Ritzio Purchase Limited / Dareos Inc. / Dareos Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / Irina Zenenkova, DevLock
Case No. D2018-2151
1. The Parties
The Complainants are Ritzio Purchase Limited of Nicosia, Cyprus / Dareos Inc. of Majuro, Marshall Islands / Dareos Ltd. of Nicosia, Cyprus, represented by Mapa Trademarks SL, Spain.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Irina Zenenkova, DevLock of Kazakhstan, self-represented.
2. The Domain Names and Registrar
The disputed domain names <casinovulkangrand.com>, <casinovulkangrand2.com>, <casinovulkangrand3.com>, <casinovulkangrand4.com>, <casinovulkangrand5.com>, <clubvulcangrand.com>, <play-vulcangrand.com>, <playvulcangrand.com>, <slotsvulcangrand.com>, <slotsvulcangrand1.com>, <slotsvulcangrand2.com>, <vlk-grand.com>, <vlk-grand1.com>, <vlk‑grand3.com>, <vu-grand.com>, <vulcangrand.co>, <vulcangrand.com>, <vulcangrand1.com>, <vulcangrand10.com>, <vulcangrand11.com>, <vulcangrand12.com>, <vulcangrand14.com>, <vulcangrand15.com>, <vulcangrand16.com>, <vulcangrand17.com>, <vulcangrand18.com>, <vulcangrand2.com>, <vulcangrand20.com>, <vulcangrand-2018.com>, <vulcangrand21.com>, <vulcangrand22.com>, <vulcangrand23.com>, <vulcangrand24.com>, <vulcangrand25.com>, <vulcangrand26.com>, <vulcangrand3.com>, <vulcangrand4.com>, <vulcangrand5.com>, <vulcangrand6.com>, <vulcangrand7.com>, <vulcangrand777.com>, <vulcangrand8.com>, <vulcangrand9.com>, <vulkan-grand-online.com>, and <1vulkangrand777.com> are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2018. On September 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 22, 2018, 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 Complainants on October 4, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on October 8, 2018.
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 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2018. The Response was filed with the Center on October 29, 2018.
The Center appointed Steven A. Maier as the sole panelist in this matter on November 6, 2018. 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. Procedural Matters
A. Consolidation of Complainants
The Complainants request the consolidation of their claims against the Respondent on the basis that the they have a specific common grievance against the Respondent and that it would be equitable and procedurally efficient to permit the consolidation. In particular, the Complainants submit that the Complainant Ritzio Purchase Limited (“Ritzio”) has transferred registered trademarks which are relevant to these proceedings to the other two Complainants and that Ritzio is currently a licensee of those trademarks, such that all three of the Complainants have an interest in the trademarks in question. The Respondent has made no objection to consolidation and, on the basis of the Complainants’ submissions and its consideration of the trademarks in question, the Panel determines that the consolidation should be permitted.
B. Respondent’s Applications
In the course of her substantive Response, the Respondent requests an unspecified further period of time to gather further evidence concerning these proceedings and to obtain legal advice. The Respondent also requests an oral hearing.
Under paragraph 10 of the Rules, the Panel is required (among other matters) to conduct the administrative proceedings in such manner as it considers appropriate in accordance with the Policy and the Rules; to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case; and to ensure that the administrative proceedings take place with due expedition. Bearing all these criteria in mind, the Panel does not consider it necessary or appropriate to permit the Respondent additional time to file any further Response, since the Panel considers that the time period afforded by the Rules provided an ample opportunity for the Respondent to obtain the necessary evidence and advice in this case. The Panel also determines that there are no persuasive grounds for conducting an oral hearing in this case.
5. Factual Background
The Complainants Ritzio and Dareos Limited are companies registered in Cyprus. The Complainant Dareos Inc. is a company registered in the Marshall Islands. The Complainants are providers of gaming, casino and entertainment services by way primarily of gaming clubs and slot machines.
The Complainants are the owners of various trademark registrations which comprise or include the names Вулкан and VULKAN. The Complainants submit (and the Panel has independently verified) that the name Вулкан means “volcano” in Russian and is pronounced “vulkan”. The Complainants’ trademarks include, by way of example, the following:
- International (Madrid) Trademark number 984297 for the mark VULKAN, registered on August 11, 2008 in various classes, with a basic registration for the Russian Federation and designating the European Union, Belarus, Croatia, Kazakhstan, Serbia and Ukraine;
- International (Madrid) Trademark number 791038 for the figurative mark shown below (the “Figurative Mark”) registered on September 3, 2002 in Class 41, with a basic registration for the Russian Federation and designating a total of 14 other territories.
The Complainants are the owners of numerous other trademark registrations that are identical to the Figurative Mark, that use the term VULKAN in substitution for the term Вулкан, or which comprise variations of the above, for example including additional wording (e.g. “stern” in Germany) at the bottom right of the mark.
