The Complainants are Ritzio Purchase Limited of Nicosia, Cyprus; Dareos Ltd. of Nicosia, Cyprus; and Dareos Inc. of Ajeltake Island, Majuro, Marshall Islands, represented by Mapa Trademarks SL, Spain.
The Respondents are Moniker Privacy Services of Fort Lauderdale, Florida, United States of America, Artur Hasamov of Kirgiz-Miyaki, Russian Federation, Gustavo Frings (the “First Respondent”) of Berlin, Germany, and Oleksandr Nikolaienko (the “Second Respondent”) of Kyiv, Ukraine.
The disputed domain names <playvlkoriginal.com> and <playvlkoriginals.com> are registered with Moniker Online Services, LLC.
The disputed domain names <vklorig.com >, <vlkoriginalsclub.com> and <vlkoriginals.com> are registered with GoDaddy.com, LLC.
The disputed domain names <newclubvulcan.com>, <onlinevlkoriginal.com>, <vulkanoriginalplay.com>,
<vulkanorigonline.com>, and <vulkanorigonline1.com> are registered with Registrar of Domain Names REG.RU LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2018. On August 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 22, 2018, Registrar of Domain Names REG.RU LLC 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. On August 22, 2018, Moniker Online Services, LLC 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. On August 23, 2018, GoDaddy.com, LLC 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 August 24, 2018 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent an email communication in both Russian and English regarding the language of the proceeding. The Complainant requested that the language of the proceeding be English on August 27, 2018. On August 27, 2018, the First Respondent requested that the language of the proceeding be Russian. On August 28, 2018, the Second Respondent requested that the language of the proceeding be Russian. On August 28, 2018, the Complainant filed an amended Complaint.
The Center verified that the Complaint together with the amendment to the Complaint and 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 Respondents of the Complaint, and the proceeding commenced on September 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2018. The Respondents did not submit any formal response. On September 25, 2018, the First Respondent submitted an informal response by email. Accordingly, the Center notified the Parties of the Commencement of Panel Appointment Process.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on October 2, 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.
On October 18, 2018, noting an administrative oversight, the Panel issued Procedural Order No. 1 inviting the Respondent(s) to indicate by October 23, 2018 whether the Respondent(s) wished to participate in the proceeding. No communications by the Respondent(s) were submitted.
The First Complainant and the Second Complainant are companies incorporated in Cyprus. The Third Complainant is a company incorporated in the Marshall Islands.
The First Complainant has, since 1992, been providing gaming, casino and entertainment products and services in the Russian Federation and in certain countries in Europe, including the operation and management of gaming halls; the design, development, provision and maintenance of games of chance, including betting bingo and slot machines; and the provision of online interactive real-money games, under the Russian language trade mark ВУЛКАН, its English language translation VOLCANO, and its English language transliteration, VULKAN (the “Trade Mark(s)”).
The Second Complainant is the owner of several word and device mark registrations for the Trade Marks, including international registration No. 791038 for the ВУЛКАН device mark, registered on September 3, 2002; international registration No. 984297 for the VULKAN word mark, registered on August 11, 2008; and international registration No. 989103 for the VOLCANO word mark, registered on August 11, 2008.
The Third Complainant is the owner of several word and device mark registrations for the Trade Marks, including international registration No. 977713 for the Вулкан device mark, registered on August 12, 2008; Russian Federation registration No. 353692 for the VULKAN word mark, registered on June 25, 2008; and Russian Federation registration No. 361357 for the Вулкан word mark, registered on October 7, 2008.
The First Complainant uses the Trade Marks under licence from the Second Complainant and the Third Complainant.
The Respondents are individuals apparently with addresses in Russia, and in Germany.
The disputed domain names <playvlkoriginal.com>, <playvlkoriginals.com> and <vlkoriginalsclub.com> were registered on November 6, 2017.
The disputed domain name <vklorig.com> was registered on November 3, 2017.
The disputed domain name <vlkoriginals.com> was registered on September 19, 2017.
