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 / Kenan Yazici, C of Istanbul, Turkey. 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 September 13, 2018. On September 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2018, 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 September 17, 2018 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 September 17, 2018.
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 September 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on October 16, 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
Since at least 1997, the Complainant has operated a number of mathematics, science game and education websites. For these purposes, it has registered a number of domain names, including (by way of example) , and , each of which resolves to separate websites featuring educational, science or mathematics related content. Each of the Complainant’s websites incorporates COOLMATH within its trading style. The Complainant ensures that each game on its websites has educational value, features age-appropriate content and does not promote violence or use guns.
The Complainant’s websites are widely used. By way of example, the website “” received 238 million site visits and had 2.7 billion page views in the period August 2016 to July 2017.
The Complainant uses a common look and feel on those of its websites which are related to mathematics, and a similar stylization, but using slightly different colours, for its websites aimed at teachers, parents and schoolchildren.
The Complainant has two registered trade marks. One of these is United States trade mark, registration No. 3,404,699, for COOLMATH, registered on April 1, 2008, in International Class 41. The services protected include online websites and online computer games in the fields of mathematics and science education.
The disputed domain name was registered on May 4, 2014. C was listed as the registrant up until August 28, 2018, after which time Domains by Proxy, LLC was shown as the registrant. The disputed domain name points to a website, the stylization of which is similar to that of the Complainant’s websites. The banner at the top of the home page reads “Cool Math Club”. A banner beneath that invites the user to “Play free Cool Math Games online! Play free games online including Math Games Club and more at CoolMathClub.Com”. Featured games include “Shotfirer 2”, “Star Wars Team Tactics” and “Battle Tank”. Some pages within the Respondent’s website contain third-party advertisements. 5. Parties’ Contentions A. Complainant
The Complainant draws attention to other decisions under the Policy which have recognized its rights in COOLMATH, including a decision, resolved in its favour, against the Respondent in these proceedings, namely C LLC v. Kenan Yazici, C,WIPO Case No. D2018-0646, which concerned the domain names and .
The Complainant says that the disputed domain name is confusingly similar to a trade mark in which it has rights. The generic Top-Level Domain (“gTLD”) suffix, “.com” is not taken into consideration when considering the question of confusing similarity. The disputed domain name incorporates the Complainant’s COOLMATH trade mark in its entirety. Where a domain name wholly incorporates a complainant’s registered trade mark, this is sufficient to establish that the domain name is identical or confusingly similar to it for the purposes of this element of the Policy; see Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105. COOLMATH is the dominant and distinctive part of the disputed domain name and the addition of the generic term “club” does not distinguish the disputed domain name from the Complainant’s trade mark.
The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. As the Complainant’s adoption and extensive use of COOLMATH predates the Respondent’s registration of the disputed domain name, the burden is on the Respondent to establish its rights or legitimate interests in the disputed domain name; see PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174.
Moreover, the Respondent’s use of COOLMATH cannot constitute a bona fide offering of goods and services because the Respondent has not posted a prominent disclaimer explaining that it has no relationship with the Complainant; see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Furthermore, the Respondent’s games offered for play include ones which would never appear on the Complainant’s website because they feature violence or lack educational value.
Having regard to the fact that the Complainant had made extensive use of its COOLMATH trade mark many years before the registration of the disputed domain name, the Respondent was on actual, or at least constructive, notice of the Complainant’s rights as at the date of registration of the disputed domain name. In addition, the Respondent’s registration of the disputed domain name, together with the fact that the content on the website to which it resolves clearly tries to mimic that of the Complainant, shows that the Respondent is attempting to mislead potential visitors into believing that its website is somehow owned by, or affiliated with, the Complainant. Several UDRP panels have held that respondents that operate in this manner have no legitimate interests in their domain names.
Lastly, the Complainant says that the Respondent has registered and is using the disputed domain name in bad faith. Given the fame of the Complainant’s COOLMATH trade mark and the popularity of the websites operated by it, consumers are likely to believe that the website to which the disputed domain name resolves is also operated by the Complainant. The only reason for the Respondent’s registration of the disputed domain name has been in order intentionally to confuse Internet users and drive traffic to the Respondent’s website for its own commercial benefit. Such registration and use must be considered to be in bad faith; see, for example, LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138.
