Complainants are Ritzio Purchase Limited of Nicosia, Cyprus; Dareos Inc. of Ajeltake Island, Majuro, Marshall Island; Dareos Ltd. of Nicosia, Cyprus; represented by Mapa Trademarks SL, Spain.
Respondents are Private WhoIs, Global Domain Privacy Services Inc. of Panama; Valerii Polinskyi of Belize City, Belize; Irina Polyakova of Panama; Grygorii Leontiev, GGS Ltd of George Hill, Anguilla; Grygorii Leontiev of Panama.
The disputed domain names (the “Domain Names”) are registered with URL Solutions, Inc. (the “Registrar”):
<bestvulkan.com>, <myvulkan.com>, <velcamdelux.com>, <velkamdelux.com>, <vlknslots.info>, <vlknslots.top>, <vlknslots.xyz>, <vlk-slots.info>, <vulkan-delcasino.com>, <vulkandeluxe1.net>, <vulkandeluxe1.online>, <vulkandeluxe2.net>, <vulkandeluxe3.com>, <vulkandeluxe3.online>, <vulkandeluxe4.net>, <vulkandeluxe6.com>, <vulkandeluxe6.net>, <vulkandeluxe7.com>, <vulkandeluxe8.net>, <vulkandeluxe9.com>.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2018. On September 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 6, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to Complainants on September 7, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on September 11, 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 Respondents of the Complaint, and the proceedings commenced on October 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2018. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on October 22, 2018.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on October 29, 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.
Complainants request consolidation stating that they believe there is only one real Respondent who controls all of the Domain Names, due to the following facts:
(i) All websites that are linked to the Domain Names have identical design, graphics, layout, texts, the same set of games, and all other instruments; everything is absolutely the same;
(ii) On the “About-page” of all of the websites linked to the Domain Names, the named operational company is the same and the contact details are the same;
(iii) On the bottom of main pages of all of the websites linked to the Domain Names, the named operational company and its postal address are the same;
(iv) There is only one Registrar for all of the Domain Names and many of them were registered on the same days – unlikely to be a coincidence. Six of the Domain Names were registered on March 13, 2017; five of the Domain Names were registered on April 3, 2017; three of the Domain Names were registered on June 21, 2017; and two of the Domain Names were registered on January 23, 2018;
(v) The identities of the registrants for 19 of the Domain Names are hidden behind privacy services;
(vi) In the registration details for the Domain Names, three have the same contact email address and two of them have the same contact phone number. On the websites, there is only one telephone number and only one contact email that is used throughout the whole list of the Domain Names, and they intersect as a core contact point, which once again emphasizes the very essence of the linking: “domain names-brand-product (services)”.
As a bottom line, Complainant requests consolidation asserting that all of the websites linked to the Domain Names look the same, work the same, and are connected with each other by same network, and there is only one owner who controls them. Given these circumstances, the case can be reviewed on the basis of any of the Domain Names and the result would be appropriate for all of the others.
Furthermore, Complainants request consolidation because Complainant Ritzio Purchase Limited (“Ritzio”) has transferred all of the concerned trademarks to its partners, Dareos Ltd. and Dareos Inc. Complainant Ritzio is a licensee of the trademarks; therefore, Complainants have common legal and business interests regarding the marks, and their intellectual property rights are infringed in a similar fashion by Respondents.
Since 1992, Complainant Ritzio has been providing gaming, casino and entertainment products and services, including 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 (written in Cyrillic and the equivalent of “Vulkan” in Roman script) and VULKAN brands.
Complainant Ritzio’s gaming operations extend to the Russian Federation and beyond – between 2006 and 2010, its operating revenue was in excess of USD 5.5 billion. Complainant Ritzio is a technologically advanced, multi-national gaming operator with more than 2,000 employees, more than 230 Вулкан and/or Vulkan branded gaming clubs, and more than 6300 gaming machines throughout Europe.