The disputed domain name <newclubvulcan.com> was registered on June 14, 2018.
The disputed domain name <onlinevlkoriginal.com> was registered on June 4, 2018.
The disputed domain name <vulkanoriginalplay.com> was registered on June 13, 2018.
The disputed domain name <vulkanorigonline.com> was registered on September 12, 2017.
The disputed domain name <vulkanorigonline1.com> was registered on October 19, 2017.
Each of the disputed domain names resolves to the same online casino website (the “Website”).
The Complainants contend that the disputed domain names are identical or confusingly similar to the Trade Marks, the Respondents have no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names were registered and are being used in bad faith.
The Respondents did not formally reply to the Complainants’ contentions. In the First Respondent’s informal email to the Center, the First Respondent made the following submissions:
(i) The First Respondent is the owner of the disputed domain name <vlkoriginals.com> as well as some of the other disputed domain names under the Complaint herein, but sees no reason to list them all;
(ii) The First Respondent is not the operator of the online casino Website, but is just an employee of the operator of the Website;
(iii) When the Respondents received a letter of the Complaint from the Complainants, the Respondents took steps to remove the content that allegedly infringes the Complainants’ copyright from the Website;
(iv) Although the Complainants contend that the content of the Website posted via the disputed domain name <vlkoriginals.com> violates the Complainants’ rights in the Russian Federation, this is not entirely correct as the Website was blocked by the Russian Internet authorities;
(v) In the opinion of the First Respondent, the logos used on the Website are different to the Complainants’ logos;
(vi) The First Respondent agrees that four of the (unspecified) disputed domain names, one of which is owned by the First Respondent, are similar to the Trade Marks; and
(vii) As the total cost of the disputed domain names is USD 100, it might be cheaper for the Complainants to register all domain names containing the word “vulcan” rather than taking this proceeding to trial.
The Second Respondent has only communicated with the Center regarding the language of the proceeding.
Paragraph 10(e) of the Rules provides as follows:
“A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”.
Past UDRP decisions suggest that a complaint may be brought by multiple complainants where (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 (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1).
In the present proceeding, the Complainants have requested consolidation, on the following grounds:
(i) The Complainants have a common legal and business interest in the Trade Marks; and
(ii) The Complainants’ intellectual property rights are being infringed in a similar fashion by the Respondents, and the Complainants therefore have a specific common grievance against the Respondents.
The Respondents have not made any submissions on this issue.
The Panel finds that the Complainants have common grievances against the Respondent, and the Respondents have engaged in common conduct that has affected the Complainants’ rights in a similar fashion.
The Panel also finds that it would be procedurally efficient and equitable to all the Parties for the Complainants to be consolidated.
In all the circumstances, the Panel therefore determines, under paragraph 10(e) of the Rules, that there be consolidation of the disputed domain names and the Complainants in this proceeding.
Previous UDRP decisions suggest that consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the disputed domain names resolve, where consolidation would be fair and equitable to all parties, and where procedural efficiency supports consolidation (see section 4.11.2 of the WIPO Overview 3.0).
In the present proceeding, the Complainants contend as follows:
(i) All of the disputed domain names resolve to the same, identical Website with the same company name, copyright notice and contact email address;
(ii) Some of the disputed domain names were registered on the same day; and
(iii) The Respondents have shielded the registrant details for seven of the disputed domain names using privacy protection services.
The First Respondent claims to be the owner of <vlkoriginals.com> and some others of the disputed domain names. He claims to be an employee working as a webmaster. He also claims to be the owner of the domain name <vulkanoriginalplay.com>.
The rest of the Respondents have not made any submissions on this issue.
In all the circumstances, the Panel concludes that, in particular, the first factor relied upon by the Complainants supports the conclusion that common control is being exercised over the disputed domain names.
In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Respondents is procedurally efficient and equitable to all the Parties, is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in respect of this issue.
