The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2019. On March 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 14, 2019, 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 March 14, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a first amended Complaint on March 18, 2019. In response to a request for clarification from the Center, the Complainant submitted a second amended Complaint on March 22, 2019.
The Center verified that the Complaint together with the first and second amended Complaints 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 March 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 17, 2019. 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 Complainant is a company that provides gaming, casino and entertainment products and service, 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 trademarks Вулкан and Vulkan since 1992.
The Complainant is the owner of registrations for the VULKAN trademarks in numerous countries around the world, including the following:
- International Trademark Registration for VULKAN, Registration No. 984297, registered on August 11, 2008; - International Trademark Registration for ВУЛКАН & Design, Registration No. 977713, registered on August 12, 2008; - European Union Trademark Registration for ВУЛКАН & Design, Registration No. 014193544, registered on September 23, 2015.
The Disputed Domain Names in the Complaint were registered on the following dates: 1) <vvy11kkans.com> and <wy1lccaim.com> – registered on July 4, 2018;
5) <vollkkjoy.com>, <w1ckjoy.com>, <v01kkjoy.com>, <vollkjoy.com>, <v0lkjoy.com> – registered on May 25, 2018;
6) <voyllcanz.com>, <vyyllkkanz.com>, <voylccanz.com>, <voulkkanz.com>, <vyullckanz.com>, <vuollkkanz.com>, <vyolccanz.com>, <vyullcanz.com> – registered on September 20, 2018;
7) <vyollckans.com>, <vuollcans.com>, <vyyllcans.com>, <vyulckans.com>, <voylcans.com>, <voyllkans.com>, <v0ullcans.com>, <vuylccans.com>, <vy0llckans.com>, <v0ullkkans.com>, <vuollkkans.com>, <vy0lckans.com> – registered on August 1, 2018;
8) <v01ckaim.com>, <v1caim.com>, <w1kkaim.com>, <vollckaim.com> – registered on August June 21, 2018;
9) <vvollccans.com>, <wollkan.com>, <wollkkano.com>, <wollcans.com>, <wollccano.com>, <wollckano.com>, <vvollccan.com>, <uollccano.com> – registered on May 22, 2018;
10) <vollckfuns.com>, <vllkfuns.com>, <volcfuns.com>, <w01kfuns.com>, <wllckfuns.com>, <v01cfuns.com> – registered on May 30, 2018;
11) <woullcanz.com>, <wolckanz.com>, <wyy1ckanz.com>, <wyu11canz.com>, <wol1canz.com>, <woulcanz.com>, <wy11ckanz.com>, <w0lckanz.com>, <woy1ckanz.com> – registered on August 28, 2018;
12) <w1can.com>, <v1kkan.com>, <vv1kkano.com>, <w1kans.com>, <v1ccan.com> – registered on May 21, 2018;
13) <v1lcano.com>, <v1lcans.com>, <v1lckans.com>, <w1lkan.com>, <u1lcans.com> – registered on May 23, 2018;
14) <vlcxwinmagics.com>, <vlczxmagicswin.com>, <vlkxwinmagic.com> – registered on May 10, 2018;
15) <wuylckan.com>, <wyolcano.com>, <wuylkkan.com>, <wyulkano.com>, <voylccan.com>, <vyolcano.com>, <vyylkkan.com>, <voulckan.com>, <voulkkan.com>, <vyulcan.com>, <voylkkan.com>, <wyolccan.com> – registered on September 11, 2018;
16) <vyllkaim.com>, <vvy11kkan.com>, <vvy11ck.com>, <wylckaim.com>, <uy11cany.com> – registered on June 27, 2018;
17) <wo1lkkpay.com>, <vo11kkpay.com>, registered on June 13, 2018;
18) <w01ccans.com>, <w01cano.com> – registered on May 18, 2018;
19) <u01kkano.com> – registered on May 18, 2018;
20) <vyllccans.com>, <vyllkany.com>, <vvyllkans.com>, <uyllckany.com> – registered on June 8, 2018;
21) <vlkjoyx.com>, <vlkzjoyx.com>, <vlkxgamers.com> – registered on May 4, 2018;
22) <winnzyvllks.com>, <dreamxwllcs.com>, registered on May 11, 2018;
23) <vylccans.com>, <w0lcfun.com>, <uylcans.com> – registered on May 24, 2018;
24) <wol1kan.com>, <vvol1ck.com>, <uol1ckan.com> – registered on June 11, 2018;
25) <wylkanricher.com> – registered on April 16, 2018;
26) <wylkanerwinns.com> – registered on April 12, 2018;
27) <goldwinvlks.com>, <vlksgoldwin.com> - registered on May 7, 2018;
28) <vlkpaygamer.com> - registered on May 3, 2018;
29) <wy1lkkaim24.com> - registered on July 5, 2018;
30) <wyulkkans.com> - registered on September 25, 2018;
31) <wllkcoin.com> - registered on July 10, 2018;
32) <u0lccano.com> - registered on May 14, 2018.