Complainant owns registrations for the ВУЛКАН, VULKAN and VOLCANO trademarks (hereafter, the “VULKAN Marks”) in numerous countries, which Complainant Ritzio has been using since 1992 — long before Respondents’ registration of any of the Domain Names. In some cases, the relevant word is combined with an image (typically a stylized volcanic eruption), but the word remains the dominant part of the marks. Complainants have provided evidence of trademark registrations in Armenia; Azerbaijan; Belarus; Estonia; European Union; Germany; Kyrgyzstan; Kazakhstan; Lithuania; Latvia; Moldova; Russian Federation, Tajikistan; Turkmenistan; Ukraine; and Uzbekistan.
The Domain Names were registered on various dates between 2012 and 2018. The Domain Names are linked to websites that are substantially identical and impersonate Complainants’ websites.
(i) Identical or confusingly similar
Complainants state that they have significant goodwill in their VULKAN Marks and have developed them into one of the most recognized and well known brands in Europe and Eastern Europe.
Complainants assert that many of the Domain Names incorporate Complainants’ VULKAN Marks, adding only the generic terms “deluxe”, “del” (which is short for “deluxe”), “casino”, “best”, “my”, “slots” and numbers that are considered irrelevant under Policy and do not affect the confusing similarity of the Domain Names to the marks. Moreover, the words “casino”, “slots” and “deluxe” serve to create extra confusion, due to direct association with the well known reputation of the VULKAN Marks and their relation to Complainants’ business activities.
Complainants state that three of the Domain Names include the acronyms “vlkn” or “vlk”, which are acronyms for the word “vulkan,” but are still visually and phonetically similar, and refer to Complainants’ business conducted under the VULKAN Marks. Two of the Domain Names include the words “velcam” and “velkam.” In the Russian language, these words are aurally similar to the word “vulcan” in that the words consist of six letters with equal number of vowel and consonant sounds. Moreover, in the Russian language, there is no such word as “velkam.”
As a bottom line, Complainants assert that all of the Domain Names are confusingly similar to Complainants’ VULKAN Marks and in conjunction with the context, reference only one word and one business – Complainants’ VULKAN Marks and gaming operations.
(ii) Rights or legitimate interests
Complainants assert that in this case, Respondents are not licensees of Complainants, nor authorized to use of any of the VULKAN Marks in any way. Nor have Respondents ever been commonly known by the Domain Names. Rather, Respondents have purposely hidden themselves by using privacy services to register the Domain Names. Furthermore, Respondents use many ways to mislead users into believing that the Domain Names belong to or are associated with Complainants.
Complainants have provided evidence of their rights in the VULKAN Marks, use of which commenced more than 20 years before Respondents’ registration of the Domain Names. It is Complainants’ position, as supported by the evidence, that Respondents acquired the Domain Names in hopes of intentionally attracting, for commercial gain, Internet users to Respondents’ websites by creating a likelihood of confusion. Complainants state that the Domain Names bear no relationship to any legitimate business, nor have Respondents shown any demonstrable preparations to use the Domain Names in connection with any bona fide offering of goods or services. To the best of Complainants’ knowledge, Respondents have not developed any legitimate business relating to or incorporating the VULKAN Marks. Instead, the commercial use to which the Domain Names have been put is not bona fide because the Domain Names trade on Complainants’ fame.
(iii) Registered and used in bad faith
Complainants contend that Respondents have acted in bad faith by registering the Domain Names that incorporate the VULKAN Marks and by using Complainants’ marks in content on the related websites to intentionally attract, for commercial gain, Internet users to Respondents’ websites by creating a likelihood of confusion. This fraudulent activity – creating “copycat” websites and directly attempting to deceive consumers – is bad faith.
In particular, Complainants state that all of the Domain Names are linked to websites operating as fully-functional online-casinos. Not only are Respondents using the VULKAN Marks without authorization, but in an effort to illicitly profit off the goodwill and reputation of the VULKAN Marks, they have copied the look and feel of Complainant Ritzio’s gaming clubs. To maximize the effect of confusion, Respondents use the VULKAN Marks on all of the pages linked to the Domain Names, and in all of the advertising materials. All the websites are identical and include the following pages: “Game Room”; “Lottery”; “Tournaments”; “News”, “My Office”. All are the classic attributes of online-casinos.
