Photomath Inc. v. c/o Administrator
Claim Number: FA2101001927311
Complainant is Photomath Inc. (“Complainant”), represented by John Berryhill, Pennsylvania, USA. Respondent is c/o Administrator (“Respondent”), represented by Farage Yusupov, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <photomath.com>, registered with NameSilo, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
David A. Einhorn, Hon. John J. Upchurch and Dennis A. Foster (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on January 6, 2021; the Forum received payment on January 6, 2021.
On January 6, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <photomath.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@photomath.com. Also on January 6, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 26, 2021.
The Forum received a Supplemental Submission from Complainant on February 4, 2021. The Forum also received a Supplemental Submission from Respondent on February 9, 2021. The Panel finds these two Supplemental Submissions contain useful information, and has exercised its discretion under the Forum’s Supplemental Rule 7 to take them into consideration in formulating its Decision. However, the Panel did not find that Complainant’s further Submission of February 11, nor Respondent’s further Submission in reply of February 16, 2021, to contain new or useful information and they have not been considered for this Decision.
On February 3, 2021, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed David A. Einhorn, Hon. John J. Upchurch and Dennis A. Foster (Chair) as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
The Complainant requests that the disputed domain name be transferred from Respondent to Complainant. The Respondent requests that the Complainant be found to have brought this Complaint in an attempt at Reverse Domain Name Hijacking (RDNH) per Paragraph 15(e) of the Rules.
A. Complainant
- Originally founded in Croatia, Complainant is the publisher of a mobile math application. The application, which recognizes and solves algebraic equations, was launched in 2014 and had been downloaded more than 100 million times by 2018. In connection with these operations, Complainant uses the PHOTOMATH mark, for which Complainant has gained common law and registered service mark rights.
- The disputed domain name, <photomath.com>, is identical to Complainant’s PHOTOMATH mark since it includes the entirety of the mark, merely adding the “.com” generic top-level domain (“gTLD”).
- Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s PHOTOMATH mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or in a legitimate noncommercial or fair use manner. Instead, Respondent's website attached to the disputed domain name hosts pay-per-click (“PPC”) links to obtain revenue based on Complainant’s notoriety.
- Respondent registered and uses the disputed domain name in bad faith. Although the disputed domain name was initially created in 2006, Respondent acquired it at the end of October, 2014, shortly after Complainant received significant media attention for its PHOTOMATH product. Respondent uses the disputed domain name in bad faith by intentionally attracting internet users for commercial gain by displaying third-party PPC links on the resolving website owned by Respondent. Moreover, Respondent has not used its company name, or that of any person connected with that company, as registrant of the disputed domain name, a bad faith effort to conceal Respondent’s identity in registering and using the name.
B. Respondent
- Respondent is a United States company, which does business as Crunchy Gulp Media in the field of internet publishing, development and technology consulting since the mid-1990’s. In conjunction with that business, Respondent manages an extensive portfolio of internet sites, blogs, forums, social media accounts and YouTube channels relating to sports, health, finance and entertainment.
- Complainant had not registered the PHOTOMATH mark or acquired common law rights in the mark at the time Respondent gained possession of the disputed domain name. Additionally, the mark is comprised of two descriptive terms, photo and math, making it much more difficult to gain the “secondary meaning” that is necessary to establish common law rights in a mark.
- Respondent has rights and legitimate interests in the disputed domain name. Respondent acquired the disputed domain name for significant consideration with a specific purpose of developing a website unrelated to Complainant’s business. Despite pouring substantial financial resources into that development, Respondent now holds the domain name passively due to unforeseen issues that interrupted the development process.
- Respondent did not register and does not use the domain name in bad faith. Complainant’s lack of rights in the PHOTOMATH mark when Respondent acquired the domain name precludes a finding of bad faith registration. Instead, Respondent obtained the domain name for use in connection with a legitimate business. Additionally, Respondent’s current use of the disputed domain name to display PPC hyperlinks is insufficient for a finding of bad faith. Finally, Respondent had no knowledge of Complainant or its business at the time Respondent acquired the disputed domain name.