The Disputed Domain Names currently redirect to the website “www.vulslotss.net” which has the identical design, graphics, layouts, texts, fav icons, the same set of games, operational company and contact information and payment instruments of the Complainant.
According to the Complaint and its evidence, the Respondent was using the ВУЛКАН trademark as a favicon of all the websites at the Disputed Domain Names. In addition, according to the Complainant all the websites at the Disputed Domain Names are identical, reproduce the Complainant’s logo, and are operating as online casinos.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant alleges that the Disputed Domain Names are confusingly similar to the VULKAN trademarks and Russian Trademark ВУЛКАН.
The Complainant states that the Disputed Domain Names were registered with the intent to deceive Internet users. Since most of the Disputed Domain Names includes acronyms of VULKAN trademarks with intentional misspelling and typosquatting.
The Complainant argues that the Disputed Domain Names consist of acronyms of the word “Vulkan” – “vlc”, “vlk”, “wlk”, “vvlk” and other combinations which are visually and phonetically similar. Moreover, the Respondent misspelled the VULKAN trademark replacing some letters with other ones or with numbers in order to avoid the use of the VULKAN trademarks.
In addition, the Disputed Domain Names have a phonetically similarity.
Consequently, the whole image of “vulkan” domain name and website still remains.
Furthermore, the Respondent’s website uses the identical VULKAN trademark.
Therefore, there is a risk that Internet users may believe that there is a connection between the Disputed Domain Names and the Complainant.
Finally, the Disputed Domain Names incorporates the Complainant’s trademark adding only generic terms such as, “winner”, “riches”, “richer”, “million”, “casino”, “treasures”, “joy’, “funs”, “winnzy”, “club”, “kasino”, “pay”, “gamer”, “magic”, “coin”, “gold” and number “24” that are considered irrelevant under Policy and do not affect the confusing similarity of the Disputed Domain Names and trademarks.
Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name, since the Respondent is not a licensee of the Complainant, nor has it received any permission or consent to use the Complainant’s trademarks or by the Disputed Domain Names.
Moreover, the Complainant has prior rights in the VULKAN trademark which precedes the Respondent registration of the Disputed Domain Name. In addition, the Respondent is not commonly known by the trademark.
Finally, the Disputed Domain Names bear no relationship to any legitimate business of the Respondent nor has the Respondent shown any demonstrable preparations to use the Disputed Domain Name in connection to any bona fide offering of goods or services.
Registration and use in bad faith
The Complainant states that all the Disputed Domain Names are operating as full-functional online-casinos. The websites that the Disputed Domain Names resolve to are identical and includes the following pages: “GAME ROO”, “TOURNAMENTS”, “LOTERRY”, “BONUSES”, etc., which are the classic attributes of online casino.
The Respondent has acted in bad faith by using the Disputed Domain Name which incorporated the VULKAN trademark and by using them in order to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion. Moreover, the Respondent uses the VULKAN trademark on all pages of the Disputed Domain Name.
Furthermore, the Complainant submits that the Respondent was well aware of the Complainants trademarks since the main page of the Disputed Domain Name uses the VULKAN trademarks and its refer to the Complainant’s history and reputation.
In addition, the Complainant states that the Respondent is using a network of domains aggregators to redirect users between the Disputed Domain Names. Moreover, the Respondent conceals its identity by using the Privacy services.
Finally, the Respondent controls the affiliate program pelican for online-casinos Vulkan. In each website there is a link to the Pelican Program on the bottom of the website page.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Matter: Consolidation of multiple Respondents
Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states the following with respect to complaints consolidated against multiple respondents:“Where a complaint is filed against multiple respondents, 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. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. Paragraph10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, 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 submitted a request for the consolidation of proceedings against multiple domain names. There was no answer from the Respondent.
According to the Registrar’s verification all the Disputed Domain Names were registered by the same registrant which is sufficient to allow the request for consolidation.
In addition, the evidence shows that each of the Disputed Domain Names adopted a common structure with the following characteristics:
- All the websites that are associated with the Disputed Domain Names have the same design graphics, layouts, texts, fav icons, the same set of games, operational company and contact information and payment instruments.