The language of the Registration Agreements for the disputed domain names <vulkanorigonline.com>, <onlinevlkoriginal.com>, <vulkanorigonline1.com>, <vulkanoriginalplay.com> <newclubvulcan.com> and <newclubvulcan.com> is Russian. The language of the Registration Agreements for the remaining disputed domain names is English. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainants have requested that the language of the proceeding be English, for the following reasons:
(i) The name of the First Respondent is not a Russian name, and his address is in Germany;
(ii) The Respondents have previously communicated with the Complainants’ representatives in English;
(iii) The Complainants are from Europe and the Republic of Marshall Islands and do business internationally in English;
(iv) The language of the Registration Agreements for half of the disputed domain names is English; and
(v) Conducting the proceeding in English would involve unnecessary additional expense and delay.
The Panel notes that the First Respondent and the Second Respondent have requested that the language of the proceeding should be Russian.
However, the Panel also notes the common control of all the disputed domain names and that some of them had Registration Agreements in English.
In addition, the Panel notes that, as confirmed by the corresponding Registrars, the disputed domain names that were registered in the name of the First and the Second Respondents had English language Registration Agreements.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel finds there is sufficient evidence to suggest the likely possibility that the Respondents are conversant in English. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondents would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
The Complainants must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
Three of the disputed domain names incorporate the entirety of the VULKAN Trade Mark (see WIPO Overview 3.0, section 1.7) - and one of the disputed domain names consists of a common, obvious, or intentional misspelling of the VULKAN Trade Mark (see WIPO Overview 3.0, section 1.9) - together with other non-distinctive terms relating to gambling (see WIPO Overview 3.0, section 1.8).
The remainder of the disputed domain names each consist of an obvious abbreviation of the VULKAN Trade Mark (“VLK” or of “VKL”) together with other non-distinctive terms. Whilst the abbreviation “vlk” or “vkl” arguably does not fall neatly within the categorisation of “a common, obvious, or intentional misspelling” under section 1.9 of WIPO Overview 3.0, the Panel finds, in all the circumstances, and taking into account in particular the broader case context of the Website content trading off the Complainants’ reputation, as detailed under Section D. below (see WIPO Overview 3.0, section 1.7 and section 1.15), that the remaining six disputed domain names are confusingly similar to the Trade Marks.
The Panel therefore finds that each of the disputed domain names is confusingly similar to the Trade Marks.
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainants have not authorised, licensed, or permitted the Respondents to register or use the disputed domain names or to use the Trade Marks. The Panel finds on the record that there is therefore a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondents to produce evidence to rebut this presumption.
The Respondents have failed to show that they have acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the undisputed evidence on the record shows that the disputed domain names have been used in respect of an online casino Website, in direct competition with the gambling products and services offered for many years, including online, by the Complainants under the Trade Marks.
There has been no evidence adduced to show that the Respondents have been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondents are making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondents have failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names.
In light of the manner of use of the disputed domain names highlighted in Section B. above, the Panel finds that the requisite element of bad faith has been made out, under paragraph 4(b)(iv) of the Policy.
The Panel notes, further, that the Website copies the same corporate livery used by the Complainants in connection with the provision of the Complainants’ gambling products and services for many years under the Trade Marks, and features prominently a logo containing the letters “vlk”, which logo is similar in design and colour scheme to the Complainants’ distinctive device mark registrations for the Trade Marks. Furthermore, it speaks volumes that the Respondents have apparently taken steps to remove the allegedly infringing content from the Website, following receipt of a letter of complaint from the Complainants. The Panel finds that the above evidence provides further evidence in support of a finding of bad faith.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and used in bad faith.
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 <playvlkoriginal.com>, <playvlkoriginals.com>, <vklorig.com>, <vlkoriginalsclub.com>, <vlkoriginals.com>, <newclubvulcan.com>, <onlinevlkoriginal.com>, <vulkanoriginalplay.com>, <vulkanorigonline.com> and <vulkanorigonline1.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: October 25, 2018