WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coolmath.com LLC v. WhoisGuard, Inc. / Saidul, Chowdhury, Clutter Media Ltd
Case No. D2015-2138
1. The Parties
Complainant is Coolmath.com LLC of New York, New York, United States of America ("U.S."), represented by Fross Zelnick Lehrman & Zissu, PC, U.S.
Respondent is WhoisGuard, Inc. of Panama, Panama / Saidul, Chowdhury, Clutter Media Ltd, of Garden City Park, New York, U.S.
2. The Domain Name and Registrar
The disputed domain name <coolmathgames.net> is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 24, 2015. On November 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 2, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on the same date.
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 Respondent of the Complaint, and the proceedings commenced on December 3, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2015. That day, an email was transmitted to the Center from the administrative email address associated with Respondent, disavowing ownership of the disputed domain name. An additional email was sent from that address to Complainant, which email was forwarded to the Center by Complainant.
Respondent did not submit any formal response. Accordingly, the Center notified Respondent's default on December 28, 2015.
The Center appointed Martin Schwimmer as the sole panelist in this matter on January 8, 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.
4. Factual Background
Complainant owns registrations for the trademarks COOLMATH, COOLMATH4KIDS and COOLMATH-GAMES, covering the provision of online games in the field of math and science since at least April 1, 2008 with a claimed date of first use of November 14, 1997. It utilizes domain names such as <coolmath.com> and <coolmath-games.com>. The disputed domain name was registered on November 21, 2006 and is utilized for the provision of online games in the field of math.
5. Parties' Contentions
Complainant alleges use of the mark COOLMATH since 1997 in connection with math and science game and education websites at "www.coolmath.com", "www.coolmath4kids.com" and "www.coolmath-games.com". It cites ownership of a U.S. trademark registration for COOLMATH (the Panel notes that Complainant does not allege, but appears to own a second U.S. registration for COOLMATH-GAMES).
Complainant alleges that its sites have 650 million visitors in a year. The websites have a common look and feel.
Complainant's first use of its trademarks predates the registration of the disputed domain name.
Respondent has no relationship, contractual or otherwise, with Complainant. Respondent's website, which also features online games, is designed to cause confusion with Complainant, and therefore cannot constitute bona fide use.
Respondent's use of a domain name confusingly similar to Complainant's mark is intended to drive traffic to its website.
Complainant protested Respondent's use and registration of the disputed domain name. Respondent acknowledged receipt of the protest, but took no meaningful action.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The Panel finds that Complainant owns trademark rights in the COOLMATH mark, which predate the registration of the disputed domain name.
Complainant has established valid and existing trademark rights in the COOLMATH and COOLMATH-GAMES marks. The disputed domain name contains Complainant's COOLMATH and COOLMATH-GAMES marks in their entirety.
The addition of the generic Top-Level Domain ("gTLD") ".net" to the disputed domain name typically does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel finds that Complainant has met its burden of showing that the disputed domain name is confusingly similar to the COOLMATH and COOLMATH-GAMES marks in which Complainant has valid trademark rights.
B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent holds no rights or legitimate interests in the disputed domain name. However, Complainant need only make a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has rights or legitimate interests in the disputed domain name. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141 (discussing and citing the WIPO Overview of WIPO Panel Views on Selected UDRP Questions ("WIPO Overview 2.0"), paragraph 2.1). "Where a mark is less distinctive, this burden is higher than it might otherwise be". Exotiq Properties v. David Smart, WIPO Case No. D2009-1672 <exotiqproperty.com>.
Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the disputed domain name. In particular, Complainant claims that it has not authorized Respondent to use the COOLMATH mark in a domain name and there is no evidence in the WhoIs data for the disputed domain name that Respondent has been commonly known by the term "Cool Math". Complainant denies having permitted or granted any license to Respondent to use the disputed domain name.
Complainant further argues, in effect, that Respondent's use cannot be bona fide because it constitutes intentional trademark infringement. Intentionality is an important element, as showing mere infringement is insufficient. As noted in prior UDRPs involving this Complainant:
"[…][T]he UDRP is not the proper mechanism to address cases of pure trademark infringement. It is designed to handle cases of cybersquatting, and the fact that the use of a disputed domain name in connection with the content of the relevant website may amount to trademark infringement will not necessarily deprive a respondent of a claim to a right or legitimate interest where the domain name was adopted and used commercially in good faith, without knowledge that the use infringed a registered mark". See Eli Lilly and Company v. Protected Domain Services, Customer, WIPO Case No. D2010-1477cited in Coolmath .com LLC v. Joseph Golden, WIPO Case No. D2015-038.
Intentionality is hard to establish looking solely to the Complaint. Complainant has not established that its word marks are so inherently distinctive, or have acquired such distinctiveness, that the Panel can assume that Respondent must have registered the name with knowledge of Complainant's rights. Complainant does use distinctive logos such as:
However, Respondent does not copy that which is distinctive to Complainant. An analysis of the appearance of Respondent's website does not yield sufficient similarity to Complainant's sites, to come to a conclusion of intentionality without more. Rather, the Panel is prepared to consider Respondent's response to Complainant, and an informal communication with the Center, discussed further below, in order to conclude that Respondent's use does not give rise to rights or legitimate interests.
This dispute does not contain the same facts as those in either Coolmath.com LLC v. Wiley Prince / PrivacyGuardian.org, Case no. D2015-0397 <coolmathgamesonline.org> or the Joseph Golden case cited above. In Wiley Prince, the respondent copied Complainant's distinctive color scheme, while in Joseph Golden, the respondent utilized more than one of Complainant's marks. Furthermore, neither respondent offered math games in connection with their sites (thus calling into question respondent's selection of the name in the first place).
