The Complainant is C LLC of New York, United States of America ("USA"), represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondents are Wiley Prince of New York, USA and PrivacyG, of Arizona, USA. 2. The Domain Name and Registrar
The disputed domain name (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 March 5, 2015. On March 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2015, 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 March 16, 2015 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 March 17, 2015.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 25, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 16, 2015.
The Center appointed John McElwaine as the sole panelist in this matter on April 28, 2015. 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, CoolM, LLC, is a California limited liability company with its principal place of business located in New York, New York. Complainant is the owner and operator of websites featuring educational games for children.
Complainant is also the owner of the United States trademark registration for COOLMATH, U.S. Reg. No.3404699, reciting "[c]omputer 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, and is now incontestable.
On February 3, 2015, Respondent, Wiley Prince registered the disputed Domain Name through the Registrar using a privacy/proxy service, Respondent PrivacyG. 5. Parties'' Contentions A. Complainant
Since at least as early as 1997, Complainant has continuously used the COOLMATH mark to identify its math and science games and education websites. Complainant asserts that its profile as a website has risen dramatically since it was founded and that, since 1998, Complainant has been considered a leading Internet site for math and other educational games. Complainant operates multiple websites that use the COOLMATH mark in their domain names, all of which feature educational games for school-aged children.
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 throughout the United States. As a result, Complainant's websites have achieved a high degree of popularity among the general public. Complainant alleges that its website received 649 million visits between October 2013 and September 2014 and has received 3.36 billion page views.
Important to this matter, Complainant asserts that its websites share a common look and feel. "C", "", and "" all use the colors green, blue, yellow, red, and purple in bold fonts on a black background. Complainant alleges that this distinctive look and feel has been recognized by others in the education field.
For the purposes of this proceeding Complainant is asserting common law trademark rights that have arisen from its nearly 20 years of extensive and continuous use of the COOLMATH mark. In addition to common law trademark rights, the COOLMATH mark has been registered as a trademark in the United States for use in connection with "[c]omputer 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 [e]ducation" in International Class 41. Collectively, these trademarks are referred to herein as the COOLMATH mark.
With respect to the allegations directed toward Respondent, Complaint initially points out that the Domain Name was created on February 3, 2015, years after Complainant had begun using its COOLMATH mark and long after Complainant had registered its COOLMATH mark in the United States. Complainant asserts that there is no relationship between it and Respondent that would give rise to any license, permission or authorization for Respondent to use or register the Domain Name. Further, Complainant denies that Respondent was ever authorized to use or otherwise promote any of Complainant's educational games.
Complainant alleges that the look and feel of the website appearing at the Domain Name is virtually identical to Complainant's own website by using a similar blue, yellow and red color scheme. Moreover, like Complainant, Respondent's website offers a number of games for download and online play. However, not all of the games offered at Respondent's website have an educational value. For example, one of the new "featured" games at Respondent's website is Cool Math Games Crazy Taxi, which is nothing more than a car racing game.
As a result of the use of the COOLMATH mark in the Domain Name and on the website, as well as using a similar color scheme, Complainant alleges that the website located at the Domain Name is likely to confuse consumers by creating a false impression that Respondent's website is affiliated with or otherwise authorized by the Complainant. In addition consumers are likely to believe that Complainant approved Respondent to register and use the Domain Name.
On February 20, 2015, Complainant's counsel sent a letter to the Respondent concerning its use and registration of the Domain Name. Complainant asserts that it has not received a response to this letter.
Complainant contends that the Domain Name should be transferred to 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, 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. Complaint alleges that the addition of the words GAMES ONLINE, which merely describes the services provided by the websites, and the top-level domain ".org", does little to distinguish the Domain Name from its COOLMATH mark. As a result, Complainant avers that the Domain Name is confusingly similar to its common law and registered COOLMATH mark.
