WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coolmath.com LLC v. PrivacyGuardian.org / Aamir Munir Butt, cool math games
Case No. D2016-2203
1. The Parties
The Complainant is Coolmath.com LLC of New York, New York, United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
The Respondent is PrivacyGuardian.org of Phoenix, Arizona, United States / Aamir Munir Butt, cool math games of Farooqabad, Pakistan, represented by Ibtsam Rashif Mirza, Pakistan.
2. The Domain Name and Registrar
The disputed domain name, <coolmath-mathgames.com> (the “Domain Name”), is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2016. On November 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 2, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 3, 2016 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 November 3, 2016.
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 November 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2016. The Response was filed with the Center on November 26, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 1, 2016. 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.
The invitation from the Center to the Complainant to amend the Complaint stemmed from the fact that the underlying registrant of the Domain Name, Aamir Munir Butt, had been availing himself of the Registrar’s privacy service, PrivacyGuardian.org. In this decision the Panel treats Aamir Munir Butt as the beneficial owner of the Domain Name and all references to the Respondent are references to Aamir Munir Butt.
4. Factual Background
The Complainant is based in New York. It is engaged in the online provision of maths games. The Complainant’s website at “www.coolmath.com” was selected as the BBC Scotland pick of the week for the week of March 22, 1999 and in July 1999 it was selected as Education Planet’s top math site for the week of July 12, 1999. It also provides online games via its websites at “www.coolmath-games.com” and “www.coolmath4kids.com”.
On July 2, 2007 the Complainant applied for registration of its COOLMATH trade mark. The registration came through under number 3404699 on April 1, 2008 in class 41 for “computer services, namely, providing on-line website in the field of mathematics and science education; entertainment services, namely, providing on-line computer games in the field of mathematics and science education.”
The Complainant is also the registered proprietor of United States Registration number 4671364 for COOLMATH-GAMES for the same computer services. The application was filed on June 10, 2014 and the registration came through on January 13, 2015 but the Panel accepts the Complainant’s evidence (not challenged by the Respondent) that the trade mark had been in use since 2004.
The Complainant has been involved as the complainant in several previous proceedings under the Policy, namely: Coolmath.com LLC v. Bilal Bilkay, WIPO Case No. D2015-0067 (<coolmathgames-com.com>); Coolmath.com LLC v Joesph Golden, WIPO Case No. D2015-0384 (<coolmathkids.org>); Coolmath.com LLC v. Wiley Prince / PrivacyGuardian.org, WIPO Case No. D2015-0397 (<coolmathgamesonline.org>); Coolmath.com LLC v PrivacyGuardian.org / Mai Trung Hieu, An Tranh Company, WIPO Case No. D2016-1168 (<coolmathgameonline.com>). In all those cases the Complainant was held to have had relevant trade mark rights in respect of its COOLMATH trade mark and in all cases the domain names in issue were ordered to be transferred to the Complainant.
The Domain Name was created on May 8, 2015 and is connected to a website inviting visitors to “Play Online Cool Math Games and Cool Puzzles Free.” The website features a 2016 copyright notice. It also features a notice reading:
“Must Read: coolmath.com LLC is a Registered Trademark and property of someone else. My website coolmath-mathgames.com have no connection/partnership/affiliation with that site or Mark.
I am working individually and these both websites are different. Do not see both websites as same on any platform.”
On October 12, 2016, the Complainant’s representative wrote to the Registrar’s privacy service, the entity appearing on the Registrar’s database as the owner of the Domain Name, drawing attention to the Complainant’s trade mark rights and seeking inter alia transfer of the Domain Name.
The Complainant’s representative received no reply.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s COOLMATH registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.
The Complainant asserts that it has no association with the Respondent and contends that the similarities between the Complainant’s websites and the Respondent’s website are designed by the Respondent to cause confusion. The Complainant is concerned that the Respondent’s website that appears very similar to the Complainant’s website offers some games which would never be permitted on the Complainant’s website (e.g. games featuring guns and violence).
The Respondent points to what he sees as a contradiction in terms between the Complainant’s claim to common law rights dating back to 1997 and a trade mark registration dated April 1, 2008. The Respondent asserts that “Coolmath” is an ordinary English descriptive term denoting “a soothing or comfortable mathematical mental trail using animation/games.” He contends that that term is widely in use by others and points to several similar domain names apparently in use by others, namely <coolmathgames.org.uk>, <coolmath3.org>, <coolmathgames.biz>, <coolmathforkids.info>, <coolmath.co.uk>, <coolmathguy.com>, <coolmath.cc>, <coolmathgames-run.com>, <coolmathgames1.net>, <coolmathgames.us> and <cool-mathgames.news>.
The Respondent denies that the Domain Name is confusingly similar to the Complainant’s trade mark. He asserts that the hyphen and additional material in the Domain Name are sufficient to distinguish it from the Complainant’s trade mark. He asserts that he is not infringing the Complainant’s trade mark because the nature of his service offering is different (it features games for pure entertainment as well as educational games) and he is offering his service outside the Complainant’s geographical area of operation. He asserts that there are other COOLMATH trade marks owned by other parties and that the trade mark is not automatically associated with the Complainant.
The Respondent contends that he is making a legitimate non-commercial or fair use of the Domain Name. He concedes that his website has banner advertisements, but claims that the revenues earned thereby are “modest and serve only to cover the hosting and maintenance costs of the site and not for personal gain”.
