WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coolmath.com LLC v. Whois Agent, Domain Protection Services, Inc. / Joe Kenedy
Case No. D2017-1631
1. The Parties
The Complainant is Coolmath.com LLC of New York, New York, United States of America ("US"), represented by Fross Zelnick Lehrman & Zissu, PC, US.
The Respondent is Whois Agent, Domain Protection Services, Inc. of Denver, Colorado, US / Joe Kenedy of Ha Noi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <run3-coolmath.com> is registered with Name.com, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 21, 2017. On August 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2017, 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 August 22, 2017, 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 August 22, 2017.
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 August 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 21, 2017.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on October 3, 2017. 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 factual background is based upon information contained in the Complaint.
The Complainant, founded about 1997, produces and sells mathematical and other educational games, operating through its websites including "www.coolmath.com", "www.coolmath4kids.com" and "www.coolmath-games.com". The content is targeted at children and schools in order to provide games that facilitate education in mathematics, science, logic, memory and other things, and the content does not promote, for example, violence or guns. An illustration of the popularity of the Complainant is that the website "www.coolmath-games.com" had 238 million user visits in one year from August 1, 2016, and received 2.7 billion page views during the same period. The Complainant's products include the spatial reasoning and memory games Run and Run 2.
The Complainant is the registrant of the following trademarks:
COOLMATH, United States Patent and Trademark Office (USPTO), principal register, registered April 1, 2008, registration number 3404699, class 41;
COOLMATH-GAMES, USPTO, principal register, registered January 13, 2015, registration number 4671364, class 41.
The disputed domain name registered to the Respondent was created on October 18, 2016. The disputed domain name has diverted visitors to the website "www.run-3.co" (the "Respondent's ultimate website"), which provides access to 106 computer games of wide variety, one of which is named Run 3.
5. Parties' Contentions
The Complainant contends that it has rights under the Policy in the USPTO trademarks COOLMATH and COOLMATH-GAMES, and has produced copies of online documents from Trademark Status & Document Retrieval (TSDR) in evidence.
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademarks because the disputed domain name incorporates the entirety of the Complainant's trademark COOLMATH, with the prefix "run3-". The term "run3" describes a game modelled after two games available on the Complainant's websites and is not distinguishing. The generic Top-Level Domain (gTLD) ".com" need not be taken into consideration in the determination of confusing similarity.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant's trademarks were registered or used well before the registration of the disputed domain name and the Respondent had at least constructive notice of this. The Complainant has never authorised the Respondent to use the Complainant's trademarks for any purpose and has no relationship with the Respondent. The Respondent must prove that it has rights or legitimate interests in the disputed domain name and cannot do so. The Respondent's use of the disputed domain name cannot meet the prerequisites for bona fide use under the Policy.
The Complainant says that the disputed domain name was registered and used by the Respondent in bad faith. The Respondent seeks to trade on the Complainant's rights and reputation by confusing Internet users into believing that the disputed domain name is associated with the Complainant. The Respondent's objective is to capture traffic to its own website for commercial benefit. The fact that the Respondent has registered the disputed domain name constitutes opportunistic bad faith. The Respondent has made prominent use of the Complainant's trademark in constructing a website virtually identical to the Complainant's websites and featuring many of the same games.
The Complainant says that it sent a cease, desist and transfer letter to the Respondent on June 5, 2017, and that the Respondent's failure to reply can be used to establish bad faith.
The Complainant says that by using a proxy service for registration of the disputed domain name, the Respondent intentionally concealed its true identity, being further evidence of the Respondent's bad faith. The Complainant further contends that the discrepancy in the Respondent's spellings of his name, as Kenedy for the registrant's name and Kennedy in his email address, indicates that the information contained in the Whois is false, being further evidence of bad faith.
The Complainant has cited a number of previous decisions under the Policy, including four cases in which it has prevailed.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith".
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Complaint initially cited a privacy service as the Respondent. After the Registrar had disclosed the identification details provided by the registrant, the Complainant decided to name both Whois Agent, Domain Protection Services, Inc., and Joe Kenedy collectively as the Respondent. The Panel accepts the Complainant's decision and will also refer to the Respondent in the singular.
A. Identical or Confusingly Similar
The Complainant has produced evidence satisfactory to the Panel that it has the requisite rights under the Policy in the trademarks COOLMATH and COOLMATH-GAMES.
