The Complainants are Dareos Ltd, Cyprus, and Dareos Inc., Marshall Islands, represented by Mapa Trademarks SL, Spain.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Vladimir Petrov, Kazakhstan.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2021. On October 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 12, 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 October 13, 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 October 13, 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 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2021.
The Center appointed Kateryna Oliinyk as the sole panelist in this matter on November 23, 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 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 (hereinafter collectively the “VULKAN trademarks”) 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. Ritzio’s affiliated Ritzio International is a large international provider of gaming and entertainment services. Currently Ritzio International operates two hundred gaming clubs in the Western and Eastern Europe. Ritzio International is present in six (6) countries: Germany, Latvia, Belorussia, Romania, Croatia and Italy.
Since at least as early as 1992, the former trademark owner Ritzio Purchase Limited has been providing high-quality gaming, casino and entertainment products and services, including but not limited to the operation and management of gaming halls, the design, development, provision and maintenance of games of chance, including betting bingo and slot machines, the provision of interactive real-money games through a computer network, and other related products and services under the ВУЛКАН and VULKAN trademarks.
The Complainants purchased the VULKAN trademarks from Ritzio, and currently own numerous registered trademarks, including, but not limited to:
Trademark
Jurisdiction
Registration Number
Registration Date
VULKAN (word)
WIPO International Trademark (Russia origin, multiple country designations, including Kazakhstan)
984297
August 11, 2008
VOLCANO (word)
WIPO International Trademark (Russia origin, multiple country designations, including Kazakhstan)
989103
August 11, 2008
V (stylized, colour claimed)
WIPO International Trademark (Russia origin, multiple country designations)
949162
January 26, 2007
VULKAN (Figurative mark featuring the Russian word Вулкан in Cyrillic letters transliterated as “Vulkan” and translated as “vulcan” or “volcano” accompanied with the design element, colour claimed)
WIPO International Trademark (Russia origin, multiple country designations, including Kazakhstan)
791038
September 3, 2002
ВУЛКАН (Figurative mark in Cyrillic letters transliterated as “Vulkan” and translated as “vulcan” or “volcano” accompanied with the design element, colour claimed)
EUTM
014193544
September 23, 2015
The above-referenced trademarks are registered in the name of the Complainant Dareos Ltd. Still, the Complaint attaches trademark records showing that some national trademark registrations for the same marks are held by the Complainant Dareos Inc.
The present Complaint involves 26 disputed domain names registered by the Respondent within the time period 2018 – 2020, as can be seen below:
Disputed Doman Names
Registration Date
December 30, 2020
January 21, 2020
August 14, 2018
October 8, 2019
The Respondent has already been subject to a previous UDRP decision, decided in favour of the Complainants (see Dareos Ltd., Dareos Inc. v. Super Privacy Service LTD c/o Dynadot / Vladimir Petrov, Marina Fedko,WIPO Case No. D2021-1089).
The disputed domain names resolve directly to or redirect to websites which offer online gambling and casino services, and prominently display the Complainants’ VULKAN trademarks and using “V” or “B” (Cyrillic version of “v” and the first letter of the Cyrillic equivalent of the VULKAN trademarks) as favicons. The designs of the resolving websites under the disputed domain names imitating the Complainant’s word and design VULKAN trademarks, use a similar set of games. The Respondent controls the affiliate program Volcano Mega for online-casinos Vulkan located via the domain
The Complainants assert that the disputed domain names are all confusingly similar to its VULCAN trademarks, adding only the generic term “mega” combined with Arabic numerals, depending on the dominant name, like “85”, “88”, “90”, “231”, “232”, “234”, “237”, “238”, “240”, “19”, “20”, and “21”. The English translation of ВУЛКАН is “vulcano” or “vulcan”. The transliteration of this trademark in Latin letters is “vulkan” since Cyrillic has no equivalent of the letter “c,” only “k,” for the “k” sound. The Complainant claims that these additional elements of the disputed domain names shall be considered irrelevant under the Policy and do not affect the confusing similarity between the disputed domain names and the VULKAN trademarks.
The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain names as the Respondent is not a licensee and is using the disputed domain names illegitimately to offer online gambling services under a false impression of association with the Complainants.
