The Complainant is C LLC of New York, New York, United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
The Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States / Zuka Diasamidze of Tbilisi, Georgia. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2018. On May 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2018, 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 May 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2018.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on June 13, 2018. 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 the owner of the trademark COOLMATH, registered in the United Sates on April 1, 2008 under the number 3404699. The Complainant operates math and science games and education websites.
The disputed domain name was registered on September 9, 2017. The disputed domain name resolves to a website that has a similar look to the Complainant’s website and offers games for online play. 5. Parties’ Contentions A. Complainant
The Complainant has used the trademark COOLMATH since 1997 for its mathematics and science games and education websites and is considered a leading website for mathematics and other educational games. The Complainant also provides games named “Run” and “Run 2”.
The disputed domain name includes the Complainant’s trademark in its entirety added with the words “games” and “run”. This is not sufficient to distinguish the disputed domain name from the Complainant’s trademark. The website to which the disputed domain name resolves uses colors and visual elements that are very similar to those found at the Complainant’s website.
The Complainant has not authorized or otherwise allowed the Respondent to use the Complainant’s trademarks or the disputed domain name. The Respondent is not making legitimate noncommercial or fair use of the disputed domain name. Considering the reputation of the Complainant’s trademark, the Respondent must have been aware of the Complainant’s rights when registering the disputed domain name.
This is the second UDRP proceedings between the same parties involving the Complainant’s trademark. The website to which the disputed domain name resolves is identical with which the disputed domain name in the earlier proceedings resolved. The Respondent is using the Complainant’s mark to intentionally lead Internet users to believe that the website at the disputed domain name belongs to or is affiliated with the Complainant. Hence the disputed domain name is used to confuse consumers for commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The disputed domain name includes the Complainant’s trademark in its entirety combined with the common English words “games” and “run”. The Complainant is also offering games under the names “Run” and “Run 2”. These additions to the Complainant’s trademark are not sufficient to remove similarity with the disputed domain name and the Complainant’s mark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.
It is widely accepted view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 and section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant has credibly submitted that the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to use the Complainant’s trademark in a domain name or otherwise. The Complainant has also credibly submitted that the Respondent has no rights or legitimate interests to the disputed domain name.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. In light of the Panel’s findings below, the Panel finds that there are no other circumstances which provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that 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 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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.”
Considering that the same parties have had a previous case concerning the Complainant’s trademark and that the current website is visually very similar to that of the Complainant’s, it is clear that the Respondent is trying to present itself as the Complainant or someone authorized to use the Complainant’s trademark, such as a licensee. For the same reason it is also clear that the Respondent has been aware of the Complainant’s trademark when registering the disputed domain name.
The disputed domain name also includes the name of the Complainant’s service “Run”. It is apparent that the Respondent has been specifically targeting the Complainant’s trademark and reputation in order to cause confusion with Internet users for the Respondent’s own commercial gain.
Hence, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled. 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 disputed domain name be transferred to the Complainant.
Tuukka Airaksinen
Sole Panelist
Date: June 27, 2018
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