Complainants are Dareos Ltd., Cyprus, and Dareos Inc., Marshall Islands, represented by Mapa Trademarks SL, Spain.
The Respondents are Super Privacy Service LTD c/o Dynadot, United States of America / Vladimir Petrov, Kazakhstan, and Marina Fedko, Kyrgyzstan. 2. The Domain Names and Registrars
The disputed domain names (“hereinafter “Disputed Domain Names”) The disputed domain name Register B.V., along with Dynadot, LLC, collectively hereinafter are referred to as the “Registrars”. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2021. On April 9, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the Disputed Domain Names. On April 10 and 12, 2021, the Registrars transmitted by emails to the Center their verification responses 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 Complainants on April 12, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on April 14, 2021, adding Vladimir Petrov and Marina Fedko as Respondents. 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 Respondents of the Complaint, and the proceedings commenced on April 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2021. Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 6, 2021. The Center appointed Lawrence K. Nodine as the sole panelist in this matter on May 14, 2021. 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 For more than 20 years, Complainants and its predecessors have offered casino and gambling services under the VULKAN brand. Complainants and their trademark licensee are prominent gaming operators. Complainants began their business in Russia, but have expanded to many other countries. Between 2006 and 2010, Complainants and their licensees had operating revenue was in excess of USD 5.5 billion. Complainants and their licensees have 2,000 employees, more than 230 VULKAN and/or ВУЛКАН1 branded gaming clubs, and more than 6,300 gaming machines deployed throughout Europe. A majority of the Disputed Domain Names include the word “vulcan” spelled with a “c” rather than a “k”, as used in Complainants’ VULKAN trademark. Respondents started registering the Disputed Domain Names in 2017, long after Complainants were established as a business. Respondents registered the Disputed Domain Names in three tranches. Four of the Disputed Domain Names were registered in 2017, ten more in 2018, nine more in 2019, and three more in 2020. All of the Disputed Domain Names are associated with (or redirect to) interactive and fully functional online commercial gaming and gambling websites. The websites are, with one exception, identical to each other in their graphic presentation and look and feel. 5. Parties’ Contentions A. Complainant Complainants contend that they own trademark rights in the word mark VULKAN, which they have registered in many countries, including Russia (Russian Federation Registration 353692; June 25, 2008), where the majority of Complainants’ customers reside, and also in the European Union, Croatia, Kazakhstan, Serbia, and Ukraine (WIPO Registration No. 984297; August 11, 2008). Both the Russian and WIPO registrations issued in 2008, well before Respondents started registering the Disputed Domain Names in 2017. Complainants also own rights in several stylized logo versions of the VULKAN mark, including: This stylized version2 is registered as a trademark in Russia (Russian Registration 216203; July 3, 2002) and the European Union (Registration 014193544; September 23, 2015), as well as other countries. Complainants contend that “vulcan” (with a “c” instead of a “k”) would be understood as the English transliteration of “vulkan” (with a “k”) because there is no “c” in the Cyrillic alphabet. Complainants further contend that Respondents do not prevent confusion by adding to the Disputed Domain Names the terms “mega” or “online” or diverse numerals. Complainants also allege that Respondents have no rights or legitimate interests in the Disputed Domain Names; that they are not licensees of Complainants; that they have not received any permission or consent to use Complainants’ trademark; and that Respondents are not commonly known by the trademark or Disputed Domain Names. Finally, Complainants contend that Respondents registered and use the Disputed Domain Names in bad faith, deliberately deceiving Internet users into believing that the Respondents are related to Complainants’ well known casinos and exploiting that confusion for commercial gain. B. Respondents The Respondents did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1 Preliminary Considerations A. Consolidation of Complainants As noted in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11, in assessing whether a complaint filed by multiple