With respect to the second element of the Policy Complainant contends that there is no evidence that Respondent has rights or a legitimate interest in the Domain Name because registration of the Domain Name occurred after Complainant had made extensive use of the COOLMATH Mark and after Complainant had obtained registrations for the COOLMATH mark in the United States. Complainant asserts that it has not licensed or otherwise permitted 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 Respondent is commonly known by the Domain Name.
With respect to the third element of the Policy, Complainant alleges the Domain Name incorporates Complainant's registered COOLMATH mark and is confusingly similar to Complainant's common law rights in its well-known COOLMATH mark. Complainant alleges that 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. Complainant further asserts that Respondent's failure to respond to Complainant's February 20, 2015 letter requesting that Respondent agree to voluntarily transfer the Domain Name to Complainant is evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with actual evidence demonstrating:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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.
Because of Respondent's default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Ltd. v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(e) of the Rules ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint"). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel's findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The Panel finds that Complainant owns trademark rights in the COOLMATH mark, which predate the registration of the Domain Name.
Complainant has established valid and existing trademark rights in the COOLMATH mark. The mark has been in use for almost 20 years. Additionally, where a mark is incontestable under 15 U.S. Code ("15 U.S.C.") § 1065, the certificate of registration constitutes "conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce" according to 15 U.S.C. § 1115(b); see also, 15 U.S.C. § 1065; Ralph Maltby Enters., Inc. v. Women With Balls,WIPO Case No. D2004-0917 (finding that "[u]nder U.S. trademark law (15 U.S.C.A. § 1115), these incontestable registrations provide conclusive evidence of Complainant's ownership of the marks in the U.S. and of its exclusive right to use the marks in connection with the goods and services identified in the registrations").
The Domain Name contains Complainant's COOLMATH mark in its entirety, as a dominant element. It is well-established that the addition of a descriptive or generic word to a trademark in a domain name, particularly when such additional words relate to the goods or services with which the mark is used, does not avoid confusing similarity. eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307. Here, the addition of "games online" merely describes the services offered by both Complainant and Respondent on their respective websites. Thus, the public is likely to believe that the Domain Name is related to or was authorized by Complainant. Here, the Panel finds that the addition of the descriptive words "games online" does not serve to sufficiently distinguish or differentiate the Domain Name from Complainant's COOLMATH mark.
Also, the addition of the generic Top-Level Domain (gTLD) ".org" to the Domain Name typically does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD ".org" is without legal significance since use of a gTLD is technically required to operate the Domain Name and it does not serve to identify the source of the goods or services provided by the registrant of the Domain Name.
The Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to the COOLMATH mark in which Complainant has valid trademark rights. B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent holds no rights or legitimate interests in the Domain Name. However, because the nature of the registrant's rights or interests, if any, in the Domain Name lies most directly within the registrant's own knowledge, the consensus view is that this burden is a light one for Complainant. See Education Testing Service v. TOEFL,WIPO Case No. D2000-0044; Grove Broadcasting Co. Ltd v. Telesystems Communications Limited,WIPO Case No. D2000-0703. A complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141 (discussing and citing the WIPO Overview of WIPO Panel Views on Selected UDRP Questions ("WIPO Overview 2.0"), paragraph 2.1); see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252.
Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interest in the Domain Name. In particular, Complainant claims that it has not authorized Respondent to use the COOLMATH mark in a domain name and there is no evidence in the WhoIs data for the Domain Name that Respondent has been commonly known by the term "Cool Math". Complainant denies having permitted or granted any license to Respondent to use the Domain Name.
However, under paragraph 4(c)(i) of the Policy, a panel may find that a respondent has a right or legitimate interest in a disputed domain name if the circumstances suggest that before any notice to it of the dispute, the respondent has used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. Although the Respondent did not file a response, the Complaint makes it clear that the Respondent has been using the Domain Name in connection with a website that offers online games, some with an educational component, targeted to school age children. If this use amounted to a bona fide offering of services pre-dating notice to the Respondent of the dispute, then the Complaint will fail under the second arm of the Policy.
