WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coolmath.com LLC v. PrivacyGuardian.org / Mai Trung Hieu, An Thanh Company
Case No. D2016-1818
1. The Parties
Complainant is Coolmath.com LLC of New York, New York, United States of America ("United States" or "US"), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
Respondent is PrivacyGuardian.org of Phoenix, Arizona, United States / Mai Trung Hieu, An Thanh Company of Ho Chi Minh City, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <coolermathgameonline.com> (the "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 September 8, 2016. On September 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 13, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on September 15, 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 Respondent of the Complaint, and the proceedings commenced on September 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2016. The Center received an email communication from Respondent on September 16, 2016.
The Center appointed Gareth Dickson as the sole panelist in this matter on October 24, 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 is the proprietor of US trademark registration number 3404699, for COOLMATH (the "First Mark") and US trademark registration number 4671364 for COOLMATH-GAMES (the "Second Mark"). The First Mark was applied for on July 2, 2007, and was registered on April 1, 2008. The Second Mark was applied for June 10, 2014 and was registered on January 13, 2015. Both the First Mark and the Second Mark are registered 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 Domain Name was registered by Mai Trung Hieu, An Thanh Company of Ho Chi Minh City, Viet Nam, (hereinafter "Respondent") on June 20, 2016, for a one-year period.
At the time of the filing of the Complaint, Respondent was using a privacy service, PrivacyGuardian.org.
Complainant filed a separate UDRP Complaint against Respondent, concerning the domain name <coolmathgameonline.com>, in June 2016 (the "First Complaint").1 That domain name had been registered since April 19, 2012 and was used for a website that, according to Complainant, was "somewhat different" to the website for which the Domain Name is used.
Complainant's first correspondence with Respondent before filing the First Complaint was on May 19, 2015. No copy of that letter has been provided to the Panel, but it appears that Respondent was using a privacy service then too. Nonetheless, Respondent's response to Complainant's letter of May 19, 2015, which it sent on May 27, 2015, opened with the words "I'm M.T. Hieu", and goes on to state that "I was not aware that I was busy to do something wrong, as you describe in your email!" and that "Further more [sic] we can adapt our content following the existing rules of [Complainant]!".
By its email of the same day, Complainant's legal counsel thanked Mr. Hieu for his message, said it would discuss it with Complainant, and "get back to you very shortly with a response". It does not appear that any further correspondence was sent to Respondent until the First Complaint was filed, over a year later, on June 9, 2016.
On July 15, 2016, before Respondent's reply to the First Complaint was due, Respondent wrote to the Center, copying Complainant's legal counsel, consenting to the transfer of the relevant domain name to Complainant. Respondent agreed to "cancel this disputed domain name what is on today already done" if Complainant did not find acceptable Respondent's request for a payment of $2,000 to reimburse it for historic running costs of the domain name as part of an agreement to transfer it to Complainant. It does not appear that Complainant responded to Respondent's offer. The First Complaint proceeded to determination and Complainant obtained the transfer of the domain name.
Complainant wrote to Respondent regarding the Domain Name, using the PrivacyGuardian.org email address appearing on the WhoIs, on August 19, 2016. In that letter, Complainant alleged that the games offered on the website available via the Domain Name were "quite similar" to those offered at Complainant's websites (which are the same websites as those cited in the Complaint) and sought, inter alia, the transfer of the Domain Name and the closure of Respondent's website.
Respondent does not appear to have sent Complainant a written reply although it is possible that Respondent "responded" to that letter by changing the manner in which he used the Domain Name, as described below. The Complaint was filed on September 8, 2016. On September 16, 2016, Respondent responded to notification of the Complaint by emailing the Center, seemingly in the belief that the Center is Complainant's representative. Again, the email opened by identifying the sender by name ("I'm Mai Trung Hieu") and is signed off with "Mai Trung Hieu, IT Engineer and who represent An Thanh Company, The owner of mention URL". The body of the email states, in relevant part (all spelling and emphasis is as it appears in Respondent's email):
"Note that I have registered this domain for An Thanh Company: "http://coolermathgamesonline.com", after you have suite [sued] An Thanh Company for previous domain: "http://coolmathgameonline.com" a domain that you have already takes of the servers of An Thanh Company for your client!
