WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

MathForum.com, LLC v. Weiguang Huang

Case No. D2000-0743

 

1. The Parties

The Complainant is MathForum.com, LLC, a limited liability company organized and existing under the laws of Pennsylvania having a place of business at 101 S. Chester Road, Suite 400, P.O. Box 156, Swarthmore, PA 19081-0156, USA.

The Respondent is Weiguang Huang, whose full post office address is 124 Eastern Avenue, Kingsford, Sydney, NSW 2032, Australia.

 

2. The Domain Name and Registrar

The domain name in dispute is drmath.com. The Registrar with which the disputed domain name is registered is Network Solutions Inc., 505 Huntmar Park Drive, Herndon, VA 20170, United States of America. The domain name registration drmath.com is in "Active" status.

 

3. Procedural History

The Complaint submitted by Mathforum.com, LLC was received by the WIPO Arbitration and Mediation Center by e-mail on July 6, 2000 and in hard copy on July 7, 2000. The Center acknowledged receipt of the Complaint on July 12, 2000.

On July 12, 2000 the Center sent a Request for Registrar Verification to Network Solutions, Inc. On July 14, 2000 Network Solutions, Inc. e-mailed its reply to the Center confirming that Network Solutions was in receipt of the Complaint sent to Network Solutions by the Complainant and that Network Solutions is the Registrar of the domain name registration drmath.com. Network Solutions advised that the Registrant of the domain name drmath.com is Weiguang Huang, 124 Eastern Avenue, Kingsford, Sydney, NSW 2032, Australia and that the domain name registration is in "Active" status.

On 14 July 2000 the Center completed a Formal Requirements Compliance checklist. The complaint has been filed in accordance with the requirements of the Policy, Rules and the Supplemental Rules and this has been verified by the WIPO Arbitration and Mediation Center. Accordingly in accordance with paragraph 4(c) of the Rules the formal date of commencement of the administrative proceedings is July 17, 2000.

Notification of the Complaint was given to the Respondent on July 17, 2000 by e-mail and post with copies to the Complainant, ICANN and Network Solutions, Inc. The Center advised the Respondent that the last day for sending the Response to the Complainant and the Center is August 6, 2000. The Panel is satisfied that the Respondent was properly notified of the Complaint according to paragraph 2(a) of the Rules.

On July 31, 2000 the Center received the Response from the Respondent by facsimile and e-mail. The hard copies of the Response were received by the Center on August 3, 2000. The Center sent an Acknowledgement of Receipt of the Response to the Respondent by e-mail on August 1, 2000.

In accordance with paragraph 6(f) of the Rules an Administrative Panel was appointed consisting of a single member, Mr. Ross Carson. Mr. Carson has submitted a statement of acceptance and declaration of impartiality and independence. On August 7, 2000 the Center mailed the Complainant and Respondent a Notification of Appointment of Administrative Panel and Projected Decision Date by e-mail to the Complainant and the Respondent advising that an Administrative Panel consisting of a single member had been appointed and that the Administrative Panel was required to forward its decision to the Center by August 20, 2000.

The Panelist is unaware of any further submissions having been made by the Parties.

The Panelist has noted the comments of the Respondent in his Response to the effect that the Complainant entered two wrong dates in the Complaint. As the dates are clearly typographical in nature, and receipt of the Complaint by the Center by e-mail on July 6, 2000 and in hard copy on July 7, 2000 has been documented by the Center, the Panelist does not require a corrected Complaint to be submitted.

 

4. Factual Background

- Complainant, MathForum.com, LLC, has been providing an online math education center at www.mathforum.com. since 1994. One of Complainantís most popular programs is the "DR. MATH" service launched in the fall of 1994 which is provided under the marks "DR. MATH" and "ASK DR. MATH" . The "DR. MATH" service is an interactive question and answer service for K-12 math students and their teachers. A searchable archive of questions and answers is available by level and topic, as well as summaries of Frequently Asked Questions (the Dr. Math FAQ). In the year 2000, there are over 300 volunteers from around the world participating in the service. The "DR. MATH" service of the Complainant was cited in 1999 as one of four Virtual Reference Desk AskA Exemplary Services. (See Exhibit "E" to Complaint.)

- Complainant has used the marks "DR. MATH", "ASK DR. MATH" and a graphic of "Dr. Math" for the services of providing an interactive instructional website in the field of mathematics since the fall of 1994. Complainant has used the mark "ASK DR. MATH" continuously in United States commerce since at least as early as January, 1995.