complainants may be brought against a single respondent, UDRP 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. In the present case, the Panel notes that both Complainants are the owners of trademark registrations for the VULKAN, ВУЛКАН, and stylized logo versions of the VULKAN mark. As noted in greater detail below, the Respondents appear to have engaged in conduct targeting trademarks held by both Complainants. As such, both Complainants have a specific common grievance against the Respondents. The Panel is not aware of any circumstances that would create prejudice to the Respondents by allowing the Complaint filed by both Complainants to proceed. The Panel accepts the Complainants’ request for consolidation of multiple Complainants. B. Consolidation of Respondents Complainants have requested consolidation pursuant to paragraphs 3(c) and 10(e) of the Rules. The Panel finds that consolidation is appropriate and so orders. The evidence indicates that common control is being exercised over the Disputed Domain Names. See WIPO Overview 3.0, sections 4.11.1 and 4.11.2. All (except one) of the Disputed Domain Names are registered to Respondent Vladimir Petrov. Moreover, all of the Disputed Domain Names share a common element – the word “vulcan” or “vulkan” – and this common element is alleged to infringe Complainant’s rights in its VULKAN trademark. Consequently, the factual and legal issues applicable to all of the Disputed Domain Names are essentially identical. The Panel therefore finds that consolidation is appropriate as to all of the Disputed Domain Names registered to Respondent Petrov. The Disputed Domain Name The Panel also notes that neither Respondent replied to the allegations made so there is clearly no prejudice. C. Identical or Confusingly Similar The Panel finds that Complainants have demonstrated rights in the VULKAN trademark by way of numerous trademark registrations around the world, including its Russian Federation Registration 361357 for VULKAN. The Disputed Domain Names incorporates the VULKAN mark in its entirety. The substitution of “c” for “k” in 25 of the 30 Disputed Domain Names does not prevent a finding of confusing similarity as “c” would be understood as the phonetic equivalent of the Cyrillic “k”. WIPO Overview 3.0, section 1.14 (transliterations are confusingly similar). Further, the other five Disputed Domain Names (i.e., Accordingly, the Complainants have satisfied paragraph 4(a)(i) of the Policy. D. Rights or Legitimate Interests Complainants have established a prima facie case that Respondents lack rights or legitimate interests in respect of the Disputed Domain Names, which Respondents have not rebutted. Complainants have not authorized or licensed Respondents’ use of the VULKAN mark in the Disputed Domain Names. There is no evidence of record showing that Respondents are commonly known by the Disputed Domain Names. Moreover, there is no evidence that Respondents are using the Disputed Domain Names in connection with a bona fide offering of goods or services. The Panel also incorporates here its findings below under the third element. Complainants have satisfied paragraph 4(a)(ii) of the Policy. E. Registered and Used in Bad Faith The Panel finds that Respondents registered and use the Disputed Doman Names in bad faith. Respondents were indisputably aware of Complainants and their trademark rights. The Disputed Domain Names were registered long after Complainants acquired and registered trademark rights. Respondents include exact reproductions of Complainants’ stylized version of the trademark on the “About” page of many of the associated websites. This egregious impersonation supports the Panel’s finding that Respondents’ were fully aware of Complainants’ rights when they registered the Disputed Domain Names. Respondents intent clearly was to attract, for commercial gain, Internet users to webpages associated with (or redirected from) the Disputed Domain Names by creating a likelihood of confusion with the Complainants’ trademark and deceiving Internet users, causing them to believe Respondents’ online gambling casinos were affiliated with Complainant. The Panel also notes a clear pattern of targeting Complainant by Respondents. The Panel finds bad faith use of the Disputed Domain Names. Complainants have satisfied paragraph 4(a)(iii) o 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 transfer to the Complainant of the following Disputed Domain Names: Lawrence K. Nodine 1 The Cyrillic Russian ВУЛКАН translates as “Vulcan” or “Volcano” in English. 2 The English translation of Вулкан is “Volcano” or “Vulcan”.
Sole Panelist
Date: May 31, 2021
Full & Egal Universal Law Academy