WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coolmath.com LLC v. Kenan Yazici, Cenebaz.com
Case No. D2018-0646
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 Kenan Yazici, Cenebaz.com of Istanbul, Turkey.
2. The Domain Names and Registrar
The disputed domain names <coolmath.cc> and <newcoolmath.com> (the "Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 23, 2018. On March 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 28, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 April 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 24, 2018.
The Center appointed Dawn Osborne as the sole panelist in this matter on April 30, 2018. 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 the owner of the trade mark COOLMATH registered, inter alia, in the United States for educational computer services and registered since 2008. It owns the domain names <coolmath.com>, <coolmath4kids.com> and <coolmath-games.com>.
The Domain Name <newcoolmath.com> was registered on September 27, 2013 and the Domain Name <coolmath.cc> was registered on July 6, 2014. The Domain Names have been used for websites mimicking the Complainant's website to offer similar services.
5. Parties' Contentions
The Complainant's contentions can be summarised as follows:
The Complainant is the owner of the trade mark COOLMATH registered, inter alia, in the United States for educational computer services and used since 1997. It owns the domain names <coolmath.com>, <coolmath4kids.com> and <coolmath-games.com>.
The Domain Name <newcoolmath.com> was registered in 2013 and the Domain Name <coolmath.cc> was registered in 2014.
The Complainant has never given the Respondent permission to use its mark. The websites at the Domain Names mimic the Complainant's sites particularly the title with the bubble letter style fonts and uses the Complainant's trade mark designed to confuse consumers and create the misleading impression that the sites connected to the Domain Names are connected to the Complainant when they are not which is damaging as not all games on the sites connected to the games are educational and non-violent.
The Domain Names both incorporate the Complainant's trade mark COOLMATH in its entirety. The Domain Name <coolmath.cc> just adds the country-code Top-Level Domain ("ccTLD") ".cc" and so is legally identical to the Complainant's trade mark under the Policy. The Domain Name <newcoolmath.com> merely adds the generic word "new" and the generic Top-Level Domain ("gTLD") ".com" and is confusingly similar to the Complainant's trade mark. None of these additions distinguish the Domain Names from the Complainant's trade mark.
Mimicking the Complainant's sites using the Complainant's trade mark cannot be a bona fide offering of goods or services. The Domain Names have been registered and used in bad faith to confuse Internet users for commercial benefit.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name <newcoolmath.com> consists of the Complainant's COOLMATH mark (which is registered in United States for educational computer services since 2008), the generic term "new" and the gTLD ".com". Previous UDRP panels have found confusing similarity when a respondent merely adds a generic term to a complainant's mark. The Panel agrees that the addition of the generic term "new" to the Complainant's mark does not distinguish the Domain Name <newcoolmath.com> from the Complainant's trade mark pursuant to the Policy.
The gTLD ".com" and the ccTLD ".cc" do not serve to distinguish the Domain Names from the COOLMATH mark, which is the distinctive component of the Domain Names as gTLDs and ccTLDs are necessary part of domain names.
Accordingly, the Panel holds that the Domain Name <newcoolmath.com> is confusingly similar and the Domain Name <coolmath.cc> is identical for the purpose of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Complainant has not authorised the Respondent to use its mark. The Respondent uses the Complainant's name and trade dress. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names.
The Complainant contends that the sites attached to the Domain Names are set up for commercial benefit to compete with the Complainant using the latter's intellectual property rights. The website attached to the Domain Names uses the Complainant's word mark COOLMATH in very similar font to the Complainant's authorised sites in a prominent fashion. The Respondent is using the Domain Names for sites in competition with those of the Complainant. It does not make it clear that there is no commercial connection with the Complainant. The Panel finds that this use may confuse the Internet users to the extent that they would think that the Respondent is related to the Complainant.
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
C. Registration and Use in Bad Faith
The Complainant also alleges that the Respondent's use of the sites attached to the Domain Names is commercial and it is using it to make profit by competing with the Complainant in a confusing and disruptive manner. In the opinion of the Panel the use made of the Domain Names in relation to the site is confusing and disruptive in that visitors to the sites might reasonably believe they are connected to or approved by the Complainant as they offer services under a Domain Name containing the Complainant's COOLMATH mark. The use of the Complainant's COOLMATH word mark and trade dress on the Respondent's website shows that the Respondent is aware of the Complainant and its trade mark. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the websites likely to disrupt the business of the Complainant.
As such, the Panel believes that the Complainant has made out its case that the Domain Names were registered and are being used in bad faith and has satisfied the third limb of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <coolmath.cc> and <newcoolmath.com> be transferred to the Complainant.
Date: May 1, 2018