- Given Complainant’s prior communications with Respondent in failed attempts to purchase the disputed domain name, Complainant should be found to have violated the doctrine of laches. Moreover, the failure to fully discloses these negotiations, among other things, also demonstrates that Complainant is engaged in reverse domain name hijacking (“RDNH”), as exemplified by arguments made by Complainant's counsel in a prior UDRP case.
C. Complainant's Additional Submission
- In the Response, Respondent still does not clearly identify itself as a company or individual, even as it alludes to doing business as “Crunchy Gulp Media.” Moreover, Response Exhibits that purport to be connected with that company are cropped so that affiliation/identification is not at all clear.
- The combined phrase, “photo math,” is not descriptive, but instead can and does constitute a distinctive term and mark. Also, a company need not charge a fee for use of an internet application as a prerequisite for obtaining common law trademark rights in the name of that application.
- Respondent’s contention of “demonstrable preparations” to use the disputed domain name for the offering of goods and services is merely an unsubstantiated assertion that is not supported by pertinent evidence.
- The failure to reference prior communications with Respondent in the Complaint does not constitute a basis for an RDNH ruling.
- Respondent’s questionable registration of another domain name, which previously belonged to an established Indonesian company, is evidence of Respondent’s pattern of bad faith registration and use of domain names.
D. Respondent's Additional Submission
- The Panel should deny Complainant’s Additional Submission because it was filed more than five days after receipt of the Response. Moreover, Complainant should have anticipated Respondent's charge of RDNH, and that Additional Submission was made in bad faith.
- Complainant’s Additional Submission fails to refer to several emails between Complainant and Respondent regarding attempts, initiated by Complainant, to purchase the disputed domain name.
- Complainant makes baseless claims about Respondent’s lack of an address and about whether Respondent and its business are fictional entities. The WHOIS registrant line for the disputed domain name is “c/o Administrator” not because Respondent is attempting to hide its identity, but likely due to a mechanical error in registration. In conformance with typical UDRP protocol, Respondent did not alter its designation in the opening caption of the Response from that in the Complaint.
- Complainant’s contention that the webpages displayed in Response Exhibit C cannot be identified as owned by Respondent is again baseless and made in bad faith.
- Respondent does not dispute that a two-common-word phrase can be distinctive, but “photo math,” unlike “coca cola,” is not distinctive because there are numerous third-party online references to photo math calculators and applications.
- With respect to demonstrable preparations for legitimate use of the disputed domain name, the Response detailed the reason for name choosing, business planning, target audience and third-party negotiations. Moreover, just because a domain name is not being currently used does not mean that its renewal must be in bad faith.
- Complainant’s reference to another domain name owned by Respondent as evidence of bad faith registration of domain names is inappropriate because that name’s suffix is “.us” and the former owner was not a United States resident or company.
- Complainant is guilty of RDNH because many of the assertions in the Complaint, about Respondent and otherwise, are untruthful.
Complainant is the creator of an internet mathematics application that is accessed on mobile devices. Complainant offers those services under the PHOTOMATH service mark, which was registered with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 4,830,212, registered Oct. 13, 2015).
Respondent owns the disputed domain name, <photomath.com>, which was originally registered on April 18, 2006. Respondent acquired the disputed domain name on October 30, 2014 and uses it to host a website that offers PPC links to the websites of Complainant’s competitors.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Based on the presentation of clear evidence of its registration of the PHOTOMATH service mark with the USPTO, Complainant has persuaded the Panel that Complainant has sufficient rights in that mark to satisfy Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (“Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”); see also Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (“The Panel finds that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).").
Upon simple visual inspection, the Panel concludes that the disputed domain name, <photomath.com>, is identical to the PHOTOMATH mark, as the inclusion of the “.com” gTLD is inconsequential in the comparison because all domain names must bear such a suffix. See Tupelo Honey Hospitality Corp. v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”).