Here, Complainant has not proffered evidence establishing that it is beyond doubt that respondent could only have selected this name without prior knowledge of Complainant's rights. The trademark COOLMATH-GAMES consists of a generic term, "math games", preceded by a ubiquitous laudatory term, "cool". That the trademark COOLMATH has been registered for five years establishes that it can be presumed to be distinctive, but does not establish that it is so famous that a third party must have known of Complainant. While Complainant has alleged that its websites have exceedingly high levels of web traffic, that assertion is not supported by documentation. The Panel also notes, as an aside, that it is the consensus view that a panel will only in limited circumstances utilize the concept of constructive use arising from the existence of a U.S. trademark registration, as evidence of bad faith (see paragraph 3.4 of the WIPO Overview.)
Accordingly, the selection by Respondent of the disputed domain name <coolmathgames.net> alone, is insufficient to conclude that there is intentional abuse.
It is therefore necessary to consider the content found on Respondent's website, to determine whether the use is legitimate. At first glance, the Panel notes that Respondent's provision of math games utilizing the disputed domain name may well be descriptive and fair.
"Where a domain name comprises a generic or descriptive term of this kind, it is the consensus view of UDRP panels that, while the mere registration of the domain name will not confer rights or legitimate interests in the name, its use in connection with that generic or descriptive meaning may do so (see, e.g., paragraph 2.2 of the WIPO Overview 2.0). In each such case, the panel must assess whether the respondent is making legitimate use of the domain name in connection with the meaning relied on or, alternatively, seeking to take unfair advantage of the rights of the trademark owner". Walk the Walk Worldwide v. Name Administration Inc. (BVI), WIPO Case No. D2013-0731 (<walkthewalk.com>); see, also, Visa Europe Limited v. Name Administration Inc. (BVI), WIPO Case No. D2010-1531 (<premiercard.net>); Exotiq Properties v. David Smart, WIPO Case No. D2009-1672 (<exotiqproperty.com>).
Here, Respondent's website under the disputed domain name offers 53 online games. The look and feel of the site, consisting of an array of screenshots of games does not look like that of Complainant, but resembles instead other popular sites such as "www.addictinggames.com". It is apparent from the names of the games ("Math Man", "Weapon of Maths"), and the illustrations and the game descriptions, that the games involve math. Complainant identifies a single game "Perdition" on Respondent's site, which Complainant notes is not a math game. However, "Perdition" is the only one of the 53 games available that was seemingly not a math game (and it is buried toward the bottom of the page at that). In contrast, at least two of the games on Complainant's website "www.coolmath.com" were not, arguably, math games.
On the other hand, there is infringing material on the site, as Respondent prominently uses the following logo, which uses COOL MATH GAMES as a trademark, and exceeds descriptive fair use:
Again, this may be infringing, but not sufficiently so to conclude that intentionality is the only possible explanation.
Nevertheless, the Panel will consider this to constitute behavior seeking to take advantage of the trademark owner, and therefore not constituting bona fide use, because the Panel is ready to draw negative inferences from the exchanges the Respondent had with Complainant and the Center.
In August of 2015, Respondent, using an email "[…]@coolmathgames.net", asserted ownership of the disputed domain name and cited its registration since 2006 (see Exhibit O of Complainant's amended complaint). Complainant has provided evidence that immediately following that transmission Respondent either deactivated that email address or blacklisted emails from Complainant's counsel (see Exhibit P, Id.)
After this Complaint was filed, and the proxy service was removed, the resulting new WhoIs listing identified the registrant as "Saidul Chowdhury", and provided a new administrative email address. Mr. Chowdhury, or someone with access to that email address, contacted the Center and indicated that he didn't own or control the disputed domain name. In an email sent to Complainant and forwarded to the Center, Mr. Chowdhury alleged that he purchased the disputed domain name in 2010, "built a site on it" and "sold it back" (without identifying to whom he sold it back). He indicated that he did not control the disputed domain name. The Panel will exercise its discretion and consider these informal case-related communications.
Considering the email contained in Exhibit O above in combination with the two informal emails from Mr. Chowdhury, the Panel concludes that either the individual who controlled "[…]@coolmathgames.net" or Mr. Chowdhury, could have responded to this Complaint and chose not to. Accordingly, the Panel is prepared to draw negative inferences from Respondent's failure to meaningfully address Complainant's allegation of rights as set forth in the Complaint.
C. Registered and Used in Bad Faith
Complainant has not established sufficient reputation in its trademark that without more, the Panel could conclude that Respondent chose the name to target Complainant, rather than to use the disputed domain name in its descriptive sense. Furthermore, while this use may well be infringing, it is not self-evidently intentional such that bad faith can be presumed without more.
However, as noted above, someone using an email address associated with the disputed domain name ("[…]@coolmathgames.net") impliedly represented to Complainant ownership of the disputed domain name since 2006. Someone using the present admin email address contradicted that assertion of continuous ownership, and indicated that Mr. Chowdhury was listed as but was not the true registrant. The Panel does not have to investigate further to conclude that the "real" registrant has been misrepresenting their status, one way or another, from the time that Complainant first asserted its rights to the registrant. The Panel, considering that the site is in fact infringing, relies on negative inferences arising from the misrepresentations related to the WhoIs information and/or to Complainant, as well as Respondent's failure to formally respond to the Complaint, to find that the disputed domain name was registered and is being used in bad faith.
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 name <coolmathgames.net> be transferred to the Complainant.
Date: January 12, 2016