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WIPO-UDRP Entscheid
D2020-0769

Fallnummer
D2020-0769
Kläger
Dareos Inc., Dareos Ltd
Beklagter
Irina Zenenkova, WhoisGuard, Inc., WhoisGuard Protected, WhoisGuard, Inc.
Entscheider
Isenberg, Douglas M.
Status
Geschlossen
Entscheidung
Transfer, denied in part
Entscheidungsdatum
05.05.2020

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

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

Irina Zenenkova

Case No. D2020-0769

1. The Parties

Complainants are Dareos Ltd., Cyprus, and Dareos Inc., Republic of Marshall Islands, represented by Mapa Global Investments SL, aka Mapa Trademarks, Spain.

Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Irina Zenenkova, Kazakhstan.

2. The Domain Names and Registrar

The disputed domain names <1vlcmaximum.club>, <1vlcmaximum.online>, <2vulcanmaximum.com>, <3vulcanmaximum.com>, <4vulcanmaximum.com>, <maximumvlk.club>, <maximumvulcan.club>, <maximumvulcn.club>, <maximumvulcn.online>, <maximumvulkan.online>, <vlcmaximum.club>, <vlcmaximum1.club>, <vlknmax.online>, <vmaximum.club>, <vmaximum.online>, <vulcancmax.club>, <vulcancmax.info>, <vulcancmax1.online>, <vulcanmaximum.com>, <vulcanmaximum1.com>, <vulkanmaximum1.com>, <vulkanmaximum2.com>, <vulkanmaximum3.com>, and <vulkanmaximum4.com> (the “Disputed 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 31, 2020. On April 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On April 1, 2020, 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 Complainant on April 1, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Center also sent an email communication to Complainant on April 1, 2020, informing Complainant that the Complaint exceeded the 5,000-word limit specified in paragraph 11(a) of the Supplemental Rules. Complainant filed an amended Complaint on April 3, 2020.

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 Respondent of the Complaint, and the proceedings commenced on April 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 24, 2020.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on April 27, 2020. 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

Complainants state that they are the owners of the VULKAN Trademark (defined below), which Complainants (and, previously, the “former trademark owner Ritzio Purchase Limited” (“Ritzio”)) has used since 1992 in connection with “high-quality gaming, casino and entertainment products and services, 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.” Complainants further state that Ritzio “is one of the leading gaming operators and its business continue to expand far beyond Russia” and that Ritzio had operating revenue between 2006 and 2020 “was in excess of USD $5.5 billion,” with “more than 2,000 employees, more than 230 Вулкан and/or Vulkan branded gaming clubs and more than 6300 gaming machines deployed throughout Europe as a high-quality, technologically advanced, multi-national gaming operator.”

Complainants state, and provide evidence to support, that they own 46 trademark registrations worldwide that consist of or include the word “Vulkan” (the “VULKAN Trademark”), including International Reg. No. 984297 for VULKAN (registered August 11, 2008).

The Disputed Domain Names were created on or between July 12, 2018, and June 25, 2019. Complainants state, and provide evidence to support, that the Disputed Domain Names are being used by Respondent in connection with websites that “copy the look-and-feel of Complainant’s gaming clubs” and “provide online gaming services that are competitive to those offered in connection with the [VULKAN Trademark].”

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- Each of the Disputed Domain Names is confusingly similar to the VULKAN Trademark because most of the Disputed Domain Names “include the word element ‘[vulkan]’ or ‘[vulcan]’ which is identical to” the VULKAN Trademark; the addition of “the generic terms ‘maximum’, ‘max’, and mixing some of them with Arabic numerals… [is] considered irrelevant under Policy and do not affect the confusing similarity of domain names and trademarks”; and those of the Disputed Domain Names that do not include the words “vulkan” or “vulcan” include instead “acronyms of [the VULKAN Trademark], intentional misspelling or typosquatting which still refers to the business conducted under [the VULKAN Trademark] aiming to mislead users” and “there is a clear indication of the casino Вулкан/Vulcan/Volcano… on all the pages of the Respondent’s websites.”