The Respondent also relies upon the disclaimer appearing on his website and quoted in full in section 4 above, which he says “is but a disclaimer of the fair use of respondent’s domain name”. He then goes on to quote a provision from the United States Lanham Act appearing to indicate that fair descriptive use is legitimate.
The Respondent denies that the Domain Name has been registered and is being used in bad faith. The Respondent asserts that he “created his website under the alleged domain on May 8, 2015 independently and without knowledge of the complainant.” He says that he has made every effort to “eliminate the likelihood of any possible mistaken association between the site and the Complainant, namely by the prominent notice and disclaimer throughout the site”.
The Respondent seeks a finding of Reverse Domain Name Hijacking on the basis that the Complainant’s motives in launching the Complaint are questionable. As he puts it: “The sites activities, as described herein do not commercially effect [sic] or harm complainant’s worldwide business. The respondent therefore finds the motives of the complaint to be in question.”
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
In coming to a decision, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
B. Identical or Confusingly Similar
There is no dispute between the parties that the Complainant has trade mark rights in respect of the mark COOLMATH. The only issue is as to whether the Domain Name which comprises the Complainant’s trade mark plus a hyphen, the word (or words) “mathgames” and the “.com” generic Top Level Domain (“gTLD”) identifier is sufficiently different to render it other than confusingly similar to that trade mark.
While the Respondent contends that the additional material, combined with the fact (if it be a fact) that the Respondent operates in a different geographical area and that there are differences in website content, is sufficient to distinguish, there is no dispute that the Complainant provides online maths-related educational games, which it describes as ‘coolmath-games’. Moreover, it is the proprietor of the “www.coolmath-games.com” website through which it delivers ‘coolmath-games’. In other words, the Domain Name not only features the Complainant’s trade mark, but also a description of the Complainant’s work product.
The Complainant is also the registered proprietor of the trade mark COOLMATH-GAMES. Self-evidently, the Domain Name is substantially identical to this trade mark.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant contends that the Respondent adopted the Domain Name with the specific purpose of competing with the Complainant and exploiting the value of the Complainant’s trade mark for his own commercial gain. The Complainant has produced substantial evidence of its reputation and goodwill in respect of its name and trade mark COOLMATH and its Coolmath Games, a reputation and goodwill recognized by both the BBC and Education Planet (see section 4 above) nearly 18 years ago. The Panel is satisfied that the Complainant’s fame extends internationally and well beyond the United States, a conclusion reached by all the panels in the Complainant’s previous cases under the Policy mentioned in section 4 above.
The Panel is satisfied that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent.
The Respondent has provided an answer, but it contains flaws.
In paragraph 5 of the Response the Respondent states: “The Respondent has created his website under the alleged domain on May 8, 2015 independently and without knowledge of the Complainant.” The Panel finds it inconceivable that the Respondent came up with the Domain Name and the content of the website to which the Domain Name is connected without knowledge of the Complainant. If there were any doubt on that score, it is resolved by the presence of the notice/disclaimer appearing on the Respondent’s website (see section 4 above), which expressly recognizes the existence of the Complainant. Indeed, in the Response the Respondent asserts that the presence of the notice/disclaimer is “evidence of the Respondent’s lack of intent to divert consumers/viewers”.
Accordingly, contrary to the above statement in paragraph 5 of the Response, the Respondent was aware of the existence of the Complainant from the outset and was aware of the obvious risk of confusion arising from the Domain Name meriting the inclusion of a disclaimer. The disclaimer, however, serves no practical purpose since the reader will by then have reached the Respondent’s website and been exposed to the advertisements and games on offer.
The Respondent has listed a number of websites featuring domain names incorporating the Complainant’s trade mark in one shape or form (see section 5B above). The Respondent has not produced any information on those websites, but the Panel has nonetheless visited a few of them and checked from publicly available WhoIs databases when the various domain names were registered. So far as the Panel has been able to gather, none of those domain names predates the Complainant’s trade mark. On the admittedly limited information available to it, the Panel believes it likely that many if not all of them are seeking to trade on the back of the Complainant’s reputation and goodwill, as were the respondents in the UDRP cases cited in section 4 above. The Panel does not see them as evidence of the Complainant’s trade mark having become generic.
The Panel finds on the balance of probabilities that the Respondent selected the Domain Name to target the Complainant and to gain a commercial benefit on the back of the fame associated with the Complainant’s COOLMATH trade mark. The Respondent acknowledges that he is deriving a commercial benefit from the advertisements on his website. While it may be that that benefit is, as he claims, modest at present (the Respondent has not seen fit to disclose the extent of the benefit), there is no knowing how that benefit might develop in the future. The Respondent’s assertion that he arrived at the Domain Name without knowledge of the Complainant, an assertion which the Panel is unable to accept at face value, does not inspire confidence in the Respondent.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
By the same reasoning the Panel finds that the Domain Name was registered and is being used in bad faith.
The Panel notes that the failure of the Respondent to respond to the Complainant’s representative’s letter of October 12, 2016 is another factor which does little to inspire confidence in the bona fides of the Respondent. It is not the behavior that one would expect of an innocent registrant confident that he is acting in good faith.
E. Reverse Domain Name Hijacking
The Panel is satisfied that the Complainant launched this Complaint in good faith in continuation of its efforts to protect its COOLMATH trade mark from abuse. The Panel denies the request for a finding of Reverse Domain Name Hijacking.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <coolmath-mathgames.com>, be transferred to the Complainant.
Date: December 4, 2016