Complainant is Coolmath.com LLC of New York, New York, United States of America ("United States" or "US"), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
Respondent is Mai Vu Huy of Ho Chi Minh City, Viet Nam.
The disputed domain names, <coolestmathgames.net>, <coolmathkidgames.com>, and <coolmathsgame.net>, (the "Domain Names") are registered with NameSilo, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 15, 2016. On September 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 21, 2016 and September 22, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 Respondent of the Complaint, and the proceedings commenced on September 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 17, 2016.
The Center appointed Gareth Dickson as the sole panelist in this matter on October 24, 2016. 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.
Complainant is the proprietor of US trademark registration number 3404699, for COOLMATH (the "First Mark") and US trademark registration number 4671364 for COOLMATH-GAMES (the "Second Mark"). The First Mark was applied for on July 2, 2007, and was registered on April 1, 2008. The Second Mark was applied for June 10, 2014, and was registered on January 13, 2015. Both the First Mark and the Second Mark are registered for "Computer 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".
The Domain Names were registered on the following dates:
<coolmathkidgames.com> May 2, 2012
<coolmathsgame.net> May 18, 2012
<coolestmathgames.net> June 28, 2016
It does not appear that there has been any correspondence between the Parties.
Complainant contends that each of the Domain Names incorporates its COOLMATH mark and its COOLMATH-GAMES mark and is "virtually identical" to those marks. Complainant also argues that the addition of "game(s)", "kid", "online" and "s" do not affect that conclusion, and cites the decision in MILIPOL v. Milipol International, WIPO Case No. D2012-0387 to support its claim that the addition of "est" to the First Mark in the disputed domain name <coolestmathgames.net> does not eliminate confusing similarity between that domain name and Complainant's trademarks.
Regarding Respondent's alleged lack of rights or legitimate interests in respect of the Domain Names, Complainant states that:
"As a preliminary matter, since Complainant's adoption and use of the COOLMATH mark predates the registration of the Domain Names, the burden is on Respondent to establish its rights or legitimate interest in the Domain Names. See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a/ Cyberson, WIPO Case No. D2003-0174."
Complainant further contends that its websites are "well-regarded by teachers and parents and are approved for use in schools across the nation", and "have become enormously popular". It provides examples of some of the "numerous accolades from the education press" its services have won. Complainant states that its websites share a common look and feel, characterized by the "distinctive" use of "the colors green, blue, yellow, red and purple in bold fonts on a black background".
Complainant alleges that Respondent's websites are "virtually identical" to Complainant's own websites, that Respondent "clearly was inspired by Complainant's websites when designing the websites at the Domain Names" and that Respondent's and Complainant's websites are "incredibly similar". Complainant further alleges that Respondent offers games for online play (not all of which have an educational value) and that its website is "designed to confuse consumers as to the source or sponsorship of the website". Complainant argues that Respondent has no rights or legitimate interests in the Domain Names since the Domain Names are used "in connection with websites that so clearly try to mimic the appearance and contents of Complainant's own official websites" and are used "to defraud potential users".
Complainant also argues that Respondent's use of the COOLMATH mark cannot be bona fide since it does not satisfy the requirements of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
It also alleges that Respondent's "incredibly similar" websites are used to "intentionally confuse consumers, to trade on Complainant's rights and reputation, and to drive traffic to its websites, all for his own commercial benefit". Complainant argues that Respondent's behavior is in "direct violation" of paragraph 4(b)(iv) of the Policy, in that Respondent is using the Domain Names "to intentionally attract, for commercial gain, Internet users to a website by creating a likelihood of confusion as to the source".
Respondent did not reply to Complainant's contentions.
Under paragraph 4(a) of the Policy, Complainant bears the burden of proving that:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and is being used in bad faith.
These criteria are cumulative. The failure of Complainant to prove any one of them means the Complaint must be denied.
The COOLMATH and COOLMATH-GAMES trademarks comprise dictionary words. Complainant's use of those words in combination, however, has conferred on each sign sufficient distinctiveness that they have been deemed registrable as trademarks in the United States. The Panel has no reason to go behind those registrations and therefore finds that COOLMATH and COOLMATH-GAMES are trademarks in which Complainant has rights.
