WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dareos Ltd. and Dareos Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Sergi Mironenko

Case No. D2021-0892

1. The Parties

The Complainants are Dareos Ltd., Cyprus, and Dareos Inc., Marshall Islands, represented by Mapa Trademarks SL, Spain.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Sergi Mironenko, Ukraine.

2. The Domain Names and Registrar

The disputed domain names <fan-vulcan.com>, <vlk-casino-club.com>, <vlk-casino-online.com>, <vulkan-casino-official.com>, and <vulkano-klub.com> (the “Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2021. On March 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on March 25, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed an amended Complaint on March 30, 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 March 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2021.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on April 28, 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 Background

The Complainant Dareos Ltd. is a limited company organized under the law of Cyprus. The Complainant Dareos Inc. is a corporation organized under the law of the Marshall Islands. These entities manage trademarks for the Ritzio International Group and group member Ritzio Purchase Limited (collectively, “Ritzio”), an entertainment group operating in the Russian Federation (“Russia”) since 1992 and in other European markets since 2005. The group’s website is found at “www.ritzio.eu”. According to the Complaint, the Complainants license the relevant trademarks to Ritzio.

Ritzio owns or manages more than 200 gaming halls and associated entertainment services in Russia, Romania, Germany, Belarus, and Croatia. It also offers online gambling to users in many other countries through websites such as “www.vulkanvegas.com” and “www.vulkanvegas-online.com”, with corresponding mobile applications.

The Complainant Dareos Ltd. is the current registered holder of numerous trademark registrations incorporating VULKAN, VOLCANO, VULCAN or the transliterated Cyrillic equivalent ВУЛКАН, including the following:

The Complaint attaches trademark records showing that some national trademark registrations for the same marks are held by the Complainant Dareos Inc. Hence, both the Complainants are proper parties to this proceeding.

The Complainant Dareos Ltd. also holds International Trademark Registration Number 949162 (registered on January 26, 2007), with multiple country designations including Ukraine, for a figurative mark consisting of an orange and blue capital letter “V”, a logo which is featured on the signage of some of Ritzio’s venues.

Although the Domain Names were initially registered through domain privacy services, after receiving notice of the Complaint in this proceeding the Registrar furnished the following information concerning the registration:

The Respondent registrant did not list an organization.

The original Complaint named as the Respondents the domain privacy service, an apparent owner of the websites associated with the Domain Names, and an apparent license holder of the website owner. Based on the information furnished by the Registrar, the proper Respondent is the registrant Sergi Mironenko, who is denominated as the Respondent hereafter in this Decision. See Policy paragraph 1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.4.5.

The Complainants engaged a digital search company, which demonstrated in February 2021 that the Domain Names were all used at that time for online gambling websites operated by a competitor, as follows:

The Domain Name <vlk-casino-online.com> resolved to a Russian-language gambling website that displayed prominently at the top of the home page a slightly modified version of the Complainants’ trademarked VULKAN figurative mark in color with Cyrillic characters. However, the small-print copyright notice at the bottom of the home page stated that the website was operated by a company other than the Complainant, registered and licensed in the United Kingdom.

The Domain Name <vlk-casino-club.com> redirected to the gambling website at the Domain Name <vlk-casino-online.com>.

The Domain Name <vulkan-casino-official.com> resolved to an essentially identical website.

These facts remain true for these three Domain Names at the time of this Decision.

The Domain Name <fan-vulcan.com>, however, resolved to a Russian-language website selling used Japanese motorcycles “purchased at auctions in Japan and the United States”, as is the case at the time of this Decision. The website operator is identified as “Vulcan LLC”, giving a Moscow address and telephone number and advertising delivery to customers “all over Russia”. The site is replete with photographs of motorcycles and claims that the company was founded in 2001. However, when the digital search company investigated in February 2021, it discovered a “hidden” use of the Domain Name. The subdomain <club.fan-vulcan.com> redirected users to the competing gambling website at the Domain Name <vlk-casino-online.com> described above. That subdomain appears to be functional in the same way at the time of this Decision.

Similarly, the Domain Name <vulkano-klub.com> resolved to a website advertising evening dresses, with a Moscow address and telephone number. But the subdomain <ads.vulkano-klub.com> resolved to a website essentially identical to those at the Domain Names <vlk-casino-online.com> and <vulkan-casino-official.com>. That remains the case at the time of this Decision.

5. Parties’ Contentions

A. Complainants

The Complainants assert that the Domain Names are all confusingly similar to its ВУЛКАН, VULCAN, VULKAN, and VOLCANO word and composite marks. Those with the shortened form “vlk” are “visually and phonetically similar”, and the content of the associated websites reinforced the intended confusion with the Complainants’ marks.