Complainant argues that Respondent is not making a bona fide offering of services because Respondent's registration of the Domain Name, together with the presentation of the content on website, is meant to confuse consumers into believing that Respondent is associated with or endorsed by Complainant. However, the UDRP is not the proper mechanism to address cases of pure trademark infringement. It is designed to handle cases of cybersquatting, and the fact that the use of a disputed domain name in connection with the content of the relevant website may amount to trademark infringement will not necessarily deprive a respondent of a claim to a right or legitimate interest where the domain name was adopted and used commercially in good faith, without knowledge that the use infringed a registered mark. See Eli Lilly and Company v. Protected Domain Services, Customer,WIPO Case No. D2010-1477.
There are factors that may take use of the Domain Name that pre-dates notice of a complaint outside the scope of paragraph 4(c)(i) of the Policy. For instance, panels have found that using a disputed domain name, together with the presentation of content in a manner calculated to confuse consumers is not a bona fide offering of services. Six Continents Hotels, Inc. v. Paydues Inc.,WIPO Case No. D2012-0756. Similarly, panels have found that use which intentionally trades on the fame and reputation of a complainant's trademark should not be regarded as bona fide use within the meaning of paragraph 4(c)(i) of the Policy. See Dial-A-Mattress Operating Corp. v. N, Inc.,WIPO Case No. D2001-0240; Madonna Ciccone p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847 (Panel concluded that "…use which intentionally trades on the fame of another cannot constitute a ''bona fide'' offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.").
In the Panel's view the facts here establish that Respondent was not making a bona fide use of the Domain Name. There is little doubt that Respondent was aware of Complainant when it registered the Domain Name, which is shown most persuasively by Respondent's use of a similar color scheme. Furthermore, the Respondent's "About Us" section of the website repeatedly refers to the operator or source of the website as Cool Math Games, a mark identical to the name of a website operated by Complainant and confusingly similar to the Complainant's COOLMATH mark. LEGO Juris A/S v. I Made Irawan, - DRI-110993,WIPO Case No. D2014-1538 (Finding no bona fide offering when respondent declared in its "about us" information that it was a distributor of LEGO products and led users to believe that was related to complainant by use of a slogan of the complainant).
Additionally, as pointed out by the Complainant, Respondent's website has a dubious connection to math but clearly offers numerous purely entertainment focused games targeted at children. In fact, a review of the screenshots of Respondent's website at Exhibit G shows primarily only entertainment games, such as Minecraft, Tower Defense, Crazy Taxi and Parking Mania, and does not appear to display any math or education related games. This calls into question any legitimate right or need to use the term "math" in the Domain Name. Moreover, Complainant has operated its websites for almost 20 years and has billions of page visits. In the Panel's opinion, Complainant's COOLMATH mark was sufficiently well-known that Respondent must have known of Complainant when it was registering the Domain Name. Without a response from Respondent providing a credible counter explanation, Respondent's conduct does not, in the view of the Panel, confer a right or legitimate interest under paragraph 4(c)(i) of the Policy. C. Registered and Used in Bad Faith
Complainant must show that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(a)(iii) of the Policy. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Paragraph 4(b)(iv) of the Policy specifies that bad faith exists where Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107. Based on Complainant's submissions, which were not rebutted by Respondent, it is alleged that Respondent knew of Complainant's well-known COOLMATH mark when registering the Domain Name and that Respondent is using the Domain Name to intentionally confuse consumers and to trade on Complainant's rights and reputation.
The website displayed at the Domain Name uses a similar color scheme, claims that the source of the website is Cool Math Games and provides access to online games targeted to school age children. Troubling to the Panel is that Respondent's website purports to be educational in nature but provides numerous games that are purely entertainment in their nature. This fact cuts against any inference that the name was not intended to divert Internet traffic away from Complainant. Thus, as discussed above, without a response by Respondent, there is no credible explanation for Respondent to have chosen to use the words "coolmath" in the Domain Name other than to trade-off the goodwill and reputation of Complainant's trademark or otherwise create a false association with Complainant.
For this reason, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
John C. McElwaine
Sole Panelist
Date: May 12, 2015.
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