Respondents have attempted to capitalize on Complainants’ prestigious reputation by purchasing the Domain Names, which have nothing to do with Respondents, and trading off on the goodwill that Complainant Ritzio has established over the past 20 years. In fact, Respondents have solely used the Domain Names that completely correspond with the VULKAN Marks to attract consumers from Complainants’ authorized partners and to profit from competitive online gaming and casino services.
Complainants state that further evidence of bad faith on Respondents’ part is using a network of aggregators to redirect users between the Domain Names. Moreover, Respondents conceal their identity using privacy services for the Domain Names.
Finally, Complainants have had similar disputes with similar respondents, in which all of the websites of those respondents looked absolutely identical to one another and there were almost identical infringements. The UDRP panels decided that all of those domain names are to be transferred to Complainants.
Accordingly, the Domain Names are confusingly similar to Complainants’ registered VULKAN Marks and were registered without Complainants’ consent, Respondents have no legitimate interests in the Domain Names and are not making any legitimate noncommercial or fair use of them, and the Domain Names are registered and are being used in bad faith as evidenced by Respondents’ hidden identity, typosquatting, and absolutely obvious attempt to attract users by creating likelihood of confusion to trade off the fame and goodwill of the VULKAN Marks.
Respondents did not reply to Complainants’ contentions.
In order to succeed on its Complaint, Complainants must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Names registered by Respondents are identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondents have no rights to or legitimate interests in respect of the Domain Names; and
(iii) Respondents have registered and are using the Domain Names in bad faith.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, states that where a complaint filed against multiple respondents is sought to be consolidated, “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”.
Here, Complainants set out in detail the factors which they believe show common control, and why it would be fair and equitable to consolidate the Domain Names and Respondents. All of the websites linked to the Domain Names have identical design, graphics, layout, texts, the same set of games, and all other instruments; on the “About page” of all of the websites linked to the Domain Names, the named operational company is the same and the contact details are the same; on the bottom of the main pages of the websites linked to the Domain Names, the named operational company and its postal address are the same; there is only one Registrar for all of the Domain Names and many were registered on the same days; the identities of the registrants for 19 of the Domain Names are hidden behind privacy services; and on the websites, there is only one telephone number and only one contact email that is used for the Domain Names.
Respondents failed to respond to these facts and allegations made by Complainants. Accordingly, the Panel finds, on the preponderance of the evidence, that the Domain Names and corresponding websites are subject to common control. Further, the Panel, having regard to all relevant circumstances, concludes that consolidation of the Domain Names and Respondents is consistent with the Policy and Rules and is fair and equitable to all Parties.
The Panel finds that Complainants have established rights in their VULKAN Marks, based on trademark registrations and extensive use of the marks in the Russian Federation and Eastern Europe.
Further, the Panel determines that all of the Domain Names are confusingly similar to Complainants’ VULKAN Marks. Most of the Domain Names incorporate the VULKAN mark in its entirety, while adding descriptive words such as “deluxe”, “del”, “casino”, “best”, “my”, “slots”, as well as numbers that are irrelevant to dispel possible confusion. Most of these descriptive terms serve to reinforce confusion, because they support a connection to Complainants and their gaming and casino business activities. The other Domain Names in this case, such as <velcamdelux.com>, <velkamdelux.com>, <vlknslots.info>, <vlknslots.top>, <vlknslots.xyz> and <vlk-slots.info, use a misspelling or acronym, which present the near-phonetic or aural equivalent of Complainant’s VULKAN Marks, in combination with descriptive words that also reinforce a connection to Complainants and their marks. Thus, here too, the Panel finds that these Domain Names are confusingly similar to Complainants marks. See WIPO Overview 3.0, section 1.8 (“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”).
Accordingly, the Panel finds that that the Domain Names are confusingly similar to a trademark in which Complainants have rights, in accordance with paragraph 4(a)(i) of the Policy.