Note further that I'm a little bit surprised that you suite [sued] An Thanh Company again for this new URL: "http://coolmathgameonline.com" because we don't see the brand name of you client 'coolmath' in it..!
Whatever, if your client think that he must suite [sued] An Thanh Company again, is good for you and we can't stop him!
If you need further information about my site with URL: "http://coolermathgameonline.com" please feels free to contact me!"
(Evidently the reference to the <coolmathgameonline.com> domain name in the second paragraph quoted above is misplaced and should be a reference to the Domain Name.)
The Domain Name redirects to "www.onlinemathgame.net/". That site is in material aspects identical to that portrayed in the undated printouts provided by Complainant, save that there is no use of the Domain Name on the site and the redirect is a 301 (i.e. permanent) redirect, with the result that the Domain Name is not visible in the browser address bar.
5. Parties' Contentions
Complainant contends that the Domain Name incorporates the COOLMATH and COOLMATH-GAMES marks and that the Domain Name is "virtually identical" to the domain name the subject of the First Complaint.
Regarding Respondent's alleged lack of rights or legitimate interests in respect of the Domain Name, Complainant states that:
"As a preliminary matter, since Complainant's adoption and extensive use of the COOLMATH mark predates the registration of the Domain Names, [sic] the burden is on Respondent to establish its rights or legitimate interest in the Domain Names [sic]. See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a/ Cyberson, WIPO Case No. D2003-0174."
Complainant further contends that its websites are "well-regarded by teachers and parents and are approved for use in schools across the nation", and "have become enormously popular". It provides examples of some of the "numerous accolades from the education press" its services have won. Complainant states that its websites share a common look and feel, characterized by the "distinctive" use of "the colors green, blue, yellow, red and purple in bold fonts on a black background".
Complainant alleges in the Complaint that Respondent's website is "virtually identical" to Complainant's own websites, that it offers games for online play (not all of which have an educational value) and that Respondent's website is "designed to confuse consumers as to the source or sponsorship of the website". Complainant argues that Respondent has no rights or legitimate interests in the Domain Name since the Domain Name is used "in connection with a website that so clearly tries to mimic the appearance and contents of Complainant's own official websites" and is used "to defraud potential users". In correspondence with Respondent, Complainant alleges that the games on Respondent's website are "quite similar" to games on Complainant's websites and notes that a previous UDRP panel found, in Coolmath.com LLC v. PrivacyGuardian.org / Mai Trung Hieu, An Tranh Company, WIPO Case No. D2016-1168, that Respondent had no rights or legitimate interests in a separate domain name incorporating the COOLMATH mark.
Complainant also argues that Respondent's use of the COOLMATH mark cannot be bona fide since, inter alia, it does not satisfy the requirements of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
It also alleges that Registrant's use of a privacy protection service is suggestive of bad faith and that Respondent's failure to respond to Complainant's letter of August 19 2016, requesting voluntary transfer of the Domain Name, is evidence of bad faith. Complainant argues that Respondent's behavior is in "direct violation" of paragraph 4(b)(iv) of the Policy, in that Respondent is using the Domain Name "to intentionally attract, for commercial gain, Internet users to a website by creating a likelihood of confusion as to the source".
Respondent has not submitted a formal response to the Complaint but Complainant has provided copies of correspondence it has entered into with Respondent. The portions of that correspondence which have come from Respondent and are pertinent to the merits of the Complaint are identified in Section 4 above. Additionally, the Center received an email communication from Respondent, the relevant part of which has been reproduced in Section 4 above.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of Complainant to prove any one of them means the Complaint must be denied.
