The Complainants are Dareos Ltd., Cyprus, and Dareos Inc., Marshall Islands (hereinafter collectively referred to as the “Complainants”), represented by Mapa Trademarks SL, Spain.
The Respondents are Denis Belov, Asocial Games Ltd., Belize; Private Whois, Global Domain Privacy Services Inc., Panama / Andrey Daviduk, Germany; Global Domain Privacy Services Inc., Panama / Natalya Pladzidina, Russian Federation (“Russia”); Private Whois, Global Domain Privacy Services Inc., Panama / Alexander Strunin, Russia; Global Domain Privacy Services Inc., Panama / Maria Hanina, Russia; Global Domain Privacy Services Inc., Panama / Svetlana Sboychikova, Russia; Private Whois, Global Domain Privacy Services Inc., Panama / Anastasia Voloshina, Russia; and, ????????? ????????, Russia (hereinafter collectively referred to as the “Respondents”). 2. The Domain Names and Registrars
The disputed domain name The disputed domain names The disputed domain names The aforementioned disputed domain names are hereinafter collectively referred to as the “Disputed Domain Names”. The First Registrar, the Second Registrar, and the Third Registrar, are collectively referred to as the “Registrars”. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2021. On July 7, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On July 8, 2021, the First and Second Registrars each transmitted by email to the Center their verification responses disclosing the registrants and contact information for the Disputed Domain Names, which differed from the named Respondents and contact information in the Complaint. On July 10, 2021, the Third Registrar transmitted by email to the Center its verification response confirming that the Respondent Denis Belov is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainants on July 12, 2021, providing the registrants and contact information disclosed by the Registrars, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on July 15, 2021. 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 July 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 25, 2021. The Center appointed Lynda M. Braun as the sole panelist in this matter on September 3, 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 The Complainants are two affiliated companies sharing the same company name. The Complainants are engaged in the provision of gaming, casino, and entertainment products and services. The Complainants are the owners of numerous trademarks for VULKAN and its Cyrillic-script equivalent ВУЛКАН (translated as “vulcan” or “volcano”), as well as VOLCANO, and a figurative “V” trademark that they use in connection with their gaming, casino, and entertainment products and services. The previous trademark owner, Ritzio Purchase Limited (“Ritzio”), continuously used the trademarks since at least as early as 1992 — long before the Respondents’ registration of the Disputed Domain Names. The Complainants purchased the trademarks from Ritzio, and currently own numerous registered trademarks, including, but not limited to: - International Trademark Registration No. 984297, VULKAN, registered on August 11, 2008, designating Belarus, Croatia, the European Union, Kazakhstan, Serbia, and Ukraine; - Russian Federation Trademark Registration No. 342290, ВУЛКАН, registered on January 1, 2008; - International Trademark Registration No. 989103, VOLCANO, registered on August 11, 2008, designating Belarus, Croatia, the European Union, Kazakhstan, Serbia, and Ukraine; and - International Trademark Registration No. 949162, , registered on January 26, 2007, designating Belarus, Estonia, Kazakhstan, Latvia, Lithuania, and Ukraine. The aforementioned trademarks will hereinafter collectively be referred to as the “VULKAN Mark”. The present Complaint involves 20 Disputed Domain Names registered to multiple respondents, all of which were registered between December 12, 2016, and February 17, 2021, as can be seen below: The Respondents are composed of various individuals as well as numerous domain name privacy services. Some of the Respondents have already been subject to previous UDRP decisions, decided in favor of the Complainants, in which the majority of the domain names in those proceedings were transferred to the Complainants. In this case, the Disputed Domain Names resolve directly to or redirect to websites which offer online gambling and casino services, and prominently display the Complainants’ VULKAN Mark. Additionally, all resolving websites have a common link named “affiliate program”, which directs to a website at “www.perestroika.team”, and which is designed in a similar way as the websites linked to the Disputed Domain Names, also prominently using the Complainants’ VULKAN Mark. Further, as indicated in the Complainant, the designs of the resolving websites are identical to those in previous UDRP proceedings in which the Complainants prevailed. 