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Here, the Panel determines that Complainants have made out a prima facie case, while Respondents have failed to reply to Complainants’ contentions. The Panel finds that Complainants have not authorized Respondents to use their VULKAN Marks; that Respondents are not commonly known by the marks or the Domain Names; that Respondents have not used the Domain Names for a legitimate noncommercial or fair use, nor used them in connection with a bona fide offering of goods or services – instead, the Domain Names are linked to webpages that impersonate Complainants’ websites. These replica sites copy Complainants’ genuine sites. The evidence indicates that this has likely been done so that Respondents can perpetrate a scam and redirect users away from Complainants’ sites. Respondents’ use of the Domain Names in this manner does not give rise to any right or legitimate interest in them, especially where the Domain Names are confusingly similar to Complainants’ VULKAN Marks.
Accordingly, the Panel finds that Complainants have made a prima facie showing of Respondents’ lack of rights or legitimate interests in respect of the Domain Names, which has not been rebutted by Respondents. The Panel therefore finds that Complainants have established the second element of the Policy in accordance with paragraph 4(a)(ii).
The third element of paragraph 4(a) of the Policy requires that Complainants demonstrate that Respondents registered and are using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Names were registered and are being used in bad faith. First, based on the evidence, the Panel finds that Respondents were undoubtedly aware of Complainants and their VULKAN Marks, and targeted those marks when registering the Domain Names. The Panel observes that Respondents registered the Domain Names, which either incorporate the VULKAN Marks, or abbreviate or misspell them, along with words that reinforce a connection to Complainants and the brand and business. Panel considers that the only logical conclusion is that Respondents targeted Complainants and their VULKAN Marks when registering the Domain Names.
Complainant submitted evidence to show that the Domain Names connect to websites that copy Complainants’ sites. The Panel has independently confirmed that this is the case. The fake sites are set up to look like Complainants’ sites, thereby misleading consumers into believing that they are accessing a genuine website operated by Complainants. The risk associated with this type of copycat website is that potential consumers might be duped into parting with confidential data or financial information, which can then be used to facilitate fraud. Complainants have also submitted evidence to indicate that Respondents’ registration of the Domain Names is possibly part of a pattern of bad faith behavior involving other domain names targeting Complainants.
Thus, in this case where Respondents targeted Complainants VULKAN Marks and failed to submit a response to the Complaint, and where the Domain Names are linked to what appears to be sham copycat sites, these circumstances, when considered in context with all of the other circumstances of the case, support the Panel’s finding of bad faith registration and use.
As the panel found in another UDRP case involving Complainants, Ritzio Purchase Limited v. Domain Admin, PrivacyProtect.org / Timur Ziganshin / Lianna Tall, Escave Ltd / Private Whois, Global Domain Privacy Services Inc / Moniker Privacy Services, WIPO Case No. D2015-0875:
“At its heart, therefore, and despite the extensive argument and submissions filed by both the Parties, ultimately this is a relatively simple case of impersonation. The Respondent (or at least persons on behalf of whom the Respondent has registered the Domain Names) has registered and is using the Domain Names in order to pass themselves off as the Complainant (or in some way authorised by the Complainant) when it is not, in order to thereby draw Internet users to gambling websites for commercial gain. Registration and use of a domain name for such a purpose is a classic example of registration and use in bad faith. So far as use is concerned it is activity that falls within the scope of paragraph 4(b)(iv) of the Policy”.
Accordingly, the Panel therefore finds that Complainants have established the third element of the Policy in accordance with paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the following Domain Names be transferred to Complainants:
<bestvulkan.com>, <myvulkan.com>, <velcamdelux.com>, <velkamdelux.com>, <vlknslots.info>, <vlknslots.top>, <vlknslots.xyz>, <vlk-slots.info>, <vulkan-delcasino.com>, <vulkandeluxe1.net>, <vulkandeluxe1.online>, <vulkandeluxe2.net>, <vulkandeluxe3.com>, <vulkandeluxe3.online>, <vulkandeluxe4.net>, <vulkandeluxe6.com>, <vulkandeluxe6.net>, <vulkandeluxe7.com>, <vulkandeluxe8.net>, <vulkandeluxe9.com>.
Christopher S. Gibson
Sole Panelist
Date: November 29, 2018