WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coolmath.com LLC v. PrivacyGuardian.org / Mai Trung Hieu, An Tranh Company
Case No. D2016-1168
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 / Mai Trung Hieu, An Thanh Company of Ho Chi Minh City, Viet Nam, self-represented.
2. The Domain Name and Registrar
The disputed domain name <coolmathgameonline.com> (the “Disputed 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 June 9, 2016. On June 10, 2016 the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 10, 2016 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 the Complainant on June 13, 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 June 13, 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 June 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2016. The Respondent sent an informal email on July 15, 2016 in which the Respondent indicated it would not submit a formal Response, but would instead consent to transfer of the Disputed Domain Name upon payment of USD 2,000 to the Respondent, or in the alternative, cancellation of the Disputed Domain Name. Noting the Respondent’s email on July 15, 2016 the Center sent an email to the Parties inviting the Complainant to request suspension of the proceeding to facilitate a discussion between the Parties. On July 18, 2016 the Complainant indicated it would not request suspension of the proceeding, and instead asked that the proceeding continue.
The Center sent an email to the Parties indicating the Respondent was given until July 23, 2016 to submit a formal Response or confirmation that it had nothing further to add. On July 25, 2016 having received no further communication from the Respondent, the Center sent an email to the Parties indicating that Panel Appointment would commence.
The Center appointed Nick J. Gardner as the sole panelist in this matter on July 28, 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 is a California limited liability company with its principal place of business located in New York, New York. The Complainant is the owner and operator of websites featuring online educational games for children.
The Complainant is the owner of the United States trademark registration for COOLMATH, U.S. Reg. No. 3404699, reciting “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”. This mark has been registered on the Principal Register since April 1, 2008.
On April 19, 2012, the Respondent registered the Disputed Domain Name. The Disputed Domain Name resolves to a website which offers online games, some of which are educational. That website has a look and feel which mimics the Complainant’s websites.
5. Parties' Contentions
Since at least as early as 1997, the Complainant has continuously used the COOLMATH mark to identify its mathematics and science games and education websites. The Complainant asserts that its profile as a website has risen dramatically since it was founded and that, since 1998, the Complainant has been considered a leading Internet site for mathematical and other educational games. The Complainant operates multiple websites that use the COOLMATH mark in their domain names, all of which feature educational games for school-aged children.
The Complainant alleges that due to the care it has taken with its services, its websites are well-regarded by teachers and parents, have won accolades in the education field and are approved for use in schools throughout the United States. As a result, the Complainant’s websites have achieved a high degree of popularity among the general public. The Complainant alleges that its website “www.coolmath-games.com” received 649 million visits between October 2013 and September 2014 and has received 3.36 billion page views.
The Complainant asserts that its websites share a common look and feel. “www.coolmath.com”, “www.coolmath4kids.com”, and “ www.coolmath-games.com” all use the colors green, blue, yellow, red, and purple in bold fonts on a black background. The Complainant alleges that this distinctive look and feel has been recognized by others in the education field.
With respect to the allegations directed toward the Respondent, the Complainant points out that the Disputed Domain Name was registered on April 19, 2012, years after the Complainant had begun using its COOLMATH mark and long after the Complainant had registered its COOLMATH mark in the United States. The Complainant asserts that there is no relationship between it and the Respondent that would give rise to any license, permission or authorization for the Respondent to use or register the Disputed Domain Name. Further, the Complainant denies that the Respondent was ever authorized to use or otherwise promote any of the Complainant’s educational games.
The Complainant alleges that the look and feel of the website appearing at the Disputed Domain Name is virtually identical to the Complainant’s own website by using a similar blue, yellow and red color scheme. Moreover, like the Complainant, the Respondent’s website offers a number of games for download and online play. However, not all of the games offered at the Respondent’s website have an educational value, some of them for example featuring guns and violence.
The Complainant also relies upon a trademark registration for COOLMATH-GAMES, U.S. Reg. No. 4,671,364, 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 says that this mark was registered in 2015, but has been in use since 2004.
As a result of the use of the COOLMATH mark in the Disputed Domain Name and on the website, as well as using a similar color scheme, the Complainant alleges that the website located at the Disputed Domain Name is likely to confuse consumers by creating a false impression that the Respondent’s website is affiliated with or otherwise authorized by the Complainant. In addition consumers are likely to believe that the Complainant approved the Respondent to register and use the Disputed Domain Name.
