WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coolmath.com LLC v. Delvin Dragon
Case No. D2015-2232
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 Delvin Dragon of Hanoi, Viet Nam, self-represented.
2. The Domain Names and Registrar
The disputed domain names <coolmathgamesaz.com>, <coolmathgamesaz.net>, <coolmathgamescom.info> and <coolmathgamescom.net> 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 December 8, 2015. On December 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 9, 2015, 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 December 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2015. The Complainant filed a supplemental filing in the form of an amended Complaint on December 23, 2015. The Response was filed with the Center on December 30, 2015. The Complainant filed a further supplemental filing on December 31, 2015. The Respondent filed a supplemental filing on January 5, 2016.
The Center appointed Alistair Payne 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
The Complainant operates maths and science game and education websites under the COOLMATH mark since 1997 from a number of websites, including from “www.coolmath.com” and “www.coolmath-games.com”. The Complainant owns various trade mark registrations for its COOLMATH mark including in the United States under registration number 3404699 filed on July 2, 2007, and registered on April 1, 2008.
The Respondent, based in Hanoi, Viet Nam, registered each of the disputed domain names on December 15, 2014. The Respondent operates a website at the <coolmathgamesaz.com> disputed domain name that offers a mix of educational and other games under the banner “Cool Math Games”. The three other disputed domain names resolve to a web developer’s website.
5. Parties’ Contentions
The Complainant submits that it owns registered trade mark rights as set out above and that its website at “www.coolmath.com” and its various other websites all use a distinctive colour scheme and set up and have developed a very substantial reputation as an educational websites. The Complainant notes that its website at “www.coolmath-games.com” had 649 million visits between October 2013 and September 2014.
It says that it has not authorised or licensed the Respondent to use its COOLMATH mark or the games on its website. However the Respondent’s website at “www.coolmathgamesaz.com” is virtually identical to the Complainant’s, uses the title “Cool Math Games” and features the Complainant’s own games including “B-Cubed”, “Math-Man” and “Crazy Taxi M-12”. The Complainant notes that all of its games are educational but that certain games on the Respondent’s website have no educational value at all. It says that the website at “www.coolmathgamesaz.com” is designed to create the false impression that the Respondent’s website is associated or affiliated with the Complainant and as such is likely to confuse Internet users and to tarnish the reputation of the Complainant and of its websites. The Complainant further says that the other three disputed domain names all resolve to the website for a web developer and notes that the Respondent failed to respond to its cease-and-desist letter of November 2, 2015 concerning the Respondent’s use of the website at “www.coolmathgamesaz.com”. The Complainant submits that none of these factors are consistent with the Respondent making a bona fide use of the disputed domain names.
As far as bad faith is concerned, the Complainant submits that the disputed domain names each contain the Complainant’s COOLMATH mark and were registered many years after the Complainant first made use of its mark, long after it had developed a significant reputation in connection with its mark. The Complainant says that the only reason that the Respondent registered the disputed domain names was to confuse and misdirect Internet users to the Respondent’s websites for his own commercial benefit. This, says the Complainant, qualifies as evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent submits that the disputed domain names comprise generic words and are intended to mean “math games are cool from a to z”. They are not intended to cause confusion and do not do so according to the Respondent. The Respondent says that he registered the domain name <mathgamesaz.com> after receiving a complaint from the Complainant and even though his new domain name did not include the “Coolmath” brand, the Complainant objected to the registration.
The Respondent based in Viet Nam says that before receiving any notice of the dispute the Respondent had already established a software company in Viet Nam, which develops puzzle games aiming at logic lovers. The Respondent submits that living in Viet Nam he did not know about the Complainant’s trade mark registration in the United States before registering the disputed domain names and that he did so in good faith. He says also that he has not used the disputed domain names in bad faith, that the title and website banner “Cool Math Games” differs from the Complainant’s mark, and that the colour, design and content of his websites are different so that no confusion could arise. Finally the Respondent says that he never intended to sell the disputed domain names for financial gain.
6. Discussion and Findings
A. Procedural Matters
After the present proceeding had commenced, the Complainant sought to add an additional domain name in its amended Complaint. As indicated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.8, “additional domain names may in certain circumstances be added to a complaint after filing but prior to formal commencement of UDRP proceeding.” As the Complainant’s amended Complaint to add the additional domain name was filed well after the commencement of the proceeding, the Panel is inclined to reject such request as out of time. Further, as articulated in Beachbody, LLC v. Zhang Sanfeng, WIPO Case No. D2015-0940, the Panel finds that such addition would cause undue delay as the Center would be required to obtain a new registrar verification and the Respondent would be allowed additional time to respond.
Further, the supplemental filings of each Party received after the Response were unsolicited. Under the Policy and Rules the Panel has a discretion as to whether to accept them or not. In this case the Panel has reviewed the submissions and finds that there are no exceptional circumstances or new facts justifying their admission and declines to admit them to the record.
B. Identical or Confusingly Similar
The Complainant owns a registered trade mark in the United States for its COOLMATH mark as noted above. Each of the disputed domain names contains its COOLMATH mark as the primary and most distinctive element. In each case there is an additional element before the Top-Level Domain (“TLD”), such as “az” and “com”. Neither of these elements, whether viewed together with the applicable TLD (namely “.com”, “.net” and “.info”) or not, serves as a distinguisher from the Complainant’s COOLMATH mark. As a result the Panel finds that each of the disputed domain names is confusingly similar to the Complainant’s COOLMATH mark.