- Complainant advises that Complainant filed trademark applications in the U.S. Patent and Trademark Office in November, 1999 for the marks "ASK DR. MATH" and "DR. MATH" for providing interactive training over the Internet on the subject of teaching mathematics, and providing access to an online computer database containing information on teaching mathematics. Complainant did not provide copies of its trademark applications.

- On November 9, 1999 Respondent registered the domain name drmath.com with Network Solutions. In or about November 1999, Respondent began operating a web site under the domain name "drmath.com". On the website, Respondent uses the headings "DrMath," "Ask DrMath" and "Maths Forum". See Exhibit "F" to Complaint. In the earlier version of the website, the Respondent used the "DrMath" logo. Respondent withdrew the "DrMath" logo from the website after a cease and desist letter from the legal representatives of the Complainant.

- Respondent advises that he has been the author and owner of math software products named SymbMath/VisualMath/DrMath for about ten years. (see Response). Respondent appears to have changed the "VisualMath" mark to "DrMath" in or around November 1999. See message to users on 11 November 1999 on Visualmath site stating "VisualMath renamed to DrMath has new address".

- Respondent has sites receiving and answering math questions. A moving banner at the top of the Respondentís website advises users "PLEASE POST YOUR MATH QUESTION INTO MATHS FORUM". (Exhibit "F" to Complaint).

- Respondent is the registrant of approximately 29 domain names including "drmath.com" or variations thereof, namely drmath.com, doctormaths.com and drmaths.com and offers some domain names for sale or lease (see Exhibit "I" to Complaint).

 

5. Partiesí Contentions

A. Complainant

The Complainant submits

(a) that the domain name is confusingly similar to a mark in which the Complainant has rights;

(b) that the Respondent has no rights or legitimate interests in respect of the domain name;

(c) that the Respondent has registered and is using the domain name in bad faith.

In support of these contentions the principal submissions of the Complainant are as follows:

(a) The "drmath.com" domain name of Respondent, complained of herein, is identical and/or confusingly similar to the "Dr. Math" and "Ask Dr. Math" trademarks in which Complainant has rights.

Complainant claims to be the owner of the trademarks Dr. Math and Ask Dr. Math. It submits that its trademark rights have accrued through use of the mark by the Complainant on the internet in connection with the provision of an on-line math education center at www.mathforum.com for more than six years. As a result of this use, the Complainant submits that it has acquired rights in the marks.

Complainant has provided a printout of materials from Complainantís website as Exhibit C to the Complaint.

(b) Respondent has no rights in or legitimate interest to the "drmath.com" domain name that is the subject of the Complaint. Complainant has not agreed or consented to Respondentís use or registration of a domain name comprising its well-known "Dr. Math" trademark.

(c) The domain name was registered and is being used in bad faith because:

(1) the "Dr. MATH" and "ASK DR. MATH" marks are known by the Respondent and others to be marks of Complainant;

(2) Respondent registered and is using the "drmath.com" domain name in order to cause confusion among users of math websites;

(3) Respondent is a cybersquatter trafficking in domain names;

(4) Respondent has refused to respond to Complainant when it notified the Respondent of its objection to the domain name; and

(5) Respondent is using the "DRMATH.COM" domain name in connection with selling a commercial software product under the name "drmath" (previously known as "VisualMath") which does not serve the purpose suggested by the "DRMATH.COM" domain name, for the sole purpose of trading off Complainant's goodwill in its "DR.MATH" mark.

Complainant advises that in November 1999 Complainant contacted the Respondent alleging that Respondentís of the domain name in dispute "drmath.com" violated Complainantís rights in its "Ask Dr. Math" and "Dr. Math" trademarks under United States law. Complainant requested that Respondent promptly take steps to terminate all use of the "Dr. Math" and "Ask Dr. Math" as a name, mark or domain name. Respondent did not respond to Complainant and on March 8, 2000, trademark counsel for Complainant sent a letter repeating the demands made by Complainant, and noting additional violations of the Complainantís intellectual property rights by the Respondent. See Exhibit "G".Respondent subsequently ceased its use of the "DrMath" logo on the website, but has, to date, continued use of the "drmath.com" domain name and the words "DrMath" and "Ask DrMath", and the "MATH FORUM" mark.