- Respondent has no rights or legitimate interests in respect of any of the Disputed Domain Names because, inter alia, “Respondent is not a licensee of Complainant nor is authorized to use of any of the [VULKAN Trademarks] in any way”; “Respondent has not developed any legitimate business relating to or incorporating the [VULKAN Trademark]”; “been commonly known by the disputed domain names”; and “the commercial use to which the disputed domain name has been put, because it trades on the [VULKAN Trademarks] fame, is not bona fide, and because it is commercial is not a fair or non-commercial use.”

- The Disputed Domain Names were registered and are being used in bad faith because, inter alia, Respondents have created “full-functional online-casinos” in connection with the Disputed Domain Names,” resulting in “‘copycat’ websites” that “directly attempt[] to deceive consumers”; and “one of the Respondents, Irina Zenenkova, was previously associated with the [VULKAN Trademark], namely, she was the respondent in the similar WIPO cases D2018-2151, D2018-2736[,] and D2019-0028 decided in Complainant’s favor.”

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainants are required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainants have rights; (ii) 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. Policy, paragraph 4(a).

A. Preliminary Issue: Multiple Complainants

As noted above, the Complaint was filed by both Dareos Ltd and Dareos Inc. As set forth in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1: “In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (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.” Although the Complaint does not expressly explain the legal relationship between these two entities, the Complaint states that they “are trademark owners of the infringed [VULKAN Trademark] and have common legal and business interest regarding the concerned trademarks.” Further, previous decisions under the Policy have allowed consolidation of the same two Complainants as in the instant proceeding. See, e.g., Dareos LTD., and Dareos INC. v. Pavel Balabanov et al., WIPO Case No. D2020-0133; Dareos LTD, Dareos Inc., Ritzio Purchase Limited v. Domain Admin, WIPO Case No. D2019-1304; and Dareos Ltd, Dareos Inc., Ritzio Purchase Limited v. Moniker Privacy Services et al., WIPO Case No. D2019-0533.

Accordingly, the Panel finds it proper to allow both Complainants to appear in this proceeding.

B. Preliminary Issue: Multiple Respondents

The original Complaint was filed against three respondents – Irina Zenenkova, WhoisGuard Protected, and WhoisGuard, Inc. – and included facts and legal arguments as to why it was proper to include all three entities in the Complaint. However, the Registrar’s response to the Center’s verification request identified only one entity, Irina Zenenkova, as the registrant of all of the Disputed Domain Names. Accordingly, it is unnecessary for the Panel to consider Complainants’ arguments on this issue, as it is now moot.

C. Identical or Confusingly Similar

Based upon the trademark registration cited by Complainants, it is apparent that Complainants have rights in and to the VULKAN Trademark.

As to whether the Disputed Domain Names are identical or confusingly similar to the VULKAN Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Names only because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview 3.0, section 1.11.1. Accordingly, the Panel considers only the following: <1vlcmaximum>, <1vlcmaximum>, <2vulcanmaximum>, <3vulcanmaximum>, <4vulcanmaximum>, <maximumvlk>, <maximumvulcan>, <maximumvulcn>, <maximumvulcn>, <maximumvulkan>, <vlcmaximum>, <vlcmaximum1>, <vlknmax>, <vmaximum>, <vmaximum>, <vulcancmax>, <vulcancmax.info>, <vulcancmax1>, <vulcanmaximum>, <vulcanmaximum1>, <vulkanmaximum1>, <vulkanmaximum2>, <vulkanmaximum3>, and <vulkanmaximum4>. These second-level domains can be categorized as follows:

