Westmore · UDRP DecisionCoolmathgames-com.com
The Panel ordered transfer of <coolmathgames-com.com>. It found the domain confusingly similar to the Complainant’s registered COOLMATH mark because it incorporated the mark and added terms describing the Complainant’s business while mimicking the Complainant’s <coolmath-games.com> domain. The Respondent’s minimal denial did not establish rights or legitimate interests. The Panel found that the Respondent knew of the Complainant’s rights, deliberately mimicked its domain and websites, and attempted to trade on the mark’s goodwill and divert Internet users.
The timeline behind coolmathgames-com.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
The case illustrates how a domain may heighten rather than reduce confusion when it combines an entire trademark with a term describing the complainant’s services and closely reproduces the structure of the complainant’s existing domain. It also shows the evidentiary consequences of a response that offers only bare denials and does not explain the respondent’s selection or use of the name.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Coolmath.com LLC v. Bilal Bilkay Case No. D2015-0067 1. The Parties The Complainant is Coolmath.com LLC of New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, P.C., United States of America. The Respondent is Bilal Bilkay of Tokat, Turkey, self represented. 2. The Domain Name and Registrar The disputed domain name <coolmathgames-com.com> is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on January 15, 2015. On January 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2015, 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. On January 27, 2015, the Center received the Complainant’s e-mail regarding confirmation of communication to the Registrar. On January 27, 2015, the Center received the Respondent’s e-mail communication in Turkish. On January 28, 2015, the Center received the Complainant’s request for continuation of proceeding. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2015. The Response was filed with the Center on January 29, 2015. The Center appointed Christopher J. Pibus as the sole panelist in this matter on February 25, 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 The Complainant owns the U.S. Trademark Registration for COOLMATH (Registration No. 3404699) in association with 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, with first use dating back to November 14, 1997. The Complainant also owns the following domain name registrations: <coolmath.com>, <coolmath4kids.com>, and <coolmath-games.com>. The disputed domain name <coolmathgames-com.com> was registered on October 26, 2014. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar The Complainant relies on its trademark registration for the mark COOLMATH under US Trademark Registration No. 3404699. The Complainant contends that it has used the trademark COOLMATH since at least as early as 1997 to identify its math and science games and education websites. The Complainant contends that the games offered on its websites are carefully selected to be educational. The Complainant contends that the disputed domain name <coolmathgames-com.com> is confusingly similar to the Complainant’s registered trademark COOLMATH and is virtually identical to the Complainant’s <coolmath-games.com> domain name. The Complainant submits that the addition of a hyphen and the generic words “games” and “com” do not distinguish the disputed domain name from the Complainant’s registered trademark. The Complainant contends they make confusion more likely given that the Complaint operates the <coolmath-games.com> domain name. The Complainant further contends that the website associated with the disputed domain name was designed to mimic the Complainant’s collection of online games, absent the Complainant’s educational focus. Rights and Legitimate interests The Complainant contends that there has never been any relationship between the Respondent and the Complainant that would give rise to any license, permission or authorization for the Respondent to use or register the disputed domain name. The Respondent had notice (actual or constructive) of the Complainant’s trademark rights prior to registering the disputed domain name because the disputed domain name was not registered until many years after the Complainant had made extensive use of the COOLMATH trademark and had registered the <coolmath.com>, <coolmath4kids.com> and <coolmath-games.com> domains. The Respondent has never been and is not currently commonly known by the disputed domain name. The Complainant further submits that the Respondent is not using the disputed domain name in a bona fide offering of goods and/or services. Registered and Used in Bad Faith The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith because the Respondent must have been aware of the Complainant’s COOLMATH trademark and websites. The Complainant submits that the Complainant’s websites are popular, have won awards, and that Complainant’s <coolmath-games.com> domain name had 649 million visits between October 2013 and September 2014 and has received 3.36 billion page views. The Complainant submits that the only reason for the Respondent to use the Complainant’s trademark was to intentionally confuse consumers, trade on the Complainant’s rights, and to drive traffic to his own website for his own commercial benefit. The Complainant contends that the Respondent has created a website that is “virtually identical” to the Complainant’s own website to intentionally confuse consumers and trade on the Complainant’s rights and reputation. The Respondent’s website fails to include a disclaimer that the Respondent is not associated with the Complainant and creates the false impression that it is affiliated with or otherwise authorized by the Complainant to register and use the disputed domain name. The Complainant contends that, like the Complainant, the Respondent’s website offers a number of games for download and online play. However, unlike the Complainant, the games offered on the Respondent’s website have little educational value and this will tarnish the reputation and goodwill associated with the Complainant’s website and games, The Complainant submits that the Respondent did not respond to the Complainant’s cease and desist letter. B. Respondent The Respondent filed only a skeletal Response baldly stating that his website and the Complainant’s website are “completely different from each other”. The Respondent states that he concluded that the disputed domain name was “suitable” and that he does not have “malicious intent”. The Respondent included in his response screen captures of the Complainant’s website and the website resolving to the disputed domain name. This evidence is consistent with the evidence provided by the Complainant. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements: (i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (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 Panel finds that the Complainant owns registered trademark rights in the trademark COOLMATH by virtue of its US Trademark Registration No. 3404699. The Panel further finds that the disputed domain name <coolmathgames-com.com > is confusingly similar with the Complainant’s registered trademark COOLMATH. The disputed domain name contains all the elements of the Complainant’s trademark, differing only by the addition of a hyphen and the generic words “games” and “com”. These additions do not serve to distinguish the disputed domain name from the trademark in question and in fact increase the likelihood of confusion because they describe the Complainant’s business and mimic the Complainant’s <coolmath-games.com> domain name. Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel notes that the Respondent filed only a minimal Response in this proceeding. The Response contains a bald statement of denial of the Complainant’s claims, but does not provide any explanation as to the nature of the Respondent’s business or interests in the disputed domain name. The Respondent merely submitted screen captures of the website associated with the disputed domain name and the Complainant’s website. The Respondent did not dispute any of the facts submitted by the Complainant, although the Respondent had an opportunity to do so. Accordingly, the Panel finds that the facts submitted by the Complainant with respect to its trademark rights in the COOLMATH trademark, the reputation of the trademark COOLMATH, and the fact that the Respondent did not respond to the cease and desist letter sent from the Complainant remain uncontested. The Panel finds that Respondent is not commonly known by the name COOLMATHGAMES-COM or the Complainant’s registered trademark COOLMATH and was clearly never authorized or licensed by the Complainant to use the registered trademark COOLMATH. Furthermore, the Panel is prepared to find that the Respondent is not using the disputed domain name in a bona fide manner. The Panel finds that the Respondent must have been aware of the Complainant’s registered rights in the COOLMATH trademark, and that the Respondent deliberately mimicked the Complainant’s <coolmath-games.com> domain name in an attempt to divert Internet users seeking the Complainant’s website to the Respondent’s website. Accordingly, the Panel finds that the Complainant has satisfied the required under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is prepared to find, on the evidence filed, that the Respondent must have been aware of the Complainant’s registered trademark rights in the trademark COOLMATH when it registered the disputed domain name on October 26, 2014. Further, the Panel is prepared to find that the Respondent has mimicked the Complainant’s websites. The Panel concludes that the Respondent acted in bad faith by attempting to trade on the goodwill and reputation of the Complainant’s trademark. Additionally, the failure by the Respondent to respond to the Complainant’s cease and desist letter and to address the specific allegations made by the Complainant, is consistent with a finding of bad faith. Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy. 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, <coolmathgames-com.com>, be transferred to the Complainant. Christopher J. Pibus Sole Panelist Date: March 4, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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