The disputed domain name is <run3-coolmath.com>, of which the gTLD designation ".com" may be disregarded in the determination of confusing similarity. What remains is "run3-coolmath", in which the Complainant's trademark COOLMATH, and the distinctive part of the trademark COOLMATH-GAMES, are clear. On a direct comparison between the disputed domain name and the trademark COOLMATH, the prefix "run3-" is found not to be distinguishing. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case to the effect that the Respondent does not have rights or legitimate interests in respect of the disputed domain name, which was registered on October 18, 2016. The registration of the trademark COOLMATH dates back to 2008, with first use in commerce formally claimed to November 14, 1997, and its use in any way by the Respondent has never been authorised by the Complainant.
Under paragraph 4(c) of the Policy the Respondent may contest the Complainant's prima facie case under paragraph 4(a)(ii) of the Policy in order to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
"(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".
The Respondent has not replied and has not asserted any rights or legitimate interests in the disputed domain name. There is no available evidence that the Respondent could establish rights or legitimate interests under paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. Accordingly the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 website or location or of a product or service on your website or location".
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.
The Complainant has produced evidence in the form of screen captures of the website to which the disputed domain name ultimately resolved at the time, and screen captures of the Complainant's website pages, cropped at the right, for comparison.
The Complainant's website, presented on a black or dark background, is headed "Coolmath-Games.com" and "Parents and Teachers". The flavour of the Complainant's website and of its games is essentially educational, mathematical and intellectual. A number of categories may be selected including "Strategy", "Skill", "Numbers", "Logic" and others. "Coolmath Top Picks" include "Sudoku, The highly addicting number puzzle. Three difficulty levels to choose from, unlimited boards to solve!"; and "Coffee Shop, A great business game where you run your own coffee shop. You have to plan your budget, your recipe and how much to charge". A free trial is offered, signalling that the games are not free of charge.
One of the Complainant's "Top Picks" is described as "Run 2, Warning: This game requires a huge amount of concentration and memorization as you run (or skate) through 3 dimensional courses".
For comparison, one of the Respondent's ultimate websites pages, presented on a black or dark background, is headed "Run 2" and has three boxes marked "Run 2", "Run" and "Run 3" followed by the information: "Run 2, Play free online Run 2 at Run3-coolmath.com! This game requires a huge amount of concentration and memorization as you run. The sequel is out as well and can be played here: Run 3. Which one do you prefer?" The flavour of the Respondent's ultimate website, irrespective of one game having the name "Geometry Dash", matches the normal genre of computer games as distinct from the educational exercises depicted on the Complainant's website.
It may reasonably be concluded that the statement on the Respondent's ultimate website, "This game requires a huge amount of concentration and memorization as you run", referring to the Respondent's game "Run 2", is identical to part of the Complainant's comment about the Complainant's own game "Run 2", which is worded "This game requires a huge amount of concentration and memorization as you run (or skate) through 3 dimensional courses". On the evidence, it may reasonably be inferred that the game name "Run 2" and part of the descriptive statement about it were copied by the Respondent from the Complainant's website. It may also reasonably be concluded that the Respondent's statement "The sequel is out as well and can be played here: Run 3", in the light of the Respondent's registration of the disputed domain name <run3-coolmath.com>, is an attempt by the Respondent to leverage its game "Run 3" off the Complainant's game "Run 2" as being a purported sequel.
On the totality of the evidence, and on the balance of probabilities, the Panel finds that the disputed domain name has been used with intent to attract Internet users to the Respondent's on-line location by confusion between the disputed domain name and the Complainant's trademark. It is implausible, and there is no evidence, that the Respondent's operation exists for other than commercial gain. Use of the disputed domain name is found to be in bad faith. The Panel further finds on the balance of probabilities that the disputed domain name was registered for the bad faith purpose for which it has been used. Accordingly the Panel finds registration and use of the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent's continued use of the disputed domain name after failure to reply to the Complainant's cease and desist letter of June 5, 2017, is found to be a compounding factor in bad faith (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).
The Complainant has cited previous decisions under the Policy in which the use of a privacy service by a respondent has been found at least to be a compounding factor in bad faith. The use of a privacy service by a registrant may be entirely legitimate. On the other hand it may have been done with the intention of obstructing the service of a complaint. It is noted that in this instance the Written Notice of the Complaint sent by courier could not be delivered to the address in Viet Nam provided by the Respondent. The courier notified the Center that "The address on the airway bill is incomplete / wrong". The Written Notice of the Complaint sent by courier to Whois Agent, Domain Protection Services, Inc., with a post box address in Denver, US, was undelivered for the same reason. In all the circumstances the Panel finds it more probable than not that the Respondent intentionally obscured its contact details in order to avoid service of any complaint and accordingly finds the Respondent's conduct in this respect to be a further indicator of 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 <run3-coolmath.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: October 13, 2017