The websites also include “anti-blocking” instructions to help users bypass Internet filtering in countries where online gambling is illegal or heavily restricted. The Respondent controls the affiliate program Volcano Mega for online-casinos Vulkan located via the domain name
All the disputed domain names are operating as fully functional online casinos. All the websites under the disputed domain names are identical and include the following pages: “GAMES”, “TOURNAMENTS”, “BONUS”, “PROMO”, etc. All of abovementioned are the classic attributes of online casinos.
The Complainants contend that the Respondent has acted in bad faith by using the disputed domain names that incorporates the VULKAN trademarks and by using Complainants’ trademarks in content to intentionally attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion. This fraudulent activity in creating “copycat” websites and directly attempting to deceive consumers constitutes bad faith.
Finally, the Complainants observe that a previous UDRP panels transferred multiple domain names used for nearly identical websites, refer to a number of UDRP cases in this respect, and invite the Panel in this instance to reach a similar conclusion.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Procedural Issues - Consolidation of Multiple ComplainantsPursuant 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 of the 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 established that both of the Complainants are the owners of trademark registrations for the VULKAN, ВУЛКАН, VOLCANO, and figurative “V” trademarks. The Respondent appears to have engaged in conduct targeting trademarks held by both of the Complainants. As such, both of the Complainants have a specific common grievance against the Respondent. The Panel is not aware of any circumstances that would create prejudice to the Respondent 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 of the 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.
6.2. Substantive IssuesIn 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 Respondent has 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 SimilarThis 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.
Ownership of a nationally or regionally registered trademark serves as prima facie evidence that the Complainants have trademark rights for the purposes of standing to file this Complaint. See section 1.2 of the WIPO Overview 3.0. The Complainants submitted evidence that the VULKAN trademarks have been registered in the European Union, under the Madrid System for the International Registration of Marks, and in some other countries that are also supported by the public records. Thus, the Panel finds that the Complainants’ rights in the VULKAN trademarks have been established pursuant to the first element of the Policy.
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.
The disputed domain names consist of the element “vulcan” combined with the element “mega”, various Arabic numerals, and the generic Top-Level Domain (“gTLD”) “.com”.
Thus, the first element of the disputed domain names is “vulcan” visually, semantically, and phonetically similar with the Complainants’ VULKAN trademark as it imitates the transliterated Complainants’ VULKAN trademark in Cyrillic. The Cyrillic version of the Complainants’ trademarks is phonetically pronounced as [vul’kʌn] and the element “vulcan” is pronounced identically to the Complainants’ VULKAN trademark. Visual similarity will contribute to the confusion between this element in the disputed domain names and the Complainants’ trademarks.
Thus, the Complainants’ trademarks remain recognizable in the disputed domain names.
Furthermore, transliterated or translated strings in domain names are treated as confusingly similar for purposes of the Policy. See WIPO Overview 3.0, section 1.14. The Panel also takes due note that 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 for purposes of the first element. See WIPO Overview 3.0, section 1.9. As the element “vulcan” may be also treated as misspelling of the Complainants’ VULKAN trademarks, this factor will also contribute to finding that the Complainants met the first element under the Policy.
Once the gTLD is ignored as a standard registration requirement, as reflected in section 1.11.1 of the WIPO Overview 3.0, the addition of the element “mega” and Arabic numerals do not prevent a finding of confusing similarity of the disputed domain name with the Complainants’ trademarks. As provided in section 1.8 of the WIPO Overview 3.0, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
Thus, the Panel concludes that the disputed domain names are confusingly similar to the Complainants’ VULKAN trademarks.
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 InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a 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 a 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 be deemed to have sustained its burden under the second element of the UDRP.
There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the disputed domain names. The Complainants have not authorized, licensed, or otherwise permitted the Respondent to use the Complainants’ VULKAN trademark. The Complainants do not have any business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain names. Based on the use made of the disputed domain names 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 trademarks on those websites, the Panel finds that the Respondent is 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 Respondent is commonly known by the disputed domain names or by any names similar to them, nor any evidence that the Respondent was 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).
The Panel also finds, based on the trademark records and the WhoIs records concerning the disputed domain names, that the Complainants have prior rights in the VULKAN trademarks which predate the Respondent’s registration of the disputed domain names.
In this case, the Panel finds that the Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. (see, e.g., Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403).
Insofar as the Complainants have made a prima facie showing that the Respondent lacks rights or legitimate interests to the disputed domain names (Spencer Douglass, MGA v. Bail Yes Bonding,WIPO Case No. D2004-0261), this shifts the burden of production to the Respondent to show evidence that it has rights or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. The Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the disputed domain name.