1. Disputed Domain Names that contain the word “vulkan”: <maximumvulkan.online>, <vulkanmaximum1.com>, <vulkanmaximum2.com>, <vulkanmaximum3.com>, and <vulkanmaximum4.com>.
2. Disputed Domain Names that contain the word “vulcan”: <2vulcanmaximum.com>, <3vulcanmaximum.com>, <4vulcanmaximum.com>, <maximumvulcan.club>, <vulcancmax.club>, <vulcancmax.info>, <vulcancmax1.online>, <vulcanmaximum.com>, and <vulcanmaximum1.com>.
3. Disputed Domain Names that contain the letters “vlk”: <maximumvlk.club> and <vlknmax.online>.
4. Disputed Domain Names that contain the letters “vlc”: <1vlcmaximum.club>, <1vlcmaximum.online>, <vlcmaximum.club>, and <vlcmaximum1.club>.
5. Disputed Domain Names that contain the letters “vulcn”: <maximumvulcn.club> and <maximumvulcn.online>.
6. Disputed Domain Names that contain the letter “v” and the word “maximum”: <vmaximum.club> and <vmaximum.online>.

With respect to those of the Disputed Domain Names listed in categories 1 and 2 above: Section 1.7 of WIPO Overview 3.0 states that, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” See also section 1.9 of WIPO Overview 3.0 (“[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”). And section 1.8 of WIPO Overview 3.0: “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.”

With respect to those of the Disputed Domain Names listed in categories 3, 4, and 5 above: The Panel considers section 1.15 of WIPO Overview 3.0, which states that, “[i]n some instances, panels have… taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.” See also section 1.7 of WIPO Overview 3.0: “[P]anels have also found that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant.”

With respect to those of the Disputed Domain Names listed in category 6 above (for clarity, <vmaximum.club> and <vmaximum.online>): The Panel finds that the only similarity between these of the Disputed Domain Names and the VULKAN Trademark is the letter “v”, given that none of the VULKAN Trademarks identified by Complainants includes the word “maximum.” While the content of the websites associated with these of the Disputed Domain Names may clearly indicate that Respondent targeted Complainants, these Disputed Domain Names themselves cannot be said to be confusingly similar to the VULKAN Trademark.

While it is true that section 1.7 of WIPO Overview 3.0 says “[i]t is well accepted that the first element functions primarily as a standing requirement” – which panels have frequently interpreted as stating that the threshold for meeting the first element is low – the same section says that the test “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.” Here, given that the only similarities between the Disputed Domain Names in category 6 above and the VULKAN Trademark is the presence of the initial letter “v”, the Panel does not find that the VULKAN Trademark is recognizable within these Disputed Domain Names.

Further, while it is also true that panels “take[ ] note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name,” in the Panel’s view the mere occurrence of the single letter “v” here does not provide a sufficient basis to do so. This finding is not inconsistent with previous decisions under the Policy in which other panels have found shortened versions of trademarks appearing in domain names to be confusingly similar to those trademarks after evaluating the content on the websites using those domain names. For example, in finding a domain name that contained the letters “tind” confusingly similar to the trademark TINDER (which domain name was one of 13 in that particular case), a panel noted that the similarity consisted of four letters (of a six-letter trademark), whereas here the similarity is but a single letter and the relevant mark is six letters. Tinder, Inc. v. Whoisguard Protected, Whoisguard, Inc. / jesus johnson, jesus inc, WIPO Case No. D2017-0106. Plus, the panel in that case “cautions future complainants against relying on this approach in circumstances in which there is scant basis or no basis at all for a finding of confusing similarity.” The Panel here finds that this dispute is analogous in some way to the decision in Viacom International, Inc. (“Viacom”) v. na, Max Crossan and Max Fret, WIPO Case No. D2008-2003, in which the Panel found the domain name <allsp.com> was not confusingly similar to the trademark SOUTH PARK, writing: “The UDRP was designed to resolve clear cases of cyber squatting, but not to provide a mechanism for the resolution of disputes concerning content per se. Although website content may be relevant under the Policy in relation to assessing bad faith, a complainant would still need to satisfy the threshold requirement of right in a mark to which the disputed domain name is identical or confusingly similar.”