- All of the Disputed Domain Names currently redirect to <vulslotss.net>. - On the bottom of all the websites associated with the Disputed Domain Names have the same notice “Online gaming club Volvano (c) 2019. Club Volcano – slot machines online”. - The majority of the Disputed Domain Names were registered on the same day. - The registration of the Disputed Domain Names was hidden behind privacy service.
The Panel finds that the Disputed Domain Names are subject to common control for the purposes of the Policy.
Consolidation will permit multiple domain name disputes arising from a common nucleus of facts and involving common legal issues to be heard and resolved in a single administrative proceeding. Doing so promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expense, and generally furthers the fundamental objectives of the Policy. Doing so under the circumstances present here, in the Panel’s opinion, will not unfairly favor or prejudice any party (See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,
WIPO Case No. D2010-0281).
The Panel allows the consolidation request.
6.2. Substantive Matters
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Names at issue in this case:
(i) The Disputed Domain Names are 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 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
The Panel finds that the Complainant has established its trademarks rights in VULKAN trademarks as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
Based on the evidence submitted, the Panel considers that the Disputed Domain Names are confusingly similar to the Complainant’s trademarks. All of the Disputed Domain Names contains variations of the Complainant’s registered trademark VULKAN, which are visually and/or phonetically similar with the Complaint’s trademarks, combined with a generic words such as “joy”, “casino”, “games”, “kasino”, “club” or numbers. None of these additions are sufficient to distinguish the disputed domain names from the Complainant’s registered trademarks and are therefore confusingly similar.
Moreover, the Disputed Domain Names are also confusingly similar to the Complainant’s registered trademark VULKAN, since the combination of the letters “vlc”, “vlk”, “wlk”, “wlc” and “vvlk” can be viewed as acronyms or abbreviations of the Complainant’s trademark.
“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.
(…) Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers”.
The Panel notes the broader context of this case with the websites’ content trading off the Complainant’s reputation and a pattern of multiple registrations (in this case 165 Disputed Domain Names) targeting the Complainant’s trademark in a similar manner, all of which support a finding of confusing similarity (see section 1.7 of the WIPO Overview 3.0).
Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Names:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the trademarks in the Disputed Domain Names. Furthermore, the Respondent is not known by the Disputed Domain Names.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names. Instead, the Panel finds that the Respondent was using the Disputed Domain Names to disrupt the Complainant’s business and for improper commercial gain by using the Disputed Domain Names in competition with the Complainant’s business. Moreover, the Respondent registered the Disputed Domain Names between 2018 and 2019, long after the Complainant registered its trademarks.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Names. Besides, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
The fact that the Disputed Domain Names redirects to websites which feature identical logos, graphics, layout, and content of the Complainant, establishes that the Respondent was aware of the Complainant’s trademarks when registering the Disputed Domain Names.
This is clear evidence that the registrations of all the Disputed Domain Names were made in order to attempt to attract Internet users to their own websites and to divert Internet users. This conduct confirms that the Respondent knew the Complainant and its trademarks rights, and that this is a clear case of use in bad faith according to paragraph 4(b)(iv) of the Policy.
In addition, the Complainant provided evidence that the Respondent has engaged in a pattern of abusive registrations since the Respondent registered in this case, a huge amount of domain names (165) which are closely connected to the Complainant’s trademarks.
The WIPO Overview 3.0, section 3.1.2, provides: “UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner. A pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners. Panels have however been reluctant to find a pattern of abuse where a single UDRP case merely contains two domain names registered simultaneously by the same respondent directed at a single complainant mark”.
The Panel takes into account that the Respondent Natalia Zelenina was also a Respondent in cases Ritzio Purchase Limited / Dareos Inc. / Dareos Ltd. v. Registration Private, Domains By Proxy, LLC / Moniker Privacy Services / Natalia Zelenina,
WIPO Case No. D2018-0759, and Ritzio Purchase Limited, Dareos Inc., Dareos Ltd. v. Registration Private, Domains By Proxy, LLC / Natalia Zelenina, Moniker Privacy Services,
WIPO Case No. D2018-0773, concerning the same Complainant as this case. In both cases the Respondent was held to have registered and used all domain names in bad faith.
Since in this case, the Respondent has registered 165 domain names incorporating the Complainant’s trademark in a time frame of a couple of months, the Panel concludes that this constitutes bad faith registration and use of the Disputed Domain Names under paragraph 4(b)(ii) of the Policy.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Names in bad faith.