B. Respondent

Respondent states that Respondent was never user of and contributor to Complainantís "mathforum.com" website and "DR. MATH" services." Respondent contends that he had not known about Complainant's website and services before 2000.

Respondent contends that he did not use two words "Dr. Math", only used

a single word "DRMATH". Respondent states "When search for a word DRMATH, online database of TARR at website tarr.uspto.gov found no result. This is because the mark "DRMATH" is a single word, but the mark "DR. MATH" is two words that is seperated by both a dot and a space. They are different."

Respondent advises he did not have knowledge of the Complainant's trademark before he registered the domain name. Registration of the domain name was earlier than the application for the trademark by the Complainant. Respondent advises that did not change the "VisualMath" mark to two words "Dr. Math", but to a single word "DRMATH" and claims that a single word "DRMATH" is different from two words "Dr. Math".

Respondent states that he has " been the author and owner of the math software products named SymbMath/VisualMath/DrMath for about ten years. As early as in 1992, many international magazines and journals have published reviews of these software products. E.g. the international magazine IEEE Micro, 1992, Feb., issue 12(1), page 76. A year ago, before the dispute, I used the domain name and the software product name corresponding to the domain name in connection with an offering of goods and services. "

Respondent advises that he filed an application for the trademark DRMATH in Australia in 1999.

Respondent states "Since 1999, I registered and have been making fair use of the domain name corresponding to my software product name DRMATH for my users to free download my software products. A lot of copies of my software have been freely downloaded. More than 50,000 visitors have been to my web site. I have been commonly known by the domain name. "

Respondent did not provide any evidence to support his statements.

Respondent denies that he received communications from the Complainant in November 1999.

Respondent advises " My website did declare: This web site's products and services are not related to other web sites or services. Info provided by outside link is owned by its owner."

Respondent contends that his product is different from the Complainantís product. Respondent claims that his software product "DRMATH" is a product in software

industry for scientists or engineers.

 

6. Discussion and Findings

The Rules, at paragraph 15(a), require the Administrative Panel to decide on the basis of the statements and documents submitted in accordance with the Uniform Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4.a. of the Uniform Policy, the Complainant bears the onus of proof and must establish:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no legitimate interests in respect of the domain name;

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

Identical or Confusingly similar to the Complainantís Trademark or Service Mark Rights.

The Complainant herein is the owner of unregistered trade marks. One issue is whether paragraph 4.a.(i) of the Uniform Policy applies to unregistered as well as registered trademarks. This issue was addressed by the Panelist in MatchNet plc. v MAC Trading, Case No. D200-0205 where the Panelist held that paragraph 4.a.(i) of the Uniform Policy applied both to unregistered and registered trademarks or service marks. We are in agreement with the reasons of the Panelist in MatchNet plc. v MAC Trading, Case No. D200-0205 as expressed below.

In The British Broadcasting Corporation v. Jaime Renteria (WIPO Case D 2000- 0050, March 23, 2000) the Administrative Panel addressed the question of unregistered trade marks and stated at page 6 of the decision: "This Administrative Panel acknowledges that the Uniform Policy in paragraph 4(a)(i) refers merely to a 'trademark or service mark' in which the Complainant has rights, and in particular does not expressly limit the application of the Uniform Policy to a registered trademark or service mark of the Complainant. Further, this Administrative Panel recognizes that the WIPO Final Report on the Internet Domain Name Process (the Management of Internet Names and Addresses: Intellectual Property Issues, April 1999), from which the Uniform Policy is derived, does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names. It is therefore open to conclude that the Uniform Policy is applicable to unregistered trademarks and service marks."

In Bennett Coleman & Co. Ltd. v. Steven S Lalwani and Bennett Coleman & Co. Ltd. v. Long Distance Telephone Company (WIPO Consolidated Cases D 2000-0014 and D 2000-0015, March 11, 2000) the Administrative Panel stated at page 4 of the decision: "The Respondents have also asserted that the Complainant's Indian trade marks are no longer registered. Whether or not that is so, it is clear that the Complainants have a very substantial reputation in their newspaper titles arising from their daily use in hard-copy and electronic publication. In India itself wrongfully adopting the titles so as to mislead the public as to the source of publications or information services would in all likelihood amount to the tort of passing off. As is already stated, it is this reputation from actual use which is the nub of the complaint, not the fact of registration as trade marks."

Referring to the above decisions, in SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs (WIPO Case D 2000 - 0131, April 13, 2000) the Administrative Panel accepted that the Rules do not require that the Complainant's trade mark or service mark be registered by a government authority or agency for such rights to exist.