C. Rights or Legitimate Interests
The Complainant has established that its business under the COOLMATH mark and from its various websites using that mark is well developed and attracts a large number of visitors world-wide. Previous UDRP panels have noted the extent of the Complainant’s business and the degree of renown attaching to its mark in prior cases, including Coolmath.com LLC v. Wiley Prince/ PrivacyGuardian.org, WIPO Case No. D2015-0397; Coolmath.com LLC v. Joseph Golden, WIPO Case No. D2015-0384; Coolmath.com LLC v. Bilal Bilkay, WIPO Case No. D2015-0067. This reputation and degree of renown has been developed since 1997 and well before the Respondent registered the disputed domain names.
The Complainant says that it has not authorised the Respondent’s use of its mark or permitted the Respondent to be affiliated or associated with its business and yet, as described under Part C below, the Respondent is using the disputed domain name <coolmathgamesaz.com> to resolve to a website that includes the words “Cool Math Games AZ” on its banner and features a logo incorporating the legend “Cool Math Games”, that has a similar look and feel to the Complainant’s website, and appears to have a significant degree of similarity as far as content is concerned, even if it also appears to include non-educational games. The Respondent maintains that he should be able to use the generic words “cool” and “math” and “games”; however, there is little merit to this argument in circumstances that the Complainant’s COOLMATH mark as a whole and its business under this mark has developed such a degree of renown and following on the Internet. The Panel notes that the other three disputed domain names currently appear to resolve to a developer’s website at “www.samhermes.com”.
Overall, the Panel finds for the reasons set out above and as set out under Part C below that the Respondent has not rebutted the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name <coolmathgamesaz.com>. The Panel finds also that the Respondent has failed to rebut the Complainant’s case under this element in relation to the other three disputed domain names, all of which resolve to a web developer’s website. Accordingly, the Complaint succeeds under this element of the Policy.
D. Registered and Used in Bad Faith
The Respondent registered each of the disputed domain names many years after the Complainant had established its business under the COOLMATH mark and had registered its mark in the United States. By December 2014, when the Respondent registered each of the disputed domain names, the Complainant’s mark and business had developed a significant Internet user following. The Panel notes the Complainant’s statistic of its website having received 649 million visits between October 2013 and September 2014, and in these circumstances infers that anyone entering the term “Cool Math” into a search engine in December 2014 would have come across the Complainant’s website. It is therefore surprising that the Respondent, although based in Viet Nam, maintains that he did not know about the Complainant’s mark or business before registering four separate domain names all incorporating the “Coolmath” brand as the key distinctive element of each domain name. Further, considering the similarity of content and look and feel of the Respondent’s website at “www.coolmathgamesaz.com” to the Complainant’s website, it is not credible for the Respondent to suggest that he had no knowledge of the Complainant’s mark and business at the time of registering the disputed domain names. The Panel therefore infers on the balance of probabilities that the Respondent registered the disputed domain names with knowledge of the Complainant’s COOLMATH mark and its business and therefore did so in bad faith.
The Respondent’s website at “www.coolmathgamesaz.com” features the website banner, “Cool Math Games AZ” and has a general similar look and feel and similar content (the Complainant says that the website duplicates at least four of its games) to the Complainant’s website. It is quite apparent that the Respondent’s website is intended to be for commercial gain and the Panel infers that the Respondent has registered the disputed domain name <coolmathgamesaz.com> and set up the website at that disputed domain name with a view to confusing and diverting Internet users looking for the Complainant’s Coolmath website. The Panel considers that such use is more than likely to confuse Internet users in this regard and that this is quite a straightforward and blatant example of cybersquatting.
By the Respondent’s own admission, he chose the disputed domain names “to build the website with games which help improve math and logic skills of human” but has not developed websites under the other three disputed domain names as yet only for financial reasons. The Respondent considers that he should be able to use the COOLMATH mark with impunity for his game sites. The Panel notes its finding of cybersquatting in relation to the disputed domain name <coolmathgamesaz.com> incorporating the Complainant’s COOLMATH mark, and finds based on the Respondent’s statement, that the other three disputed domain names were likely registered with a view to developing similar websites calculated to trade off the goodwill and reputation attaching to the Complainant’s mark, and as a consequence to prevent the Complainant from registering its mark in equivalent domain names. It is further unclear to the Panel why the Respondent needed to register four nearly identical domain names to achieve his objective. The Respondent’s conduct in this regard amounts to a pattern of domain name registration and fulfils the requirements of paragraph 4(b)(ii) of the Policy. In the alternative, in light of the Respondent’s use of <coolmathgamesaz.com>, the Panel infers that the registration of these three disputed domain names is calculated as part of a plan to trade off the well-established and reputed COOLMATH brand owned by the Complainant, as a further indication of bad faith under the Policy.
Consequently the Panel finds that the Complainant has successfully made out its case under this element of the Policy in relation to each of the disputed domain names.
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 names <coolmathgamesaz.com>, <coolmathgamesaz.net>, <coolmathgamescom.info> and <coolmathgamescom.net> be transferred to the Complainant.
Date: January 17, 2016