Dareos LTD. and Dareos Holding Ltd (former Dareos INC) v; Volodimir Piddubniy

WIPO Case No. D2023-5407

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

DAREOS LTD. and DAREOS HOLDING LTD (former DAREOS INC) v.
Volodimir Piddubniy

Case No. D2023-5407

1. The Parties

The Complainant is DAREOS LTD. and DAREOS HOLDING LTD (former DAREOS INC), Cyprus, represented by Mapa Global Investments SL, Spain.

The Respondent is Volodimir Piddubniy, Ukraine.

2. The Domain Names and Registrar

The disputed domain names <vulkan-royal.casino>, <vulkan777.net>, <vulkan777online.biz>,

<vulkan777online.xyz>, <vylkan777.club> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29,
2023. On January 2, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain names. On January 2, 2024, 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 (Privacy service provided by Withheld for Privacy
ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant
on January 9, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting
the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint

on January 12, 2024.

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 January 17, 2024. In accordance with the Rules, paragraph
5, the due date for Response was February 6, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Parties of the Respondent’s default on February 7, 2024.

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The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on February 9, 2024. 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 an entity based in Cyprus offering gaming, casino and entertainment products and services including the operation of gaming halls and the provision of online gaming and betting services. In Ukraine, where the Complainant has operated since 2021, it operates licensed casinos through an authorized licensee. Its online casino in that country uses the domain name <vulkancasino.ua>.

The Complainant is the proprietor of numerous registrations for marks containing translations of the word
“Vulkan” (including VULKAN, VOLCANO, VULCANO and equivalents in Russian and Ukrainian) in

jurisdictions around the world, including the following:

-	International Trademark No. 791038 for (transliterated as “Vulkan”), registered on September 3, 2002 for services in class 41, designating, inter alia, Ukraine;
-	International Trademark No. 984297 for VULKAN (word mark), registered on August 11, 2008 for services in classes 9, 16, 21, 28, 32, 35, 38, 39, 41, 42, 43 and 45;
-	International Trademark No. 989103 for VOLCANO (word mark), registered on August 11, 2008 for services in class 41, designating, inter alia, Ukraine;
-	Ukrainian Trademarks No. 296191 and 296192 for the word marks ВУЛКАН and VULKAN,
respectively, both registered on April 14, 2021 for services in classes 9, 28, 41 and 42.

The disputed domain names were registered as follows: <vulkan-royal.casino> on May 6, 2020;
<vulkan777.net> and <vylkan777.club> on May 18, 2021; <vulkan777online.biz> and
<vulkan777online.xyz> on June 6, 2022. They all resolve to a website offering online casino and gaming
services under the “Vulkan 777” name with a logo that mimics the Complainant’s figurative mark as indicated

above.

There is no information available about the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions may be summarized as follows:

1.     Request to consolidate proceedings

The Complainant requests consolidation of the proceedings for the following reasons. The entities Dareos

Ltd and Dareos Holding Ltd are trademark owners of the infringed VULKAN marks and have common legal

and business interests regarding the concerned trademarks. Their intellectual property rights are infringed in
a similar fashion by the Respondent and they have a specific common grievance against the Respondent.

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2.     Substantive contentions

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, the Complainant contends that it entered the Ukrainian market in 2021, following the legalization of

gambling in that country in 2020. Its VULKAN mark was already well-known in the region as the

Complainant has operated casinos for 20 years. The disputed domain names reflect the Complainant’s

VULKAN mark, or, in the case of <vylkan777.club>, are a deliberate misspelling thereof. The Complainant

has not authorized the Respondent to use its marks. The disputed domain names resolve to an unlicensed

and unlawful gaming websites that mimic the websites of the Complainant and reflect its VULKAN mark and

logos both on the websites themselves and in the favicons. These websites, which are offered only in the Complainant’s websites. Moreover, the Respondent has copied the Complainant’s online campaign to support the Ukrainian recovery from Russian aggression, and its affiliate program. The Complainant has deliberately attempted to mislead Internet users into believing that the “Vulkan 777” online casinos are operated by the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issue – Consolidation of Proceedings

Pursuant to paragraph 10 of the Rules:

(a)	The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b)	In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

Consolidation of Multiple Complainants

The principles to assess a request to consolidate multiple complainants are set forth in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.11.1.

Noting the circumstances of the case, in particular the fact that both of the Complainants are named as the

proprietors of trademark registrations for VULKAN marks, and the disputed domain names resolve to

websites that reflects marks owned by both of the Complainants. The Panel therefore considers that the
Complainants have a specific common grievance against the Respondent and the Respondent has engaged
in common conduct that has affected the Complainants in a similar fashion. Under the circumstances, the
Panel finds it would be equitable and procedurally efficient to permit the consolidation.

The Respondent does not challenge the Complainants’ assertions nor offer any alternative explanation for these circumstances. Accordingly, the Panel accepts the Complainants’ request to consolidate the present proceedings pursuant to the Rules, paragraph 10(e). The Complainants are hereinafter referred to as the

“Complainant”.

6.2 Substantive Issues

Paragraph 4(a) of the UDRP requires the Complainant to make out all three of the following:

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(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 Respondent has registered and is using the disputed domain names 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

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the Complainant’s VULKAN word mark is reproduced within the disputed domain names

<vulkan-royal.casino>, <vulkan777.net>, <vulkan777online.biz>, and <vulkan777online.xyz>. Accordingly,
the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO

Overview 3.0, section 1.7.

In comparing the Complainant’s mark with the disputed domain name <vylkan777.club>, the Panel finds that

the disputed domain name is confusingly similar to the VULKAN trademark as it is a deliberate misspelling of

the Complainant’s trademark. See WIPO Overview 3.0, section 1.9.

Although the addition of other terms (here, “777”, “royal” and “online”) may bear on assessment of the
second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing
similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview

3.0, section 1.8.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.

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The Panel finds that the disputed domain names, all of which reflect the Complainant’s VULKAN mark,

resolve to commercial websites offering online gaming services. There is no evidence that the Respondent has any right to use the Complainant’s VULKAN mark in connection with these services. Evidence of such activity indicates the Respondent’s lack of rights or legitimate interests. See WIPO Overview 3.0, section

2.9.

Panels have held that the use of a domain name for illegal activity (here, claimed impersonation/passing off) can never confer rights or legitimate interests on a respondent. The Panel notes that the Respondent’s websites contain unambiguous references to the Complainant, such as copying the Complainant’s logo, its affiliate and charity programs, and using the same languages. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark. The disputed domain names reflect the Complainant’s registered and well-established VULKAN mark or a deliberate misspelling thereof. They include additional terms (“777”, “royal”, “online”) and use top-level domains including “.casino” that refer to the Complainant’s business. They all resolve to a website offering services identical to those of the Complainant. The Panel finds that the disputed domain names were registered in bad faith. WIPO Overview 3.0, section 3.1.4.

Panels have held that the use of a domain name for illegal activity (here, claimed impersonation of the Complainant) constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy. In this regard, the Panel particularly notes the Respondent’s use of the Complainant’s registered figural mark, the identity of services offered, the languages used and the other indicia (history, charity program) through which the Respondent attempts to mislead Internet users.

The Panel finds that the Complainant has established the third element of the Policy.

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 <vulkan-royal.casino>, <vulkan777.net>, <vulkan777online.biz>,

<vulkan777online.xyz> and <vylkan777.club> be transferred to the Complainant.

/Ingrīda Kariņa-Bērziņa/

Ingrīda Kariņa-Bērziņa

Sole Panelist
Date: February 23, 2024