This Administrative Panel accepts the reasoning of the above decisions and based on the information and material provided by the Complainant concludes that DR. MATH is a traemark for the purposes of paragraph 4.a.(i) of the Rules. The Administrative Panel accepts the Complainant's claim that it has rights in said common law trademark.

The Respondent states that the Complainant uses "DR. MATH" as a trademark in relation to an interactive website providing question and answer services provided by math experts for K-12 students and their teachers. The Respondent submits that Respondent does not compete directly with the Complainant as the Respondent uses "DRMATH.COM" in relation to a software industry for scientists and engineers. Exhibit F to the Complaint shows information from the "drmath.com" website. The website discloses the use of Maths Forum corresponding to part of the Complainantís name Math Forum.com, LLC. The same webpage also contains the information "New version 3.2 of DrMath is online and download. Please post your math question into Maths Forum". The Respondent by referring to posting your math questions with MATH FORUM on Respondentís website is using MATH FORUM and DrMath so as to create an impression that the Respondentís goods are somehow connected trade with the Complainantís trademarks. The Complainant alleges and the Respondent has not denied that Respondentís drmath.com website previously also included Complainantís DR. MATH logo. Having regard to use by the Respondent of Complainantís trademarks and logo on Respondentís "drmath.com" webpage I conclude that the Respondentís domain name is confusingly similar to the Complainantís unregistered trademarks DR. MATH and ASK DR. MATH.

Legitimate Interest of the Respondent

Paragraph 4.c. of the Uniform Policy provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4.a.(ii) of the Uniform Policy:
(i) that before any notice to the Respondent 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 (as an individual, business, or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate non-commercial 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.

The Panelist finds on a review of the statements and evidence file and in particular upon review of portions of the Respondentís own "drmath.com" website as shown in Exhibit "F" to the Complaint that Respondent uses MATH FORUM and other trademarks of the Complainant on Respondentís website. Rather than supporting a finding of a legitimate interest to the domain name, the facts disclose an attempt by the Respondent to associate Respondentís software with the Complainantís trademarks MATH FORUM, DR. MATH or ASK DR. MATH used in association with online services for math students, teachers and parents.

The Panel concludes that the Complainant is correct in its assertion that the Respondent has no rights or legitimate interest in the domain name.

Bad Faith

Paragraph 4.b. of the Uniform Domain Name Dispute Resolution Policy provides that for the purposes of paragraph 4.a.(iii) of the Uniform Domain Name Dispute Resolution Policy, "the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) that the Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location.
The Administrative Panel finds on a balance of probabilities that the Respondent has intentionally attempted to attract for commercial gain internet users to its web site by using the domain name drmath.com which is likely to cause confusion with the Complainantís web site. The Respondent has used its web site to provide math-related services similar to the Complainantís services under the domain name drmath.com in addition to offering software products for sale under the trademark DRMATH. A copy of the webpage at www.drmath.com/right/html shown at Exhibit F to the complaint includes the following mentions of DrMath:
(a) the words "DrMath, 1+1=?
(b) Three children at school desks under which appear the words Ask DrMath.com
(c) The words: New version 3.2 of DrMath is online and download. Please post your math question into Maths Forum
(d) Free download software... 1. DrMath (former VisualMath).
A moving banner on the website directing users to submit questions to MATHS FORUM (Exhibit F) will lead users familiar with the services of the Complainant to believe the users are on the website of the Complainant MathForum.com, LLC. The use of the words DrMath and Ask DrMath.com on the Respondentís website will lead other users to believe that user is on the website run by the Complainant MathForum.com, LLC. or on a website sponsored, affiliated or endorsed by the Complainant.
The Complainant has established on a balance of probabilities that the domain name in dispute "drmath.com" has been registered and is being used by the Respondent in bad faith. The Complainant has established evidence of the registration and use of the domain name in dispute under paragraph 4.b.(iv) of the Uniform Domain Name Dispute Resolution Policy.

 

7. Decision

The Administrative Panel decides that the Respondent has registered the domain name drmath.com which is confusingly similar to the Complainant's trademarks, that the Respondent has no rights or legitimate interest in respect of that domain name and that the Respondent has registered and is using the domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name drmath.com should be transferred to the Complainant.

 


 

Ross Carson
Panelist

Dated: August 17, 2000