The disputed domain names were registered on various dates between July 22, 2016 and July 2, 2018. The Complainant submits, and the Respondent does not dispute, that all of the disputed domain names have been used to resolve to identical websites. Those websites are primarily in the Russian language and offer gambling services comprising a variety of online games and promotions. The websites prominently feature a logo at the top right hand corner of their home page that is effectively identical to the Figurative Mark, but includes the Russian word “ГРАНД” (which translates as “grand”) in gold lettering at the bottom right of the mark.
6. Parties’ Contentions
The Complainants submit that they have been offering high-quality gaming and casino services by reference to the above trademarks and brands since 1992. They state that, while the Russian Federation is the flagship of their business, they operate over 230 branded gaming clubs at various locations in Europe, including 129 in Germany, employing over 2,000 individuals in total, and provide over 6,300 slot machines. They state that they had operating revenue of over USD 5.5 billion between 2006 and 2010. The Complainants contend that, as a result of their commercial activities under their trademarks, they have become one of the most recognized and well-known brands in Europe. They exhibit evidence of media awareness of their brand and of involvement in socially responsible activities, including the Paralympics.
The Complainants submit that all of the disputed domain names are identical or confusingly similar to a trademark in which they have rights. They contend that virtually all of the disputed domain names contain the term “vulkan” or “vulcan”, which are identical or virtually identical to their VULKAN trademark, and that the addition of generic terms such as “casino”, “grand”, “club” or “slots”, or of numbers, does not affect the confusing similarity of the disputed domain names.
Concerning the disputed domain names <vlk-grand.com>, <vlk-grand1.com>, <vlk-grand3.com> and <vu‑grand.com>, the Complainants say that these disputed domain names include acronyms or abbreviations of the word “vulkan”, but are still visually and phonetically similar. The Complainants advance a series of further arguments as to why these four disputed domain names are identical or confusingly similar to their VULKAN mark, all of which arguments make reference to the Respondent’s use of the disputed domain names in question. The Complainants also cite the decision in 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, in which domain names including <vlk-luck.com> and <vlk‑play.com> were found to be confusingly similar to the Complainants’ VULKAN mark.
The Complainants contend that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names. They say that the Respondent is not a licensee of the Complainants, that she has never received any permission or consent to use the Complainants’ trademarks, that she has no prior rights in the trademarks and that she has not commonly been known by the trademarks. The Complainants contend that the Respondent is unable to establish any of the criteria set out in paragraph 4(c) of the Policy as being circumstances that may give right to legitimate rights or interests, and argue in particular that she is unable to demonstrate any use of the disputed domain names in connection with a bona fide offering of goods or services. In this regard, the Complainants contend that the Respondent acquired and has used the disputed domain names purely for the purpose of creating a likelihood of confusion with the Complainants’ trademarks and business and trading off their goodwill.
The Complainants submit that each of the disputed domain names was registered and is being used in bad faith. They state that the Respondent is using the disputed domain names for the purpose of “copycat” websites which have copied the look and feel of the Complainants’ gaming clubs and which directly reproduce the Complainants’ trademarks, including the Figurative Mark and others. They also submit that the Respondent has misleadingly presented her websites as those of the Complainants by stating, for example: “The Volcano is a legendary brand that has been known for decades.” The Complainants submit, in particular, that by using the disputed domain names the Respondent has attempted to attract, for commercial gain, Internet users to her websites by creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship, affiliation or endorsement of her websites or of products or services on those websites (paragraph 4(b)(iv) of the Policy).
The Complainants request the transfer of the disputed domain names.
The Respondent submits that she is not the owner of the disputed domain names and that she merely provides IT services including the purchase, storage and maintenance of domain names.
The Respondent submits that arbitration is a consensual process and that, since she has not entered into any arbitration agreement, she does not consent to the present proceedings.
The Respondent states that the Complainants’ allegations are false and that she is replying to them on behalf of her client, who is the owner of the disputed domain names.
The Respondent says that her client has developed his own brand named “Volcano Grand” and that all of the disputed domain names are used to promote that online business and not to refer to the Complainants’ business. She denies that any of the disputed domain names is identical or confusingly similar to the Complainants’ trademarks and submits that all of the disputed domain names include the terms “vulcan grand” or “grand”, thus distinguishing them from the Complainants’ brand. She also contends that none of the additional terms used within the disputed domain names could be confused with casinos or slot machines.
The Respondent denies that her client has ever intended to mislead Internet users or that he has used the Complainant’s trademarks. She submits in particular that the word “Grand” appears prominently within the logo used on the websites in question.
The Respondent alleges that the Complainants’ operations in Russia are illegal, and for that reason its trademarks are vulnerable to cancellation and it has no right to bring the present proceedings or any other proceedings.
Further in relation to the Figurative Mark, the Respondent states that her client is “unable to control the process of rendering all graphic elements created by the design department and thus a mistake could have happened.” She states that, in the event of a finding of copyright infringement, her client would consider changing his design.