The Complainant contends that the Disputed Domain Name should be transferred to the Complainant because each of the three elements required in paragraph 4(a) of the Policy has been established.
Addressing the first element of the Policy, the Complainant asserts rights in the COOLMATH mark based on its use of COOLMATH in and as part of a trademark since 1997, its use of the COOLMATH Mark in connection with a series of education websites and its extensive marketing and promotional activities for its websites. The Complainant alleges that the addition of the words “game” and “online” does little to distinguish the Disputed Domain Name from its COOLMATH mark. As a result, the Complainant avers that the Disputed Domain Name is confusingly similar to its common law and registered COOLMATH mark.
With respect to the second element of the Policy the Complainant contends that there is no evidence that the Respondent has rights or a legitimate interest in the Disputed Domain Name because registration of the Disputed Domain Name occurred after the Complainant had made extensive use of the COOLMATH Mark and after the Complainant had obtained registrations for the COOLMATH mark in the United States. The Complainant asserts that it has not licensed or otherwise permitted the Respondent to use the COOLMATH mark, there is no relationship between the parties, and nothing in the record, including the WhoIs information that suggests that the Respondent is commonly known by the Disputed Domain Name.
With respect to the third element of the Policy, the Complainant alleges the Disputed Domain Name incorporates the Complainant’s registered COOLMATH mark and is confusingly similar to it, also noting its common law rights in its well-known COOLMATH mark. The Complainant alleges that the Respondent's activity is in direct violation of paragraph 4(b)(iv) of the Policy, which prohibits use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the site.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As a preliminary issue the Panel notes this is a case where the named Respondent appears to be two entities, one of which (PrivacyGuardian.org) appears to be a privacy or proxy registration service, while the other (Mai Trung Hieu, An Thanh Company) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9, as follows: “Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant”. Accordingly this decision will simply refer to “the Respondent”.
The Panel also notes that no formal Response has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar and that an informal email communication was received from the Respondent (see above), the Panel again adopts the approach set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) namely, “once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
i. the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in the Disputed Domain Name; and
iii. the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of the registered trademark COOLMATH (the “COOLMATH” trademark).
The Panel holds that the Disputed Domain Name is confusingly similar to the above trademark. The Disputed Domain Name, as registered by the Respondent, incorporates the COOLMATH trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The only differences in the present case are the addition of the generic words “game” and “online”. These additions do not suffice to negate the similarity between the Disputed Domain Name and the Complainant’s COOLMATH trademark.
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here words such as “game” and “online”) to the Disputed Domain Name has little, if any, effect on a determination of legal identity or confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the finding of confusing similarity (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
It is also well established that the specific generic Top-Level Domain (in this case “.com”) does not affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
In view of these findings the Panel does not need to consider further arguments presented by the Complainant as to other registered trademarks it holds or as to its common law rights.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
i. before any notice to you of the dispute, your 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. you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you are making a legitimate noncommercial 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.
None of these apply in the present circumstances. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the COOLMATH trademark. The Complainant has prior rights in the COOLMATH trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, e.g., Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the COOLMATH trademark, and the evidence as to the extent of the reputation the Complainant enjoys in the COOLMATH trademark, and the confusingly similar nature of the Disputed Domain Name to the COOLMATH trademark, and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Name leads the Panel to conclude the registration and use was in bad faith. In the present case, the Panel concludes that it is inconceivable that the Respondent selected the Disputed Domain Name independently and without knowledge of the Complainant, its trademark, or its products. The website operated by the Respondent at the Disputed Domain Name is clearly presented in manner which mimics the Complainant’s websites and the Panel has no doubt the Respondent was by use of the Disputed Domain Name seeking to suggest it had a connection with the Complainant in the course of trade, whether by suggesting that it was the Complainant or that it was authorized or approved by the Complainant. The Respondent is neither. As such its behaviour clearly amounts to that specified in paragraph 4(b)(iv) of the Policy as being evidence of registration and use in bad faith, namely “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location”.
Further the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.
As a result, and applying the principles in the above noted UDRP decisions, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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, <coolmathgameonline.com>, be transferred to the Complainant.
Nick J. Gardner
Date: August 5, 2016