Complainants are Dareos Ltd., Cyprus, and Dareos Inc., the Marshall Islands, represented by Mapa Trademarks SL, Spain.1
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Irina Zenenkova, DevLock, Kazakhstan. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2020. On July 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 1, 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 Complainants on July 2, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on July 6, 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 July 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 28, 2020. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on August 3, 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. Factual Background Complainants have continuously used the Вулкан2 , Вулкан & Design, and VULKAN trademarks (“VULKAN Marks” or “Complainants’ Marks”) since at least September 2002, in connection with the provision of gaming, casino and entertainment products and services. Complainants own various international trademark registrations for their VULKAN Marks that designate Kazakhstan, Respondent’s purported domicile, including International Registration numbers 791038 (registered on September 3, 2002), 984297 (registered on August 11, 2008), and 992196 (registered on October 17, 2008). The disputed domain names Respondent has also been forced to transfer or cancel at least 75 domain names corresponding to Complainants’ VULKAN marks in prior UDRP proceedings. Ritzio Purchase Limited / Dareos Inc. / Dareos Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / Irina Zenenkova, DevLock,WIPO Case No. D2018-2151; Dareos Ltd, Dareos Inc, Ritzio Purchase Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Nikolay Korobov / Irina Zenenkova,WIPO Case No. D2018-2736; Dareos Ltd., Dareos Inc., and Ritzio Purchase Limited v. Irina Zenenkova and Dimitri Chikovani,WIPO Case No. D2019-0028. 5. Parties’ Contentions A. Complainants Complainants contend that the disputed domain names are confusingly similar to their VULKAN trademark because they either completely incorporate the VULKAN trademark or utilize acronyms or abbreviations that, taking into consideration the content of those disputed domain names, refer specifically to the VULKAN mark. Complainants argue that the addition of the terms “prestige”, “prestig”, “casino”, and various numbers does not mitigate the confusing similarity between the disputed domain names and Complainants’ Marks. Complainants also allege that Respondent is not commonly known by the disputed domain names, is not associated or affiliated with Complainants in any way, and was never licensed or authorized to use Complainants’ Marks. Complainants also argue Respondent is not making a legitimate noncommercial or fair use of the disputed domain names since they falsely suggest an affiliation with Complainants and are intended to divert Internet users seeking Complainants’ websites for Respondent’s commercial gain. Moreover, according to Complainants, Respondent’s intent to divert Internet users using Complainants’ Marks cannot be considered a bona fide offering of goods and services. Lastly, Complainants argue that Respondent registered and used the disputed domain names in bad faith. According to Complainants, Respondent must have had actual knowledge of Complainants’ rights in the VULKAN mark because Complainants registered and were using the mark well before the disputed domain names were registered. Furthermore, according to Complainants, Respondent’s copious use of Complainants’ Marks on the websites to which the disputed domain names resolve and Respondent’s inclusion of descriptions regarding the history and tradition associated with Complainants’ Marks on these websites shows that Respondent is falsely representing an association or affiliation with Complainants to intentionally attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion. B. Respondent Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainants must satisfy the Panel that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names were registered and are being used in bad faith. Furthermore, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3, states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainants’ contentions, the burden remains with Complainants to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally registered trademark registration constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainants have provided evidence that it has rights in the VULKAN trademark through its various national and international registrations. With Complainants’ rights in the VULKAN mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the Top-Level Domain (“TLD”) in which each domain name is registered) are identical or confusingly similar to Complainants’ Marks. The practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to “new generic Top-Lever Domains (‘gTLDs’)”); the ordinary meaning ascribed to a particular TLD would not necessarily impact assessment of the first element. WIPO Overview 3.0, section 1.11.2. 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. WIPO Overview. 