Yet the more, the Panel has established that that the Respondent has been a named Respondent in the prior UDRP case filed by the Complainants involving similarly composed domain names: see Dareos Ltd., Dareos Inc. v. Super Privacy Service LTD c/o Dynadot / Vladimir Petrov, Marina Fedko, supra. In that case, the UDRP panel found that the Respondent engaged in a pattern of conduct of registering domain names similar to the disputed domain names and use such domain names for interactive and fully functional online commercial gaming and gambling websites, identical to each other in their graphic presentation and look and feel.
Taking into consideration that case and the present circumstances, the Panel also finds that the Respondent is engaged in a pattern of trademark-abusive domain name registrations.
In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
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 FaithThere are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] website or location”.
Under section 3.2.1 of the WIPO Overview 3.0 particular circumstances UDRP panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion), (ii) the chosen top-level domain (e.g., particularly where corresponding to the complainant’s area of business activity or natural zone of expansion), (iii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof, (iv) the timing and circumstances of the registration (particularly following a product launch, or the complainant’s failure to renew its domain name registration), (v) any respondent pattern of targeting marks along a range of factors, such as a common area of commerce, intended consumers, or geographic location, (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, or (viii) other indicia generally suggesting that the respondent had somehow targeted the complainant.
The Complainants and their predecessor have promoted their gaming, casino, and entertainment services using the VULKAN trademark for many years, long before the Respondent’s registration of the disputed domain names.
By registering the disputed domain names that incorporates the Complainants’ VULKAN trademarks (transliterated or misspelled variations thereof), adding terms which do not prevent confusing similarity with the Complainants’ VULKAN trademarks, the Respondent has created the disputed domain names which are confusingly similar to the Complainants’ trademarks and has demonstrated a knowledge of and familiarity with Complainants’ brand and business.
Furthermore, the Respondent has been using the disputed domain names as fully functional online casinos. All the websites, to which the disputed domain names resolve to, are identical and include the following pages: “GAMES”, “TOURNAMENTS”, “BONUS”, “PROMO”, etc. These are the classic attributes of online casinos. The websites also include “anti-blocking” instructions to help users bypass Internet filtering in countries where online gambling is illegal or heavily restricted.
The websites which the disputed domain names resolve to prominently display the Complainants’ VULKAN trademarks and using “V” or “B” (Cyrillic version of “v” and the first letter of the Cyrillic equivalent of the VULKAN trademarks) as favicons. The designs of the resolving websites under the disputed domain names imitate the Complainant’s VULKAN trademarks, and use a similar set of games. 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 finds that the Respondent’s knowledge of the Complainants and its trademarks, which registration predates the Respondent’s registration of the disputed domain names by several years, may be inferred from the contents of the Respondent’s website, as described above, which clearly seek to target the Complainants. The Respondent, having no relationship with the Complainants nor any authorization to make use of the Complainants’ trademarks in a domain name or otherwise, has proceeded to register 26 disputed domain names comprising the Complainant’s trademarks, or variations thereof.
As previously noted by the Panel, the Respondent has been a named Respondent in the prior UDRP case filed by the Complainant involving similarly composed domain names: see Dareos Ltd., Dareos Inc. v. Super Privacy Service LTD c/o Dynadot / Vladimir Petrov, Marina Fedko, supra. On balance of the facts set forth above, the Respondent knew of and targeted the Complainants’ trademarks at the time of registration of the disputed domain names.
In addition, the registration of a domain name that is so obviously connected with a well-known 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; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
The Panel has also found that the Respondent has concealed his identity by using the privacy service. While the use of a privacy shield is not necessarily objectionable itself, in the present case it contributes to the accumulation of elements pointing to bad faith registration and use. See Solvay SA v. Domain Privacy Service Fbo Registrant / Mary Koehler,WIPO Case No. D2016-1357.
Finally, the Panel finds that the Respondent’s website clearly misappropriates the Complainant’s trademark to attract, for commercial gain, Internet users to the websites under the disputed domain names and to divert, through confusion, Internet users away from the Complainant’s official website.
The Panel finds that the Respondent registered and used the disputed domain name in bad faith in accordance with paragraph (4)(a)(iii) of the Policy.
7. 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
Kateryna Oliinyk
Sole Panelist
Date: December 7, 2021