Accordingly, the Panel finds that Complainant has proven the first element of the Policy with respect to the following of the Disputed Domain Names: <1vlcmaximum.club>, <1vlcmaximum.online>, <2vulcanmaximum.com>, <3vulcanmaximum.com>, <4vulcanmaximum.com>, <maximumvlk.club>, <maximumvulcan.club>, <maximumvulcn.club>, <maximumvulcn.online>, <maximumvulkan.online>, <vlcmaximum.club>, <vlcmaximum1.club>, <vlknmax.online>, <vulcancmax.club>, <vulcancmax.info>, <vulcancmax1.online>, <vulcanmaximum.com>, <vulcanmaximum1.com>, <vulkanmaximum1.com>, <vulkanmaximum2.com>, <vulkanmaximum3.com>, and <vulkanmaximum4.com>.

And the Panel finds that Complainant has not proven the first element of the Policy with respect to the following of the Disputed Domain Names: <vmaximum.club> and <vmaximum.online>.

Accordingly, for the remainder of this decision, references to the Disputed Domain Names excludes <vmaximum.club> and <vmaximum.online>.

D. Rights or Legitimate Interests

Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, “Respondent is not a licensee of Complainant nor is authorized to use of any of the [VULKAN Trademarks] in any way”; “Respondent has not developed any legitimate business relating to or incorporating the [VULKAN Trademark]”; “been commonly known by the disputed domain names”; and, “the commercial use to which the disputed domain name has been put, because it trades on the [VULKAN Trademarks] fame, is not bona fide, and because it is commercial is not a fair or non-commercial use.”

WIPO Overview 3.0, section 2.1, states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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.”

The Panel finds that based on the facts described above, Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.

E. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

As numerous previous decisions under the Policy have found, “the practice of registering a domain name and using it to redirect a user to a website which is used for the sale of competing services constitutes evidence of registering and using a trademark in bad faith.” Arla Foods amba v. Jucco Holdings, WIPO Case No. D2006-0409. See also, e.g., Compagnie Générale des Etablissements Michelin v. Serdar Ars / Serdar Arslan, WIPO Case No. D2015-0658 (finding bad faith where “the disputed domain name resolved to a website which related to the Complainant’s products and had the look and feel of the Complainant’s official website” and “sell[s] the Complainant’s products” without “a clear and prominent disclosure as to the relationship between the Respondent and the Complainant”); and General Electric Company v. Japan, Inc., WIPO Case No. D2001-0410 (“Regardless of the nature of Respondent’s business and its dealing with products of [complainant], it is unauthorized to use the [complainant’s] [m]arks in connection with its business or imply that there is an affiliation, association, or endorsement of its business by [complainant] through its use of the Domain Name. Respondent’s Domain Name is likely to confuse consumers to believe that they have reached a website of [complainant]”).

In addition, given the numerous Disputed Domain Names in this proceeding, as well as previous proceedings against Respondent that have been cited by Complainants, it is obvious that Respondent has engaged in “a pattern of such conduct” under paragraph 4(b)(ii) of the Policy, also establishing bad faith.

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 disputed domain names <1vlcmaximum.club>, <1vlcmaximum.online>, <2vulcanmaximum.com>, <3vulcanmaximum.com>, <4vulcanmaximum.com>, <maximumvlk.club>, <maximumvulcan.club>, <maximumvulcn.club>, <maximumvulcn.online>, <maximumvulkan.online>, <vlcmaximum.club>, <vlcmaximum1.club>, <vlknmax.online>, <vulcancmax.club>, <vulcancmax.info>, <vulcancmax1.online>, <vulcanmaximum.com>, <vulcanmaximum1.com>, <vulkanmaximum1.com>, <vulkanmaximum2.com>, <vulkanmaximum3.com>, and <vulkanmaximum4.com> be transferred to Complainants.

And the Complaint is denied with respect to the following disputed domain names: <vmaximum.club> and <vmaximum.online>.

Douglas M. Isenberg
Sole Panelist
Date: May 5, 2020