The Complainants are DAREOS Ltd, Cyprus, and DAREOS Inc., Marshall Islands, represented by Mapa Trademarks SL, Spain.
The Respondent is Makar Petrenko, Russian Federation.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2021. On September 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 16, 2021, 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 the Complainant on September 20, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 23, 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 Respondent of the Complaint, and the proceedings commenced on October 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2021.
The Center appointed William R. Towns as the sole panelist in this matter on December 10, 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 BackgroundThe Complainants are Dareos Ltd. and Dareos Inc. The Complainants since as early as 1992 have provided gaming, casino, and entertainment products and services under the VULKAN mark. The Complainant has secured a number of International Trademark registrations for its VULKAN mark in numerous countries around the world, including among the following:
- International Trademark Registration for VULKAN, Reg. No. 984297, registered August. 11, 2008;
- International Trademark Registration for BУЛКАН & Design, Reg. No. 977713, registered August 12, 2008;
- European Union Trade Mark (“EUTM”) Registration for ВУЛКАН & Design, Reg. No. 014193544, registered September 23, 2015.
The Respondent registered the disputed domain names
The Complainant submits that the disputed domain names
The Complainant represents that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. The Complainant maintains that the Respondent is not a licensee of the Complainant, and has neither been authorized or otherwise permitted to use the Complainant’s VULKAN marks. The Complainant emphasizes that it has provided extensive evidence of rights in the VULKAN marks, which had been in use by the Complainant for more than 20 years prior to the Respondent’s registration of the disputed domain names in October 2020. The Complainant submits the Respondent acquired the disputed domain names solely to create a likelihood of confusion and attract Internet users to the Respondent’s websites for commercial gain.
The Complainant asserts that the Respondent has neither used nor made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The Complainant remarks that the Respondent hides itself from the public and when registering the disputed domain names utilized a privacy service to conceal its identity. The Complainant is adamant that the Respondent is not making a legitimate noncommercial or other fair use of the disputed domain names and reiterates that the Respondent has registered the disputed domain names in order to impersonate the Complainant.
The Complainant concludes that the Respondent registered and is using the disputed domain names in bad faith. The Complainant considers it clear from the record that the Respondent was fully aware of the Complainant’s VULKAN marks when registering the disputed domain names. The Complainant further submits that the Respondent has used the disputed domain names wrongfully in an attempt to pass itself off as a fully functional online casino operated either by the Complainant or with the Complainant’s consent.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Preliminary Issues A. Preliminary Issue: Consolidation of Multiple Domain Name DisputesParagraph 10(e) of the UDRP Rules grants the panel power to consolidate multiple domain name disputes. Paragraph 3(c) of the UDRP 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.
The Complainant has requested that the disputed domain names registered by the Respondent and identified in the Complaint be consolidated in a single administrative proceeding. Consolidation of multiple domain names in a single administrative proceeding is appropriate under the Policy and Rules where the domain names are subject to common control, and consolidation is procedurally efficient and fair and equitable to all parties. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.11.2, and cases cited therein.
Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes, and 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. UDRP panels have considered a range of factors typically present in one or more combinations as useful to determining whether such consolidation is appropriate, taking into account similarities in the registrants’ contact information, the content or layout of websites corresponding to the disputed domain names, naming patterns in the disputed domain names, and evidence of respondent affiliation with respect to the ability to control the disputed domain names or other arguments made by the complainant.
The facts in the instant case strongly suggest that the disputed domain names have been subject to common control by the Respondent. The disputed domain names were registered by the Respondent within a narrow time frame of one week, and the disputed domain names reflect substantially similar contact information. Moreover, the Respondent’s naming patterns as reflected in the disputed domain names strongly suggest an affiliation or connection with the Complainant and the Complainant’s VULKAN mark. Accordingly, the Panel taking into account the Respondent’s registration and use of the disputed domain names concludes that consolidation of the disputed domain names is procedurally efficient and would be fair and equitable to all parties.
B. Preliminary Issue: Consolidation of Multiple ComplainantsAs noted above, the Complainant in this administrative proceeding was jointly filed by Dareos Ltd. and Dareos Inc. As described in WIPO Overview 3.0, section 4.11.1, when assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look to see whether the complainants have a specific common grievance against the respondent, and whether in view of the attendant circumstances consolidation would be equitable and procedurally efficient. While neither Complainant has expressly articulated the legal relationship between these two entities, the Panel notes the Complainants’ claim of a “common legal and business interest” in the VULKAN mark and recognizes that previous decisions under the Policy have allowed consolidation of the same two Complainants in similar proceedings. See, e.g., Dareos LTD., and Dareos INC. v. Pavel Balabanov et al.,WIPO Case No. D2020-0133; Dareos LTD, Dareos Inc., Ritzio Purchase Limited v. Domain Admin,WIPO Case No. D2019-1304; and Dareos Ltd, Dareos Inc., Ritzio Purchase Limited v. Moniker Privacy Services et al.,WIPO Case No. D2019-0533. Accordingly, the Complainant concludes that consolidation of the disputed domain names is procedurally efficient and would be fair and equitable to all parties.
7. Discussion and Findings A. Scope of the PolicyThe Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
B. Identical or Confusingly SimilarThe Panel finds that the disputed domain names, are confusingly similar to the Complainant’s VULKAN mark, in which the Complainant has established rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement. The threshold inquiry under the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain names.
Applying this comparison, The Complainant’s VULKAN mark is recognizable in each of the disputed domain names. The first element test typically involves 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. Applying this comparison, the Complainant’s VULKAN mark is recognizable. The Respondent’s inclusion in the disputed domain names
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate InterestsAs noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s VULKAN mark. Regardless, the record reflects that the Respondent has registered multiple domain names appropriating the Complainant’s mark, which the Respondent is prominently displaying on his websites.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the 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 has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all supported, reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.
The record is convincing that the Respondent was aware of the Complainant and had the Complainant’s VULKAN mark firmly in mind when registering the disputed domain names. In the absence of any explanation by the Respondent, the Panel considers that the Respondent in all likelihood registered the disputed domain names with the aim of exploiting and profiting from the Complainant’s VULKAN mark.
Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services, and further finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. Rather, the Respondent is using the disputed domain names to resolve to websites that falsely suggest an affiliation or association with the Complainant, which is not the case. There is no indication in the record that the Respondent ever has been commonly known by any of the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the 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; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Respondent clearly had the Complainant’s distinctive VULKAN mark firmly in mind when registering multiple disputed domain names, each of which are confusingly similar to the Complainant’s mark. The Respondent has used the disputed domain names to create a likelihood of confusion with the Complainant’s mark and divert Internet consumers to the Respondent’s gaming and casino websites. The Panel thus finds that the Respondent has registered and is using the disputed domain names in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
8. DecisionFor 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,
William R. Towns
Sole Panelist
Date: December 27, 2021
1 See WIPO Overview 3.0, section 1.7.
2 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
3 Id.
4 See WIPO Overview 3.0, section 1.9 and cases cited therein. A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark. See also WIPO Overview 3.0, section 1.8 and cases cited therein. The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
5 See WIPO Overview 3.0, section 1.7 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
6 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.
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