WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coolmath.com LLC v. Brittany Miller
Case No. D2016-1765
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 Brittany Miller of Columbus, Ohio, United States.
2. The Domain Name and Registrar
The disputed domain name <coolermathgames.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2016. On September 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 1, 2016, 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 September 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2016.
The Center appointed Michael D. Adams as the sole panelist in this matter on October 7, 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 provider of educational websites for children offering math and science games. By the Complainant’s own account, the Complainant operates a family of websites providing these services since at least 1997. Over this time, the Complainant asserts that it has continuously used the COOLMATH trademark to identify its services on websites, including the websites “www.coolmath.com”, “www.coolmath4kids.com”, and “www.coolmath-games.com”. The Complainant further asserts that all of its websites share a similar look and feel through the use of the colors green, blue, yellow, red, and purple in bold fonts on a black background. This look and feel has been recognized by various education resources for its “bright, bold colors and graphics.” (Complaint V(A)(vi)).
The Complainant also is the owner of United States Trademark Registration Nos. 3,404,699 and 4,671,364 for COOLMATH and COOLMATH-GAMES for use in connection with services in International Class 41, including on-line computer games in the field of mathematics and science education. The COOLMATH trademark was registered on April 1, 2008 and claims a first use date of November 14, 1997, while the COOLMATH-GAMES trademark was registered on January 13, 2015 claiming a first use date of May 28, 2004. (Complaint Annex F). A review of the United States Patent and Trademark Office online records confirms that both of these registrations are registered and in force for the above referenced services.
Neither the Complainant nor the Respondent has provided information regarding the business of the Respondent, but the Complainant provided registration information for the Disputed Domain Name as well screenshots of the content associated with the Disputed Domain Name at the time of the Complaint submission. Based on a review of this information, the Respondent registered the Disputed Domain Name on May 11, 2011 and uses the Disputed Domain Name for online games, including math games. (Complaint Exhibit A and K).
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Name is confusingly similar to its registered trademarks COOLMATH and COOLMATH-GAMES, and differs from COOLMATH-GAMES only through the addition of “er” in the Disputed Domain Name. In addition, the Complainant contends that the Disputed Domain Name web site has adopted a confusingly similar look and feel by the use of a color scheme and organization which is visually similar to the Complainant’s web sites. Furthermore, the Complainant asserts that the priority of its common law trademark rights in COOLMATH-GAMES is 2004, predating the Respondent’s registration of the Disputed Domain Name.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant further submits that the Respondent’s use of the Disputed Domain Name does not constitute a bona fide offering of goods or services, nor a legitimate, noncommercial or fair use of the Complainant’s marks. The Complainant notes that the Disputed Domain Name is directed to web pages that display services that are identical to those contained in the Complainant’s trademark registrations. The Complainant further contends that the Disputed Domain Name is being used to deceive consumers, interfere with the Complainant’s business, and trade off the Complainant’s goodwill, and that this does not establish rights or legitimate interests in them.
The Complainant further states that there is no relationship between it and the Respondent and that it has not authorized the Respondent to use its name in this fashion.
The Complainant requests a decision that the Disputed Domain Name be transferred to it.
The Respondent did not reply to the Complainant’s contentions or offer any evidence of record.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Disputed Domain Name is identical or confusingly similar to a mark or marks in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default in failing to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is certainly confusingly similar to the mark COOLMATH-GAMES in which the Complainant has registered and unregistered rights dating to 2004. The addition of “er” to the mark in the Disputed Domain Name does not provide any distinction that would dispel the confusing similarity. The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
As stated above, the Respondent has not offered any evidence regarding rights or legitimate interests in the Disputed Domain Name. In addition, there is no evidence of record to suggest that the Respondent owns trademark registrations for or is otherwise commonly known by the trademark COOLER MATH GAMES or the Disputed Domain Name. The available evidence suggests that the Respondent does not use, nor is commonly known by, the Disputed Domain Name. As a result, noting the use of the Complainant’s mark in the same field of services, the Panel considers that this does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the Disputed Domain Name.
On the material in the file there is no other basis on which the Respondent could have rights or legitimate interests in the Disputed Domain Name. The Panel finds that the Respondent has no such rights and the second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds on the evidence that the Respondent has used the Disputed Domain Name intentionally to attract Internet users to its web site by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of these web pages or of services promoted on them. In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence of registration and use of the Domain Name in bad faith.
There is no material on file that displaces this presumption. On the contrary, this conclusion is reinforced by the Complainant’s submission of web pages clearly showing that the Respondent has used the Disputed Domain Name to provide content at a web site focused on online games, including math games. The Panel finds the third requirement of the UDRP is satisfied.
Thus, the Panel concludes that the Respondent’s use of the Disputed Domain Name is in bad faith, trading off the Complainant’s goodwill by attracting Internet users seeking the Complainant’s website through confusion with its name and marks.
All three requirements of the UDRP are met and it is appropriate to direct that the Disputed Domain Name be transferred to the Complainant.
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 <coolermathgames.com> be transferred to the Complainant.
Michael D. Adams
Date: November 28, 2016