3.0, section 1.8. A domain name that consists or is comprised of a translation or transliteration of a trademark will normally be found to be identical or confusingly similar to such trademark for purposes of standing under the Policy, where the trademark – or its variant – is incorporated into or otherwise recognizable, through such translation/transliteration, in the domain name. WIPO Overview 3.0, section 1.14. Even though the content of the website associated with a domain name is usually disregarded by UDRP panels when assessing confusing similarity under the first element, UDRP panels have taken note of such content to confirm confusing similarity where it appears prima facie that the respondent seeks to target a trademark through the disputed domain name. WIPO Overview 3.0, section 1.15; see also Bayerische Motoren Werke AG (“BMW”) v. Registration Private, Domains By Proxy, LLC / Armands Piebalgs,WIPO Case No. D2017-0156 (transferring Here, the disputed domain names The Panel also adopts the reasoning in a previous case against Respondent, Dareos Ltd, Dareos Inc, Ritzio Purchase Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Nikolay Korobov / Irina Zenenkova,WIPO Case No. D2018-2736, in finding that the disputed domain names As in these previous similar cases, here Complainants have provided evidence showing that the websites to which these disputed domain names resolve prominently display Complainants’ Вулкан & Design mark, refer to “Volcano Club” on multiple occasions, and provide a detailed description of a brand named “Vulcan Prestige”. Furthermore, Complainants provided evidence that these websites are identical to the websites associated with the domain names subject of the previous cases, where Respondent was the losing party. Therefore, it is clear that Respondent, through use of the letter “v” in this subset of the disputed domain names, considered together with copious use of Complainants’ Marks in the other disputed domain names and websites associated with all of the disputed domain names, continues to target Complainants’ VULKAN marks through this group of disputed domain names The Panel therefore finds that Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain names are confusingly similar to Complainants’ VULKAN trademark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name: (i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. Here, Complainants have alleged that Respondent has no rights or legitimate interests in the disputed domain names. Complainants have presented evidence showing that Respondent has used the disputed domain names to create a false association with Complainants by registering disputed domain names confusingly similar to Complainant’s VULKAN mark, and using them with the intent of misleadingly diverting consumers to Respondent’s own websites for Respondent’s commercial gain. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case, and in particular Complainant’s contention that it has never authorized, licensed or permitted Respondent to use any of Complainants’ Marks in any way. Furthermore, there is no evidence on record suggesting that Respondent is commonly known by any of the disputed domain names, or that Respondent is merely making a legitimate noncommercial or fair use of the disputed domain names. Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain names within the meaning of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b)(ii) of the Policy indicates that bad faith registration and use can be found if a respondent is shown to have registered a disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use of a domain name can be found when, by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, bad faith can be found in the registration and use of the disputed domain names. Respondent has clearly engaged in a pattern of registering and using disputed domain names that are variations of Complainants’ VULKAN mark, which is evidence of bad faith registration and use within the meaning of Policy paragraph 4(b)(ii). UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. WIPO Overview 3.0, section 3.1.2. Here, Complainant has cited three other UDRP proceedings where Respondent was found to have been engaging in bad faith conduct targeting Complainants’ VULKAN marks. These UDRP proceedings resulted in the transfer of over 75 domains that infringed on Complainant’s rights in the VULKAN trademark. This case involves an additional 19 disputed domain names registered by Respondent targeting Complainants’ VULKAN Mark. Therefore, it is clear that Respondent continues to engage in a pattern of bad faith registration and use of disputed domain names targeting Complainants’ Marks. Complainants provided ample evidence to show the widespread use and numerous registrations of the VULKAN mark that long predates Respondent’s registration of the disputed domain names. Complainants also provided evidence of various international trademark registrations it owns for its VULKAN Marks that designate Kazakhstan, Respondent’s purported domicile, which were in force at the moment the disputed domain names were registered. Therefore, Respondent was likely aware of the VULKAN trademark when she registered the disputed domain names, or knew or should have known that they were identical or confusingly similar to Complainants’ Marks. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Furthermore, all the disputed domain names resolve to websites making constant reference to a company called “Vulcan Prestige” and prominently using Complainants’ Marks. This is clear evidence that Respondent is engaging in a concerted effort to attract Internet users, for commercial gain, to Respondent’s websites, by creating a likelihood of confusion with the Complainants’ Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or of a product or service on Respondent’s websites. For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain names were in bad faith, pursuant to paragraphs 4(b)(ii) and (iv) 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 Brian J. Winterfeldt 1 Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. 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. Given that Complainants Dareos Ltd., and Dareos Inc. are both owners of various national and international trademark registrations for the marks on which the Complaint is based, and, thus, have common grievances against Respondent, the Panel permits the consolidation of their claims against Respondent in this proceeding. 2 The English translation of Вулкан is “Volcano” or “Vulcan”. The transliteration of this trademark in Latin characters is “Vulkan” since Cyrillic has no equivalent of the letter “C”, only “K”, for the “K” sound.
Sole Panelist
Date: August 18, 2020
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