WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coolmath.com LLC v. Zuka Diasamidze; Awin Joshi; Naomi Abe; Chris Kelly
Case No. D2017-1717
1. The Parties
The Complainant is Coolmath.com LLC of New York, New York, United States of America (“USA” or “United States”), represented by Fross Zelnick Lehrman & Zissu, PC, USA.
The Respondents are Zuka Diasamidze of Tbilisi, Georgia; Awin Joshi of Bhavnagar, India; Naomi Abe of Tokyo, Japan; and Chris Kelly of United Kingdom of Great Britain and Northern Ireland, self-represented. For the reasons set out in section 6.A. below, for the purposes of the decision, the Panel will refer to the Respondents as a single Respondent.
2. The Domain Names and Registrars
The disputed domain names (collectively “Domain Names”) <bestcoolmathgames.com>, <coolermath.net>, <cool-math-games.net>, <coolmathgamesrun.net> and <coolmathgames6.com> are registered with GoDaddy.com, LLC; the disputed domain name <coolmathgamesrun.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com; the disputed domain name <coolmathrun2.org> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrars”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2017. On September 8, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On September 9, 2017, September 11, 2017 and September 12, 2017, the Registrars transmitted by email to the Center their verification response providing the contact details of the named registrants of the Domain Names. The Center sent an email communication to the Complainant on September 13, 2017 providing the registrant and contact information disclosed by the Registrars which differed from the named Respondent and contact information in the Complaint, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same day.
On September 18, 2017, the Center transmitted an email in English and Japanese regarding the language of the proceeding inviting comment from the parties as to the proper language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day and filed a second amended Complaint in response to the Center’s request. On September 19, 2017, the Respondent submitted an email in English indicating that the words like “cool maths games” are not unique and requesting the Center not to send emails to it. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the first amended Complaint and the second 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 in English and Japanese of the Complaint, and the proceedings commenced on September 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2017. On September 27, 2017, the Respondent submitted an email in Japanese indicating that it did not use the Domain Names. The Respondent did not file a formal Response. Accordingly, the Center notified the Parties the commencement of panel appointment process on October 16, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on October 19, 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 Complainant is a computer software company based in the United States founded in 1998. The Complainant and its predecessor in title have since 1997 operated various websites containing educational games focusing on maths and science. The Complainant’s website “www.coolmath-games.com” received 238 million visitors between August 1, 2016 and July 31, 2017. The Complainant also operates other websites at “www.coolmath.com” and “www.coolmath4kids.com” that provide similar services targeted at different age groups. One of the Complainant’s educational games accessible from the Complainant’s website is “Run” (along with a sequel “Run 2”).
The Complainant has held a trade mark registration for the word mark COOLMATH (the “COOLMATH Mark”) in the United States with a registration date of April 1, 2008 and a date of first use of November 14, 1997 (registration no. 3404699).
The Domain Name <bestcoolmathgames.com> was registered on May 19, 2015. The Domain Name <coolermath.net> was registered on June 5, 2015. The Domain Name <cool-math-games.net> was registered on May 20, 2017. The Domain Name <coolmathgames6.com> was registered on March 14, 2016. Each of these Domain Names redirect to a website (stated in the Complaint to be located at “www.coolmathgames6.com” but at the time of the decision located at “www.coolmathgamesrun.com”) offering various games targeted at children (the “Respondent’s First Website”). The Domain Name <coolmathgamesrun.net> was registered on September 30, 2013. This Domain Name redirects to a website (the “Respondent’s Second Website”) which is similar to the Respondent’s First Website and offers computer games targeted at children, some with an educational bent. The Domain Name <coolmathgamesrun.org> was registered on January 26, 2017. This Domain Name redirects to a website (the “Respondent’s Third Website”) which is similar to the Respondent’s First and Second Websites and offers computer games targeted at children. The Domain Name <coolmathrun2.org> was registered on July 12, 2017. It is presently inactive.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s COOLMATH Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the COOLMATH Mark having registered the COOLMATH Mark in the United States since 2008 and having used it as part of its website offering educational games since 1997. The Complainant has developed a considerable reputation in its various websites using the COOLMATH Mark and has received accolades from parents and schools for the services it provides.