5. Parties’ Contentions A. Complainants The following are the Complainants’ contentions: - the Disputed Domain Names are confusingly similar to the Complainants’ trademark; The Complainants seek the transfer of the Disputed Domain Names from the Respondents to the Complainants in accordance with paragraph 4(i) of the Policy. B. Respondents The Respondents did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1 Procedural Issues A. Consolidation of Multiple Complainants Pursuant to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11, the consolidation of multiple complainants filing a joint complaint against one or more respondents is subject to the discretion of the appointed panel. In assessing whether a complaint filed by multiple complainants may be brought against one or more respondents, the appointed panel should consider 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. Keeping this in mind, the Panel notes that both Complainants in the present administrative proceeding are affiliated and members of the same company group. Additionally, their Complaint is based on the same set of facts. In the present case, the Panel notes that both Complainant companies are the owners of trademark registrations for the VULKAN, ВУЛКАН, VOLCANO, and figurative “V” trademarks. As noted in greater detail below, the Respondent appears to have engaged in conduct targeting trademarks held by both Complainant companies. As such, both Complainant companies have a specific common grievance against the Respondent. The Panel is not aware of any circumstances that would create prejudice to the Respondents by allowing the Complaint filed by multiple Complainants to proceed. Therefore, the Panel considers that it is fair and equitable under the circumstances of the case to permit the consolidation, as both Complainants are not only affiliated companies with the same company name, but also have common interests. Consequently, the Panel allows the Complainants to proceed jointly with their Complaint. B. Consolidation of Multiple Respondents Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. Where a complaint is filed against multiple respondents, UDRP 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. See WIPO Overview 3.0, section 4.11.2. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281. The Complainants have highlighted several factors that support the inference that the Disputed Domain Names are subject to common control. Notably, all of the Disputed Domain Names either resolve or redirect to websites with similar content, targeting the Complainants’ VULKAN Mark; all of the websites to which the Disputed Domain Names resolve or redirect have the same contact phone number, together with the same or similar contact email addresses; the “about us” pages of the websites to which the Disputed Domain Names resolve or redirect all make reference to the same company; and the language of the websites to which the Disputed Domain Names resolve or redirect is the same. None of the Respondents has come forward with any assertions or evidence that would otherwise support a finding that the Disputed Domain Names are not subject to common control. In light of the above, and in the interests of procedural efficiency, the Panel considers it appropriate to accept the Complainants’ request for consolidation of the Complaint against the multiple Respondents. The Panel concludes that that the Respondents must act collaboratively and, thus, accepts that all Disputed Domain Names are under common control. The Panel is also convinced that in the present case a consolidation of the Respondents is procedurally efficient, fair, and reasonable to all Parties. 6.2. Substantive Issues In order for the Complainants to prevail and have the Disputed Domain Names transferred to the Complainants, the Complainants must prove the following (Policy, paragraph 4(a)(i-iii)): (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) the Respondents have 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. A. Identical or Confusingly Similar This element consists of two parts: first, do the Complainants have rights in a relevant trademark or trademarks and, second, are the Disputed Domain Names identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Names are confusingly similar to the VULKAN Mark as set forth below. The Panel concludes that the Complainants have established rights in the VULKAN Mark based on their many years of use plus their registered trademarks in numerous jurisdictions worldwide, including in the Russian Federation, where some of the Respondents are apparently located. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondents have not rebutted this presumption, and therefore the Panel finds that the Complainants have rights in the VULKAN Mark. The Disputed Domain Names It is well established that a domain name that wholly incorporates a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name may be confusingly similar to that trademark for purposes of the Policy despite the addition of another term. As stated in section 1.8 of 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”. For example, numerous UDRP decisions have reiterated that the addition of a dictionary or descriptive term – or a common abbreviation thereof – to a domain name does not prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; and Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. Further, the addition of the geographic term “russia” to the Complainant’s VULKAN Mark does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8; see also Gannett Co., Inc. v. Henry Chan,WIPO Case No. D2004-0117 (a domain name incorporating a well-known trademark combined with a geographically descriptive term is confusingly similar to the trademark); Inter-IKEA Systems B.V. v. Hoon Huh,WIPO Case No. D2000-0438 (the addition of the term “korea” in Moreover, it is well established that a disputed domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a hyphen. The presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Siew,WIPO Case No. D2004-0656. Regarding the Disputed Domain Name Finally, the addition of a gTLD such as “.com”, “.club” or “.cash” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Panel concludes that the Disputed Domain Names are confusingly similar to the Complainants’ VULKAN Mark. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainants. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. There is no evidence in the record suggesting that the Respondents have rights or legitimate interests in the Disputed Domain Names. The Complainants have not authorized, licensed, or otherwise permitted the Respondents to use the Complainants’ VULKAN Mark. The Complainants do not have any business relationship with the Respondents, nor are the Respondents making a legitimate noncommercial or fair use of the Disputed Domain Names. Based on the use made of the Disputed Domain Name to resolve to websites offering gaming, casino, and entertainment products and services identical to those of the Complainants’, and to prominently display the Complainants’ VULKAN Mark on those websites, the Panel finds that the Respondents are not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Names. There is also no evidence that the Respondents are commonly known by the Disputed Domain Names or by any names similar to them, nor any evidence that the Respondents were making demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services. See Policy, paragraph 4(c). Finally, the composition of the Disputed Domain Name, comprising the VULKAN Mark (or abbreviations or misspelled variations thereof) preceded or followed by a dictionary term joined with a hyphen, carries a risk of implied affiliation and cannot constitute fair use here, as it effectively suggests sponsorship or endorsement by the Complainants. See WIPO Overview 3.0, section 2.5.1. In this case, the Panel finds that the Complainants have made out a prima facie case that the Respondents have no rights or legitimate interests in the Disputed Domain Names. The Respondents have not submitted any substantive arguments or evidence to rebut the Complainants’ prima facie case. As such, the Panel determines that the Respondents do not have rights or legitimate interests in the Disputed Domain Names. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainants. C. Registered and Used in Bad Faith This Panel finds that, based on the record, the Complainants have demonstrated the existence of the Respondents’ bad faith pursuant to paragraph 4(b) of the Policy as set forth below. First, based on the circumstances here, the Panel concludes that the Respondents registered and are using the Disputed Domain Names in bad faith in an attempt to attract Internet users to the Respondents’ gaming websites by creating a likelihood of confusion with the Complainants’ VULKAN Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Names. The Respondents’ registration and use of the Disputed Domain Names indicate that such registration and use has been done for the specific purpose of trading on and targeting the name and reputation of the Complainants and their VULKAN Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”). The Respondents appear to be passing off their gambling websites as being from the Complainants; they even copied the design elements of the Complainants’ VULKAN Mark on their websites. These websites will inevitably confuse consumers into believing that these websites are associated with the Complainants. See WIPO Overview 3.0, sections 3.1.3 and 3.1.4. The Panel further notes that at least one of the named registrants of the Disputed Domain Names, Denis Belov, has been a named respondent in a number of prior UDRP cases filed by the Complainants involving similarly-composed domain names.1 Therefore, the Panel finds that the Respondents have engaged in an abusive pattern of domain name registration targeting the Complainants. Such conduct has been held to constitute bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds that the Respondents’ pattern of registering such domain names is further evidence of bad faith registration and use pursuant to paragraph 4(b)(ii) of the Policy. See, e.g., Facebook, Inc., Instagram, LLC, WhatsApp Inc., Facebook Technologies, LLC v. Jurgen Neeme, hello@thedomain.io and Jay Neeme,WIPO Case No. D2019-1582. In addition, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Finally, the Complainants and their predecessor have promoted their gaming, casino, and entertainment services using the VULKAN Mark for many years, long before the Respondents’ registration of the Disputed Domain Names. It is therefore implausible that the Respondents were not aware of the VULKAN Mark when they registered the Disputed Domain Names, particularly in light of the previous UDRP proceedings referenced above. Thus, the Panel finds that the Respondents had actual knowledge of the VULKAN Mark and targeted the Complainants when they registered the Disputed Domain Names, demonstrating the Respondents’ bad faith. Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainants. 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 Lynda M. Braun 1 See, e.g., Ritzio Purchase Limited v. Domain Admin, Privacy Protection Service Inc d/b/a PrivacyProtect.org / Denis Belov,WIPO Case No. D2016-2244; Ritzio Purchase Limited v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Denis Belov, Asocial Games Ltd. / Ivenkov Vitaly,WIPO Case No. D2017-1294; Dareos LTD, Dareos Inc., Ritzio Purchase Limited v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Denis Belov, Asocial Games Ltd. and Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Ivenkov Vitaly,WIPO Case No. D2019-1304; and Dareos LTD., Dareos INC. v. Denis Belov, Asocial Games Ltd. / Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Registration Private, Domains By Proxy, LLC / Анастасия Волошина / Алексей Харитонов,WIPO Case No. D2020-0986.
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
- the Disputed Domain Names were registered and are being used in bad faith.
Sole Panelist
Date: September 16, 2021
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