The Respondent’s adoption and use of COOLMATH shows its familiarity with the Complainant’s mark and its awareness of the fame of that mark. Furthermore, there is clearly bad faith where, as here, the Respondent is using the disputed domain name to defraud potential users and/or to falsely suggest a connection with the Complainant; see, for example, Farouk Systems Inc. v. O,WIPO Case No. D2007-1201. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a Response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant’s has provided evidence of its trade mark registration for COOLMATH, details of which are given above. This establishes its rights in the mark.
For the purpose of considering whether the disputed domain name is identical or similar to COOLMATH the gTLD “.com” is disregarded as this is a technical requirement of registration. Accordingly, the only difference between the disputed domain name and the Complainant’s trade mark is the addition of the word “club”. This additional component of the disputed domain name does not avoid the confusing similarity between the disputed domain name and the Complainant’s trade mark. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
There is no reason to depart from the usual approach, as outlined above. The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely;
(i) before any notice to it of the dispute, it had used or made 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) it had been commonly known by the domain name, even if it had acquired no trade mark or service mark rights; or
(iii) it was making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Paragraph 4(c)(ii) of the Policy is inapplicable; there is nothing to suggest that the Respondent has been commonly known by the disputed domain name. Paragraph 4(c)(iii) of the Policy is also inapplicable; the advertising which features on the Respondent’s website establishes that its motivation is, at least in part, commercial. Moreover, as explained at section 2.5 of the WIPO Overview 3.0; “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner”. As considered in more detail below, the Respondent’s website misleadingly suggests a connection with the Complainant.
Turning to paragraph 4(c)(i) of the Policy, save that many of the games promoted on the Respondent’s website involve shooting of some type, the style and content of the Respondent’s website is very closely modeled on that of the Complainant’s website. When considered in the context of the COOLMATH component of the disputed domain name, coupled with the liberal use of the “Cool Math Club” branding which features throughout the website, the Respondent’s intention is plainly to present its website as operated by the Complainant or with its authorization. The Respondent is thereby obtaining traffic from its perceived association with the Complainant’s websites and thereby, it is reasonable to assume, increasing the advertising revenue it derives from the advertising on its website. Operating a website which confuses Internet users by piggy-backing off the goodwill which the Complainant has built up in its websites in order to derive a commercial advantage from that confusion does not constitute a bona fide offering of goods and services.
The Complainant has made out a prima facie case under this element of the Policy and the burden of production accordingly shifts to the Respondent. As it has not replied to the Complaint, it has not attempted to rebut the Complainant’s contentions. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance at paragraph 4(b)(iv), in summary, is that, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
So far as bad faith registration is concerned, section 3.2.1 of the WIPO Overview 3.0 explains that: “in some cases, e.g., where it is unclear why a domain name was initially registered and the domain name is subsequently used to attract Internet users by creating a likelihood of confusion with a complainant’s mark, panels have found that UDRP paragraph 4(b)(iv), read in light of paragraph 4(a)(ii), can support an inference of bad faith registration for the respondent to rebut”.
Such an approach is appropriate here in view of the Respondent’s use of the disputed domain name. Specifically, its conduct corresponds to the circumstances outlined at paragraph 4(b)(iv) of the Policy, in that its website is evidently intended to lead Internet users to believe that it is operated by, or connected with, the Complainant. The inclusion of third-party advertising links on the Respondent’s website establishes that it will derive financial advantage from the increased traffic which results from Internet users being under this erroneous impression. That, in itself, is sufficient for a finding of bad faith. In the light of the Respondent’s overall conduct discussed above, particularly its registration of other COOLMATH-connected domain names, the Panel considers the named Respondent’s recent use of a privacy service as a further indication of bad faith. The Panel accordingly finds that the disputed domain name was registered and is being used 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 disputed domain name be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: October 30, 2018
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