A. Identical or Confusingly Similar
The COOLMATH and COOLMATH-GAMES trademarks comprise dictionary words. Complainant's use of those words in combination, however, has conferred on each sign sufficient distinctiveness that they have been deemed registrable as trademarks in the United States. The Panel has no reason to go behind those registrations and therefore finds that COOLMATH and COOLMATH-GAMES are trademarks in which Complainant has rights.
The Domain Name is <coolermathgameonline.com>. The COOLMATH trademark and the COOLMATH‑GAMES trademarks are both readily recognizable as the dominant components within the Domain Name on an aural and on a side-by-side visual comparison. The use of "coolermath" in place of "coolmath" does not render the trademarks unrecognizable in the Domain Name, nor does the absence of the hyphen and the "s" found in the COOLMATH-GAMES mark. The addition of "online" (or ".com", for that matter) in the Domain Name does not distinguish the Domain Name from Complainant's trademarks in any meaningful way for the purposes of the UDRP.
Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant's trademarks.
B. Rights or Legitimate Interests
The Panel does not accept Complainant's contention that merely since its adoption and extensive use of the COOLMATH mark predates the registration of the Domain Name, the burden of the second element of the UDRP shifts to Respondent, that is, that it automatically becomes Respondent's burden to demonstrate a right or legitimate interest in respect of the Domain Name. It is true that support for Complainant's position can be found in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a/ Cyberson, WIPO Case No. D2003-0174, to which Complainant directed the Panel. However, Complainant's submissions do not account for the numerous UDRP decisions since 2003 in which panels have held that the burden only shifts to a respondent once a complainant has established a prima facie case that the respondent has no rights or legitimate interests in respect of the domain name. See, for example, Accor v. Eren Atesmen WIPO Case No. D2009-0701 ("A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent.") and Croatia Airlines d.d. v. Modern Empire Internet Ltd. WIPO Case No. D2003-0455 ("The Panel notes that Complainant bears the 'general burden of proof' under paragraph 4(a)(ii) of the Policy, which burden shifts to the Respondent once Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests."); as well as paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.").
In any event, Complainant has articulated several arguments to establish such a prima facie case against Respondent, including: (i) the alleged similarity of Respondent's website to Complainant's websites; (ii) Respondent's failure to comply with the requirements of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("Oki Data"); and (iii) the existence of a previous decision against Respondent involving Complainant and its COOLMATH mark. Each of these arguments has been carefully considered by the Panel.
(i) The alleged similarity of Respondent's website to Complainant's websites
Complainant did not allege in its letter to Respondent of August 19, 2016, that the appearance or presentation of Respondent's website was in any way similar to those of Complainant, beyond asserting that Respondent's website offered games "quite similar" to those offered on Complainant's websites.
Furthermore, although Complainant now asserts that Respondent's website is "virtually identical" to Complainant's websites, and that Respondent's website "clearly tries to mimic the appearance and contents of Complainant's own official websites", the Panel is not persuaded that the evidence supports either of those contentions. In particular, Complainant asserts (and the Panel is prepared to accept) that the "distinctive" elements of Complainant's websites are the use of "the colors green, blue, yellow, red and purple in bold fonts on a black background", yet Respondent's website, as presented in Complainant's evidence, has a light red or orange background and does not use bold or colorful fonts.
For completeness, the Panel is not persuaded on the record before it that Respondent seeks to "defraud" users. It may well be that that is what Respondent is doing, but the Panel has not seen sufficient evidence that that is the case.
(ii) The requirements of Oki Data
The Panel accepts Complainant's argument that there is no relationship between the Parties pursuant to which Respondent could claim to have Complainant's permission to use Complainant's trademarks in the Domain Name.
The issue, then, is whether Respondent, being based in Viet Nam, could be making bona fide (and arguably descriptive) use of the dictionary words in Complainant's trademarks to offer "cool" games, some but not all of which are based on physics or mathematics principles.
