/na, Rety Mark/na, Richard Williams, Rlnty Rose/na, Rolando Rolandelli/na, Rolko Pouj/na, Ronald Treh/na, Rot Fweds/na, Route Kriss/Na, Rzeczycki Thomas/PRIVATE, Salma Tidda/na, Samma Rogozi/NA, Sara Relit/na, Shan Sivendra/na, Somel Kurter/na, Timur Fartew/na, Timur Hel/na, Tod Aria/na, Tommy Higher/na, Toor Rotmant/na, Name Redacted/na, Torry Solma/na, Tracy Johnston/PRIVATE, Tricia Etheridge/na, Trimer Strimer/na, Vera Guertler/PRIVATE, Vitaliy Romashchuk, vladimir kiskov, Vladimir Kiskov, Uta Beyer, NA/ Whois Agent, Web Domains By Proxy, Yegor Karpovich, Private Registration/WhoisGuardService.com,WIPO Case No. D2015-0066, which states in pertinent part: “As stated in prior UDRP decisions, a consolidation of multiple respondents in a single proceeding may be appropriate, under paragraph 3(c) and 10 (e) of the Rules where the circumstances of a given case indicate that common control is being exercised over the disputed domain names or the web sites to which the domain names resolve and the consolidation would be fair and equitable to all parties. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smit, Matthew Simmons, WIPO Case No. D2010-0281 and paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (‘WIPO Overview 2.0’).” Reviewing the complaint, the Panel finds that the following facts lead the Panel to conclude that consolidation would be appropriate in the present case: 1. All of the domain names in dispute resolve to identically designed websites, which have the same designs, graphics, layouts, texts, favicons, the same set of gambling games, contact information, and payment instruments. Complaint, Annex 23. 2. Each of the web site pages displays at the bottom of all pages the copyright notice: “2015-2019. Online Casino Russian Volcano.” There are only five Registrars for all of the disputed domain names. 3. The majority of the thirty-nine disputed domain names were registered on only five dates: Registration date: Domain Name Numbers: 9/1/ 2014 DN32, DN33 7/22/2015 DN16, DN22 8/17/2017 DN7, DN8, DN26, D27 2/21/2019 DN9, DN11, DN14 3/6/2019 DN4, DN10 Complaint, Annex 1. 4. The named registrants of the disputed domain names registered multiple names at different times. For example, one registrant identified by name and email address registered the following disputed domain names: DN1, DN2, DN3, DN4, DN5, DN6, DN7, DN9, DN10, DN11, DN12, DN13, DN14, DN15, DN16, DN17, DN19, DN20, DN21, DN22, DN27, DN28, DN29, DN30, DN35, DN36, DN37, DN38, and DN39. 5. Only five registrars were used to register all of the thirty-nine disputed domain names. Complaint, Annex 1. 6. All of the thirty-nine disputed domain names, with the exception of DN8, DN18, and DN31 redirect users to the same website to which DN34 resolves. At the time of the filing of the complaint all thirty-nine domain names redirected users to the website to which DN37 resolves. Complaint, Annex 31-A. 7. Although served with the complaint in this matter to the addresses given at registration, none of the registrants of the thirty-nine disputed domain names filed a response in this matter. Accordingly, the Panel finds that it would be fair and equitable to all parties to consolidate all the registrants of the disputed domain names enumerated into one proceeding 5. Factual Background Complainant is the owner of a number of trademarks and trademarks and designs collectively referred to as the VULKAN marks. All but two of the forty-six VULCAN marks were issued before any of the disputed domain names were registered. The registrations consist primarily of the English words “Vulcan” and “Volcano”, and the variation “Vulkan”, some featuring the stylized and enlarged letter “V”, and the foreign language equivalent in Italian, Russian, etc. Complaint, Annexes 3 through 17. Beginning at least as early as 1992, Complainant’s predecessor in interest was providing gaming, casino and entertainment products and services through the VULKAN mark. Currently, Complainant is one of the leading gaming operators in the Russian Federation, with more than 2,000 employees, more than 230 VULKAN branded gaming clubs and more than 6300 gaming machines throughout European Union. Complaint, Annexes 18 and 19. Through the use of the VULKAN mark it offers gambling services online. Complaint, Annexes 20 and 21. Respondent has created web sites to which the disputed domain names resolve have pictures of Complainant’s gaming halls and gambling clubs, some of which clearly display and incorporate Complainant’s stylized V trademark. Complaint, Annexes 17 and 18. Indeed virtually all of the web pages of Respondent’s websites contain clear indications that they are from Complainant’s casinos or gambling halls. Complaint, Annex 23. 6. Parties’ Contentions A. Complainant Complainant asserts that each of the disputed domain names is confusingly similar to one or more of Complainant’s registered trademarks. Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names. Finally, Complainant contends that Respondent has registered and is using the disputed domain names in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 7. Discussion and Findings “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the complainant must prove each of the following: (i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Vulcan is the mythical Roman god of fire and volcanoes. He is often depicted with a blacksmith’s hammer or at a forge. As pointed out by Complainant in the Complaint, the Cyrillic alphabet has no equivalent for the letter “c”, which can make both the sibilant “s” sound and the hard “k” sound. Thus, the Anglicized trademark in the Russian Federation and other countries that use the Cyrillic alphabet, VULKAN, is the functional equivalent of the English word “Vulcan”. Complainant has trademarked the transliterated word VULKAN. Complaint, Annex 3, Trademarks No. 6, 15, 17, 23, 26, 29, and 45. All are used in conjunction with Complainant’s online gambling games and with Complainant’s casinos and gaming clubs. Complainant has also combined the word and its Russian equivalent in stylized letters which suggest the creation of a spark which Complainant has trademarked. Complaint, Annex 3, Trademarks Nos. 8, 9, 10, 11, 12, 13, 16, 18, 19, 20, 21, 22, 24, 25, 28, 29, 30, 31, 33, 34, 40, 41, 42, 43, and 44. a. A number of the disputed domain names include the word “vulkan” or its English equivalent “vulcan.” Many of these names contain the word “russian” or shortened versions: “russ,” “rus” or “ru:” DN1, DN5, DN6, DN7, DN8, DN13, DN16, DN17, DN18, DN22, DN23, DN25, DN26, DN27, DN28, DN29, DN32, DN33, DN34, DN37, and DN39. The Panel finds that these disputed domain names are confusingly similar to Complainant’s trademark. b. Some of the disputed domain names that include shortened versions of “russian,” with “vulkan” also include an additional word such as “my,” “fun,” or “play.” DN2, DN3, DN9, DN11, DN12, and DN14. The Panel finds that these disputed domain names are confusingly similar to Complainant’s trademark. c. There is one domain name that consists of the shortened “ru” reference to the Russian Federation which includes a misspelling of “vulkan.” DN35 DN1 d. There is a final category that does not use either VULKAN or “vulcan”, but a three-letter version, “vlk”, that is suggestive of the trademarked term. However, the Panel treat these separately, for they do not contain Complainant’s trademark, although they could be found to suggest it. (i) Disputed domain names that redirect users to DN37, DN4, DN10, DN15, DN19, DN21, DN24, and DN30. Complaint, Annex 30. As DN37 has already been found to be confusingly similar to Complainant’s trademark, Disputed domain names which redirect users to a domain name that has been found to be confusingly similar to Complainant’s trademark are ipso facto confusingly similar. (ii) Disputed domain names that redirect users to DN35, DN20. DN35 has already been found to be confusingly similar to Complainant’s trademark. Therefore, I find DN20 to be confusingly similar to Complainant’s trademark. e. Regarding the three of the thirty-nine disputed domain names that are left, disputed domain name DN31 “In specific limited instances, while not a replacement as such for the typical side[by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding may support a finding of confusing similarity. * * * * * [P]anels 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.” In the present case all of the thirty-nine disputed domain names ultimately resolve to websites at which pictures of Complainant’s gaming halls and gambling platforms are displayed, and the web sites offer goods and services directly competing with those offered by Complainant. The web sites to which the thirty-nine disputed domain names all resolve to the identical web site that is trading off the Complainant’s reputation. The Panel has no doubt that Respondent believed that all of the thirty-nine disputed domain names were confusingly similar to Complainant’s trademark. Accordingly, the Panel finds that not only DN31, DN36, and DN 38, but all of the disputed domain names in the present case, are confusingly similar under this rubric. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith Respondent uses the disputed domain names to resolve to a gaming site at which pictures of Complainant’s physical gaming sites appear but has textual information that refer to the history and reputation of Complainant. In the web page section entitled “Story”, Respondent recounts the history of Complainant’s development of its gaming business and features “trademarks” that are almost identical to Complainant’s Russian trademark and design on every page. Complaint, Annex 24, 26, 27, 28, and 29. Respondent uses the disputed domain names, which names are confusingly similar to Complainant’s trademarks, to redirect users to Respondent’s website or to resolve to Respondent’s web site. Complaint, Annexes 30, 31, and 31-A. Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith. 8. 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 1. be transferred to Complainant. M. Scott Donahey
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Sole Panelist
Date: March 25, 2020
Full & Egal Universal Law Academy