Five of the seven Domain Names incorporate the whole of the Complainant’s COOLMATH Mark and add various generic terms such as “best”, “games” and “run”, which does not decrease the likelihood of confusion with the COOLMATH Mark. The Domain Name <coolermath.net> merely adds the suffix “er” between “cool” and “math” and the Domain Name <cool-math-games.net> adds a hyphen between “cool” and “math”. In each case the COOLMATH Mark remains the dominant and distinctive part of the Domain Names.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent is not commonly known as any of the Domain Names, nor does the Respondent have any authorization or license from the Complainant to use the COOLMATH Mark. The registration of each of the Domain Names occurred after the Complainant had established a reputation in the COOLMATH Mark and the Domain Names are either unused, or redirect to websites that offer computer games targeted at children and clearly try to mimic the Complainant’s websites, indicating that the Respondent is trying to mislead potential visitors into believing that the Respondent’s websites are affiliated with the Complainant.
The Domain Names were registered and are being used in bad faith. The only reason for the Respondent’s use of the COOLMATH Mark is to intentionally confuse consumers, to trade on the Complainant’s rights and reputation and to drive traffic to its websites for its own commercial benefit. Each of the Domain Names is either being passively held or resolves to a website that displays the COOLMATH Mark. This conduct amounts to registration and use of the Domain Names in bad faith.
The Respondent did not reply to the Complainant’s contentions other than to deny that words like “cool maths games” are unique.
6. Discussion and Findings
A. Consolidation of Proceedings
The named registrant of the Domain Names <bestcoolmathgames.com>, <coolermath.net>, <cool-math-games.net> and <coolmathgames6.com> is Zuka Diasamidze. The named registrant of the Domain Name <coolmathgamesrun.net> is Chris Kelly. The named registrant of the Domain Name <coolmathgamesrun.org> is Awin Joshi. The named registrant of the Domain Name <coolmathrun2.org> is Naomi Abe.
UDRP Proceedings are normally brought against a single Respondent. However paragraph 10(e) of the Rules states that in certain circumstances a panel may consolidate multiple domain name disputes. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 4.11.2, states:
Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).
Based on the information before it, the Panel is prepared to allow the consolidation of the proceedings against each of the named registrants on the basis that the Domain Names are under common control of Zuka Diasamidze. The Domain Names <coolmathgamesrun.net>, <coolmathgamesrun.org>, <coolmathrun2.org> were each initially registered to Zuka Diasamidze, following which, at various dates in the last four years, they were placed into privacy protection and the registrant details changed to the present named registrants. The Complainant has provided prima facie evidence that the address for <coolmathrun2.org> has been fraudulently listed, and the email address associated with <coolmathgamesrun.org> is a hacked email address unconnected with the named Respondent. The Panel also notes the identical uses to which all the Domain Names (other than <coolmathrun2.org>) have been put. Finally, the Panel notes that, while the Center has received communication from email addresses associated with <coolmathgamesrun.org> and <coolmathrun2.org> neither of them denied any association with Zuka Diasamidze or objected to the consolidation of the proceedings requested by the Complainant. The Panel finds that, on the balance of probabilities, the Domain Names are subject to common control and that the consolidation would be fair and equitable to all the Parties. As such, for the purposes of the decision, the Panel will refer to the named registrants of the Domain Names as a single Respondent.
B. Language of the Proceeding
In the present case, the language of the registration agreement for all the Domain Names other than <coolmathrun2.org> is English. The language of the registration agreement for <coolmathrun2.org> is Japanese.
Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complainant, upon receiving a notification that the language of the registration agreement for <coolmathrun2.org> was Japanese from the Center, submitted a request for this dispute to proceed in English. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules.
The WIPO Overview 3.0, paragraph 4.5.1, in considering how the (working) language of a UDRP proceeding is determined, states:
Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.
The credibility of any submissions by the parties and in particular those of the respondent (or lack of reaction after having been given a fair chance to comment) are particularly relevant.
Where it appears the parties reasonably understand the nature of the proceedings, panels have also determined the language of the proceeding/decision taking account of the panel’s ability to understand the language of both the complaint and the response such that each party may submit pleadings in a language with which it is familiar.
In adopting a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs; see Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432.