Complainant contends that Respondent's use of the Domain Name cannot be bona fide since that use does not meet the requirements of Oki Data. However, Complainant does not appear to argue that any of the games offered on Respondent's website have been appropriated from Complainant's website, or that Respondent is in any way reselling or otherwise dealing with Complainant's games. Complainant therefore invites the Panel to extend the requirements of Oki Data beyond resellers or distributors of genuine goods, and to find that the Oki Data principles are of general application in the UDRP.
Given the Panel's finding in Section 6.B(iii) below, it is not necessary for the Panel to assess the Oki Data principles as such.
(iii) Prior UDRP decisions involving the same complainant, trademark and respondent
Notwithstanding the findings at Section 6.B(i) and 6.B(ii) above, the Panel can still find that Respondent has no rights or legitimate interests in respect of the Domain Name based on other factors, in particular the inescapable fact that Respondent was aware of Complainant's rights in the COOLMATH and COOLMATH‑GAMES marks when it registered the Domain Name.
By itself, the fact that Complainant prevailed in a single prior UDRP complaint against Respondent, where that decision involved the same trademarks but a different domain name and a website which, by Complainant's own admission, was "somewhat different" to the website for which the Domain Name is used, is not determinative of the issue of whether Respondent has rights or legitimate interests in respect of the Domain Name. Nonetheless, it inevitably colors Respondent's subsequent actions and makes it more difficult for Respondent to argue that its interest in respect of a subsequent very similar domain name, being used for a very similar purpose, is legitimate. That difficulty is only exacerbated by the fact that the Domain Name was registered while the First Complaint was still pending. Although not dispositive, these facts do raise a prima facie case against Respondent on the second element.
By failing to put clear water between its actions in the First Complaint and in this Complaint, Respondent has assumed a level of risk that is inconsistent with a party exercising a legitimate right or interest in respect of a domain name. In the absence of any evidence or argument from Respondent to rebut Complainant's prima facie case, the Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In determining whether Respondent has engaged in the bad faith registration and use of the Domain Name, this Panel is struck by three details that emerge from the correspondence between the Parties.
The first is that in its email of May 27, 2015, Respondent offered to change its website to accommodate Complainant's concerns, but Complainant does not appear to have provided a substantive response to that email.
The second is that, despite not having received guidance from Complainant as to what changes it wanted Respondent to make, Respondent went ahead and took the initiative to change its website to one that is different to those of Complainant (as discussed in Section 6.B(i) above).
Finally, Respondent's willingness to correspond with Complainant in his own name (there being no evidence that the name given in the emails or on the WhoIs is false), means it cannot be said that Respondent's use of a privacy service is evidence of Respondent's bad faith.
In weighing these details, the Panel is acutely aware of the ease with which a respondent can claim ignorance of a complainant and innocence of any intentional wrongdoing, and how it may try to frustrate an adverse finding by making minor changes to its websites. But the Panel is also aware that the burden of proof in the UDRP rests with Complainant and that if the evidence does not establish Complainant's case on the balance of probabilities, then the Complaint must be denied.
This Complaint is finely balanced. However, the fact that Respondent could have chosen as a new domain name any number of domain names that are not in any way similar to Complainant's marks, of which Respondent had full knowledge, and the fact that Respondent assumed the risk of using such a similar domain name to that at issue in the First Complaint without any indication that it would be acceptable to Complainant, is indicative of Respondent's bad faith within the meaning of the UDRP. Respondent has failed to submit a Response and therefore has not provided any explanation as to why his actions were not in bad faith, despite previously having shown himself to be willing and able to correspond with both Complainant and the Center. In these circumstances, the Panel finds that the Domain Name was registered and is being used in bad faith by Respondent.
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 <coolermathgameonline.com> be transferred to the Complainant.
Date: November 7, 2016