The Respondent argues that the present proceedings are selective, because there are numerous other gambling websites operating under the name “Volcano”, such as “Platinum Volcano”, “Club Volcano” and Volcano Stars”. She alleges that the Complainants are bringing these proceedings merely to obtain a competitive advantage.
The Respondent submits that, should the Panel find against the Respondent in these proceedings, it should order that the Respondent’s client change its logo rather than ordering a transfer of the disputed domain names.
7. Discussion and Findings
In order to succeed in the Complaint, the Complainants are required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainants have established that they have registered trademark rights in the mark VULKAN.
In this regard, the Panel finds that the Complainants’ mark VULKAN is recognizable (either textually or phonetically) in each of the disputed domain names that include the name “vulkan” or “vulcan”. The Panel also finds that none of the additional terms contained in any of the disputed domain names, whether consisting of dictionary words or numbers, is effective to distinguish those disputed domain names from the Complainants’ trademarks.
Concerning the four disputed domain names <vlk-grand.com>, <vlk-grand1.com>, <vlk-grand3.com> and <vu‑grand.com>, the Panel notes that each of these disputed domain names contains characters that are found within the mark VULKAN and also the Respondent’s assertion that all the disputed domain names were intended to promote the “Vulcan Grand” brand. Further, these four disputed domain names have all been used in the same manner as the other disputed domain names in question, i.e. to resolve to identical websites. As discussed in sections 1.7 and 1.15 of the WIPO Overview 3.0, a panel may take account of matters such as the targeting of a complainant’s trademark, a pattern of similar registrations and website content in affirming a prima facie finding of confusing similarity. In this particular case, for the reasons set out below, the Panel finds all of these factors to be present.
The Panel therefore finds that all the disputed domain names are confusingly similar to a trademark in which the Complainants have rights.
B. Rights or Legitimate Interests
The Respondent contends that each of the disputed domain names has been used for the purpose of a legitimate online gambling business named “Volcano Grand” that offers different services from the Complainants and does not misrepresent any connection with the Complainants’ business. However, each of the websites linked to the disputed domain names has prominently displayed a logo which is effectively identical to the Figurative Mark, being a highly distinctive design which the Complainants had used in connection with gambling services for well over a decade prior to the registration of any of the disputed domain names. While the Respondent’s logo also includes the term “ГРАНД” in gold letting, this is manifestly insufficient to distinguish it from the Figurative Mark. Viewed in conjunction with the choice of domain names that reflect the Complainants’ VULKAN mark, the Panel identifies an obvious intention on the part of the Respondent (or her stated client) to impersonate the Complainant and to take unfair advantage of the goodwill attaching to its VULKAN mark and the Figurative Mark. Impersonation of this nature cannot give rise to rights or legitimate interests and, there being no other evidence of rights or legitimate interests on the Respondent’s part, the Panel finds that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names.
C. Registered and Used in Bad Faith
Based once again upon the Respondent’s choice of the disputed domain names reflecting the Complainants’ VULKAN mark, linked to the Respondent’s use of the Figurative Mark in manner that impersonates the Complainants, the Panel has no hesitation in concluding that each of the disputed domain names was registered and has been used in bad faith. The Panel rejects the Respondent’s argument that, if the logo used on her websites were found to infringe upon the Complainants’ rights, then that should merely be viewed as a “mistake” which is capable of remedy. Specifically, the Panel finds that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to her websites by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of her websites or of a product or service on her websites (paragraph 4(b)(iv) of the Policy).
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, <casinovulkangrand.com>, <casinovulkangrand2.com>, <casinovulkangrand3.com>, <casinovulkangrand4.com>, <casinovulkangrand5.com>, <clubvulcangrand.com>, <play-vulcangrand.com>, <playvulcangrand.com>, <slotsvulcangrand.com>, <slotsvulcangrand1.com>, <slotsvulcangrand2.com>, <vulcangrand.co>, <vulcangrand.com>, <vulcangrand1.com>, <vulcangrand10.com>, <vulcangrand11.com>, <vulcangrand12.com>, <vulcangrand14.com>, <vulcangrand15.com>, <vulcangrand16.com>, <vulcangrand17.com>, <vulcangrand18.com>, <vulcangrand2.com>, <vulcangrand20.com>, <vulcangrand-2018.com>, <vulcangrand21.com>, <vulcangrand22.com>, <vulcangrand23.com>, <vulcangrand24.com>, <vulcangrand25.com>, <vulcangrand26.com>, <vulcangrand3.com>, <vulcangrand4.com>, <vulcangrand5.com>, <vulcangrand6.com>, <vulcangrand7.com>, <vulcangrand777.com>, <vulcangrand8.com>, <vulcangrand9.com>, <vulkan-grand-online.com>, <1vulkangrand777.com>, <vlk‑grand.com>, <vlk-grand1.com>, <vlk-grand3.com> and <vu-grand.com> be transferred to the Complainants.
Steven A. Maier Sole Panelist Date: November 9, 2018
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