The Complainants contend that the Respondent has no rights or legitimate interests in the Domain Names as the Respondent is not a licensee and is using the Domain Names illegitimately to offer online gambling services under a false impression of association with the Complainants’ licensee. This attempt to deceive consumers must be considered bad faith. The Complainant points to text in the websites associated with the Domain Names that deliberately seeks to enhance the impression that the websites are operated by the Complainants’ Ritzio Group:

“Vulkan Casino has existed for over 20 years and has become a legend in Ukraine, Russia and the CIS countries. The history of Vulkan began in the nineties, with the first land-based gaming clubs …”

This is, of course, Ritzio’s history.

The websites also include “anti-blocking” instructions to help users bypass Internet filtering in countries (such as Ukraine) where online gambling is illegal or heavily restricted. This may also explain why two of the Domain Names mask their activity with apparently legitimate commercial operations on the main website and the gambling website available only through a subdomain.

The Complainants observe that the Respondent’s websites link to further commercial websites through an affiliate program, Profitco. In addition, the Complainants challenge the claim on the Respondent’s websites that the online gambling operates under an E-Gaming License, as it could not be validated.

Finally, the Complainants observe that a previous WIPO panel transferred multiple domain names used for nearly identical websites in 2016, in Ritzio Purchase Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Alex Boolop / Davy Kiba-Gaste, Camelot / Z-P. M, Z-P. M, WIPO Case No. D2016-1981. The Complainants invite the Panel in this instance to reach a similar conclusion.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(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 in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7.

The Complainants have provided evidence that they hold registered VULKAN, VOLCANO, and ВУЛКАН trademarks (word and composite word and figurative marks). Three of the Domain Names are very similar, incorporating the words or transliterations “vulkan”, “vulcan”, or “vulkano”, while two incorporate an abbreviation, “vlk”, that is similar visually and phonetically. 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 addition of dictionary or generic terms such as “casino”, “fan”, “online”, “official”, “club”, or “klub” (another transliteration of “club” from Russian or Ukrainian) does not prevent a finding of confusing similarity. See id. section 1.8. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.2.

The Panel concludes that the first Policy element is established on these facts.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the 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 domain name in connection with a bona fide offering of goods or services; or

(ii) that 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.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainants in this proceeding have demonstrated trademark rights, the lack of permission to use their marks, and the Respondent’s use of the Domain Names for websites presenting a false impression of association with the Complainants’ licensee. This suggests trademark abuse, not evidence of a bona fide commercial activity, so the burden shifts to the Respondent to produce evidence of rights or legitimate interests. The Respondent has not done so.

The Panel concludes, therefore, that the Complainants prevails on the second element of the Policy.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The record reflects such bad faith. The Complainants hold registered, well-established VULKAN word marks and figurative marks, in which the word “vulkan” in Latin or Cyrillic characters is the prominent element. The Respondent is plainly aware of these marks and used them, or made them available to a competitor in the online gaming market, to associate or redirect the Domain Names (or in two cases, subdomains of the Domain Names) to competing online gambling websites. These websites are almost identical to one another in design, graphics, layouts, and texts and present the same set of games, contact information, and payment options. They all prominently feature at the top of the home page a close approximation of the Complainants’ figurative VULKAN trademark, in the multi-color Cyrillic version. They also employ a favicon (at least in some browsers) that incorporates the Complainants’ registered “V” figurative trademark.

The Respondent has clearly used or allowed the Domain Names to be used in a deceptive manner that attacks the Complainants’ marks for commercial gain. Given the fact that the marks were well established long before the Respondent registered the Domain Names, it is likely that the Respondent registered the Domain Names in bad faith with such intent to exploit them for their trademark value from the outset. The Respondent has not come forward to offer an alternative explanation for registering the Domain Names, and the Panel notes that there is evidence in support of this inference in the form of screenshots of the websites associated with the Domain Names. The earliest registered Domain Name, <vlk-casino-club.com>, was registered on December 9, 2016, and by at least February 17, 2017, it resolved to an online gambling website similar to the ones described above, headed with a close approximation of the Complainants’ figurative VULKAN trademark in its multi-color Cyrillic form. Thus, the Respondent appears from the beginning to have been involved in an intentional effort to target the Complainant’s marks for commercial gain and competitive advantage.

The Panel concludes that the Complainants have established bad faith in both the registration and use of the Domain Names.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <fan-vulcan.com>, <vlk-casino-club.com>, <vlk-casino-online.com>, <vulkan-casino-official.com>, and <vulkano-klub.com> be transferred to the Complainants.

W. Scott Blackmer
Sole Panelist
Date: May 5, 2021