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D2020-2581 - WIPO Domain Name Decision

The Complainants are Dareos Ltd., Cyprus (“First Complainant”), and Dareos Inc., Marshall Islands (“Second Complainant”), both represented by Mapa Trademarks SL, Spain. The Respondents are Private Whois, Global Domain Privacy Services Inc., Panama / Anastasia Voloshina, Russian Federation; Alexander Strunin, Russian Federation; Natalya Pladzidina, Russian Federation; Nikolay Sharov, Russian Federation; Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Aleksey Petrov, Russian Federation; Ivan Ivanov, Russian Federation; Denis Belov, Asocial Games Ltd., Belize; and, Domain Admin, Privacy Protect, LLC (Privacy Protect.org), United States / Nikolay Nefedov, IT. The disputed domain names are registered with URL Solutions, Inc. d/b/a Public Domain Registry.com, collectively hereafter referred to as the “Registrars”). The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2020. On October 5, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names.

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On October 6, 7, and 8, the Registrars transmitted by emails to the Center their verification responses 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 October 9, 2020, 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 October 14, 2020.

On October 14, 2020, the Center sent a clarification request to the Complainant. The Complainant filed a second amended Complaint on October 19, 2020. The Center verified that the Complaint, together with the amended Complaints, 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 October 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2020. Accordingly, the Center notified the Respondent’s default on November 10, 2020. The Center appointed Kaya Köklü as the sole panelist in this matter on November 13, 2020. 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. The Complainants are two affiliated companies sharing the same company name. They are the owners of the Вулкан, VULKAN, and VOLCANO trademarks. These trademarks are in use since 1992 and were purchased from Ritzio Purchase Limited (referred to in the following as “Ritzio”).

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Today, Ritzio is a licensee of the First Complainant with an alleged revenue of more than USD 5.5 billion alone between 20. Matchbet LLC is a licensee of the Second Complainant and provides online gaming activity under the Вулкан and VULKAN trademarks, particularly via a website connected to the domain name . Both Complainants own a portfolio of registered word and figurative trademarks for VULKAN, VOLCANO, and Вулкан (which is the Russian translation of “Volcano” or “Vulcan”).

The First Complainant owns various International and European Union Trademark Registrations, including International Trade Mark Registration No. 984297, for VULKAN, registered on August 11, 2008, and International Trade Mark, Registration No.   989103, for VOLCANO registered on August 11, 2008 (Annex 3 to the Complaint).  

The Second Complainant owns various national trademark registrations, particularly in the Balkan countries and the Russian Federation, including Russian Federation Trademark Registration No. 216203, registered on July 3, 2002 (Annex 3 to the Complaint).

Whenever appropriate, all these trademarks are jointly referred to in the following as the “Trademarks”. The Complaint involves 81 disputed domain names, which are registered to multiple Respondents. The date of first registration for all of the disputed domain names is between 20, as can be seen below: [1] 2020-04-09 The Respondents are composed of various individual persons as well as numerous domain name privacy services.

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Some of the Respondents have already been subject to previous UDRP decisions, decided in favor of the Complainants, transferring the majority of the domain names. According to the provided documents in the case file, the disputed domain names resolved to websites, which offered online gambling and casino services and prominently used the Complainants’ trademarks and logos. Additionally, all connected websites had a common link named “affiliate program”, which referred to “ a website designed in a similar way as the websites linked to the disputed domain names. This website also prominently uses the Complainants’ word and figurative trademarks. / Domain Admin, Privacy Protect, LLC (Privacy Protect.org) / Registration Private, Domains By Proxy, LLC / Анастасия Волошина / Алексей Харитонов, Dareos LTD, Dareos Inc., Ritzio Purchase Limited v. As indicated in the case file, the design of the connected websites were identical as in previous WIPO UDRP decisions such as Dareos LTD., Dareos INC. Domain Admin, Privacy Protect, LLC (Privacy Protect.org) / Denis Belov, Asocial Games Ltd. and Domain Admin, Privacy Protect, LLC (Privacy Protect.org) / Ivenkov Vitaly, WIPO Case No. D2019-1304, hereinafter jointly referred to as the “Previous Decisions”.

The Panel has visited all websites linked to the disputed domain names and notes that at the time of the decision none of the disputed domain names are actively used anymore. The Complainants request the transfer of the disputed domain names.