The COOLMATH trademark and the COOLMATH-GAMES trademarks are both recognizable within the Domain Names on an aural and on a side-by-side visual comparison. The addition of "game(s)", "kid", "online" and "s" do not affect that conclusion, nor does the absence of the hyphen and the "s" found in the COOLMATH‑GAMES mark. The addition of "est" does not affect that conclusion either (although the Panel notes that the decision in MILIPOL v. Milipol International, WIPO Case No. D2012-0387 does not refer to the use of "est" per se, but only as a corporate identifier).
Accordingly, the Panel finds that the Domain Names are confusingly similar to Complainant's trademarks.
The Panel does not accept Complainant's contention that merely since its adoption and extensive use of the COOLMATH mark predates the registration of the Domain Names, the burden of the second element of the UDRP shifts to Respondent, that is, that it automatically becomes Respondent's burden to demonstrate a right or legitimate interest in respect of the Domain Names. It is true that support for Complainant's position can be found in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a/ Cyberson, WIPO Case No. D2003-0174, to which Complainant directed the Panel. However, Complainant's submissions do not account for the numerous UDRP decisions since 2003 in which panels have held that the burden only shifts to a respondent once a complainant has established a prima facie case that the respondent has no rights or legitimate interests in respect of the domain name. See, for example, Accor v. Eren Atesmen, WIPO Case No. D2009-0701 ("A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent.") and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 ("The Panel notes that Complainant bears the 'general burden of proof' under paragraph 4(a)(ii) of the Policy, which burden shifts to the Respondent once Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests."); as well as paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.")
In any event, Complainant has articulated several arguments to establish such a prima facie case against Respondent, including: (i) the alleged similarity of Respondent's websites to Complainant's websites, which Respondent is alleged to use to confuse consumers, to drive traffic to its own websites and for commercial gain; and (ii) Respondent's failure to comply with the requirements of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("Oki Data").
Complainant asserts that Respondent's websites are "incredibly similar" and "virtually identical" to Complainant's websites, and that they "clearly try to mimic the appearance and contents of Complainant's own official websites". Complainant also asserts (and the Panel is prepared to accept) that the "distinctive" elements of Complainant's websites are the use of "the colors green, blue, yellow, red and purple in bold fonts on a black background". Having reviewed the evidence before it, the Panel finds that, to a greater or lesser extent, each of Respondent's websites does incorporate at least some of these distinctive features. While Respondent's websites are not identical to Complainant's websites, the Panel finds that Respondent clearly intends to mimic the look and feel of Complainant's websites and that, in the absence of any evidence to the contrary, it does this to attract users to its site.
The Panel further accepts Complainant's argument that there is no relationship between the Parties pursuant to which Respondent could claim to have Complainant's permission to use Complainant's trademarks in the Domain Names and to use those Domain Names in relation to websites that mimic Complainant's own websites.
Although the Panel has no evidence before it to support Complainant's contention that Respondent seeks to "defraud" users or that it is engaged in any kind of activity "for commercial gain", the Panel finds that in light of the similarities between the Domain Names and Complainant's trademarks, and between the Parties' websites, Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in respect of the Domain Names, which Respondent has failed to rebut.
Complainant also contends that Respondent, despite being based in Viet Nam, cannot be making bona fide use of the dictionary words in Complainant's trademarks to offer "cool" games, some but not all of which are based on physics or mathematical principles, because that use does not meet the requirements of Oki Data. Complainant does not appear to argue that any of the games offered on Respondent's website have been appropriated from Complainant's website, or that Respondent is in any way reselling or otherwise dealing with Complainant's games. Complainant therefore invites the Panel to extend the requirements of Oki Data beyond resellers or distributors of genuine goods, and to find that the Oki Data principles are of general application in the UDRP.
Given the fact that Respondent's website mimics the salient aspects of Complainant's website, it is not necessary for this Panel to assess the Oki Data principles as such.
Although it is not clear on the evidence before the Panel that Complainant had established sufficient rights in the COOLMATH-GAMES mark at the time when the Domain Names were registered, such rights clearly existed in the COOLMATH mark. Furthermore, by showing that Respondent has adopted several domain names that are similar to that mark, and is using them in relation to websites that are intended to mimic the distinctive look and feel of Complainant's websites, Complainant has made out a case of bad faith registration and use of the Domain Names.
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 <coolestmathgames.net>, <coolmathkidgames.com>, and <coolmathsgame.net> be transferred to the Complainant.
Date: November 7, 2016
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