The Panel finds that in the circumstances of this case, paragraph 11 of the Rules is best served by allowing the proceedings to be conducted in English. Given the finding that, on the balance of probabilities the Domain Names are subject to common control, the language of the registration agreement for six of the seven Domain Names is English as is the content of the website to which a number of the Domain Names resolve to is English, it would appear that the Respondent is far more familiar with English than Japanese. Furthermore the Respondent has been given a fair chance to object to the Complainant’s choice of English as the language of the proceeding, but has not done so, nor has it participated in the proceeding generally other than through isolated emails.
C. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and each Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the COOLMATH Mark, having registrations for COOLMATH as a trade mark in the United States.
The Domain Names <bestcoolmathgames.com>, <coolmathgamesrun.net>, <coolmathgames6.com>, <coolmathgamesrun.org>, <coolmathrun2.org> each incorporate the COOLMATH Mark in its entirety with the addition one or more generic terms. The addition of a generic term to a complainant’s mark is insufficient to dispel the impression of confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056. The Domain Names <coolermath.net>, <cool-math-games.net> contain minor variations of the COOLMATH Mark, being the addition of the suffix “er” or a hyphen between “cool” and “math”. Neither of these variations dispels the overall impression that each of the Domain Names comprises of varients of the Complainant’s COOLMATH Mark.
An individual viewing any of the Domain Names may be confused into thinking that the each of the Domain Names would refer to a site in some way connected to the Complainant. The Panel finds that each of the Domain Names are confusingly similar to the Complainant’s COOLMATH Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
D. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 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.” (Policy, paragraph 4(c))”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the COOLMATH Mark or a mark similar to the COOLMATH Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar names. There is no evidence that the Respondent has used or made demonstrable preparations to use any of the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Currently the Domain Name <coolmathrun2.org> is inactive while the remainder of the Domain Names resolve to websites that, without the permission of the Complainant:
(a) make reference to the Complainant’s COOLMATH Mark, potentially indicating that the Respondent and its websites are in some way connected with the Complainant or offer its products; and
(b) purport to offer computer games to children under the COOLMATH Mark, in direct competition with the Complainant. The games offered by the Respondent are not limited to educational games, or games focused on maths and hence none of the Domain Names are descriptive of the services offered at the Respondent’s websites.
Such use is not a bona fide offering of goods or services. The use of a domain name that contains the Complainant’s COOLMATH Mark to advertise children’s computer games in competition with the Complainant does not amount to a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registrations to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) The Respondent has registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the COOLMATH Mark at the time each of the Domain Names were registered. The Respondent’s websites, mimic certain aspects of the design of the Complainant’s websites, offer children’s computer games in direct completion with the Complainant, and, in respect of <coolmathgamesrun.net>, <coolmathgamesrun.org>, <coolmathrun2.org> directly refer to “Run” and “Run 2”, games offered by the Complainant. Furthermore it is improbable that a person would register seven domain names that all incorporate the COOLMATH Mark without having some awareness of the Complainant’s mark rights. The registration of the Domain Names in awareness of the COOLMATH Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent may also have registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name. The registration of seven Domain Names incorporating the COOLMATH Mark (or minor variations of the COOLMATH Mark) is sufficient to show a pattern of conduct in registering domain names in order to prevent the Complainant from reflecting its mark in a corresponding domain name.
The Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the COOLMATH Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent uses six of the seven Domain Names to operate websites offering children’s computer games in direct competition with the Complainant that likely generate revenue for the Respondent. The Respondent therefore is likely to receive revenue from Internet users who happen to come across the Respondent’s website by means of confusion with the COOLMATH Mark and then use the computer games services offered by the Respondent.
The fact that the Domain Name <coolmathrun2.org> has not yet been linked to an active website does not prevent a finding of bad faith being made in respect of it. In circumstances where the Respondent has registered seven Domain Names incorporating the COOLMATH Mark and redirected six of them to various websites, and where the Domain Name <coolmathrun2.org> directly refers to the Complainant and its “Run 2” game, the Panel is prepared to infer that the Respondent had the same intention when registering and holding the Domain Name that has not yet resolved to an active website. In any event, the passive holding of a domain name does not prevent a finding of bad faith, see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In either case, the Panel finds that the Respondent has registered and is using the each of the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <bestcoolmathgames.com>, <coolermath.net>, <cool-math-games.net>, <coolmathgamesrun.net>, <coolmathgamesrun.org>, <coolmathgames6.com> and <coolmathrun2.org> be transferred to the Complainant.
Date: October 24, 2017