As a result, the Panel finds that Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a service mark in which Complainant has rights.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Neal & Massey Holdings Ltd. v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006).
The Panel has found above that the disputed domain name is identical to Complainant's valid PHOTOMATH service mark, and Complainant claims clearly that Respondent is not licensed or authorized to use that mark for any purpose. Accordingly, the Panel determines that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent concurs with Complainant’s assertion that the disputed domain name resolves to a website that offers PPC links to competitors of Complainant. However, Respondent contends that it has rights and legitimate interests in the disputed domain name per Policy ¶ 4(c)(i) because it acquired the name with the specific plan of developing a website unrelated to Complainant’s business. That plan was discontinued soon after initiation due to unforeseen issues in development that involved no fault of Respondent. As such, Respondent argues that passively holding the disputed domain name without use, or for PPC usage, does not evidence a lack of rights and legitimate interests in that name, because Respondent has made demonstrable preparations to use the name in connection with a legitimate use.
In response to Respondent’s contentions and arguments, Complainant claims that Respondent fails to offer real evidence of demonstrable preparations for legitimate use, but presents mere unsupported declarations in that regard.
The Panel is inclined to agree with Complainant. The Panel finds that Respondent simply states that it “committed significant resources to financing and developing” its project, without furnishing hard evidence to support that statement. Policy ¶ 4(c)(i) requires pertinent evidence of “demonstrable preparations” to use the disputed domain name in connection with a bona fide offering of goods or services to secure for Respondent rights or legitimate interests in that name. See BioMérieux v. Robert Sloan, D2019-2865 (Wipo Jan. 22, 2020) (“If not independently verifiable by the panel, preparations to use the domain name in connection with a bona fide offering of goods or services cannot be merely self-serving statements but should be inherently credible and supported by relevant pre-complaint evidence.”); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.
Returning to the PPC linkage ‒ to which both parties agree the disputed domain name is being put ‒ the Panel, concurring with prior UDRP panels, finds that it constitutes neither “a bona fide offering of goods or services” per Policy ¶ 4(c)(i) nor “a legitimate noncommercial or fair use” per Policy ¶ 4(c)(iii). See Ferring B.V. v. Shanshan Huang, FA 1620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”); see also Expedia, Inc. v. Compaid, FA 520654 (Forum Aug. 30, 2005).
Finally, Respondent does not contend, and the Panel can find no reason to believe, that Respondent has ever been commonly known as the disputed domain name, so Policy ¶ 4(c)(ii) also fails to apply in this case.
Since Respondent has failed to rebut Complainant's prima facie case, the Panel concludes that that case prevails.
As a result, the Panel finds that Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain name.
Under Policy ¶ 4(a)(iii), Complainant must establish that Respondent both registered and is using the disputed domain name in bad faith.
With respect to registration in bad faith, the Panel notes that the disputed domain name was initially registered on April 18, 2006. However, the Respondent acquired the disputed domain name on October 30, 2014, which becomes the relevant date for this analysis. See HSBC Finance Corp. v. Clear Blue Sky Inc., D2007-0062 (Wipo June 4, 2007) (“The consensus view of WIPO Panelists is that [...] the transfer of a domain name to a third party does amount to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name.”).
Accepting October 30, 2014 as the proper disputed domain name registration date, Respondent argues that it could not be found to have registered the name in bad faith because: Complainant obtained its USPTO PHOTOMATH mark registration after that date, namely on October 13, 2015; and Complainant had not used the mark long enough before said former date to have acquired common law trademark rights in the mark. The Panel agrees with Respondent that in similar circumstances a prohibition against a bad faith registration finding is generally applied by Policy panels. See WIPO Overview 3.0, section 3.8.1.
However, the Panel notes that there are exceptions to that general rule. See General Growth Prop., Inc., v. Steven Rasmussen, D2003-0845 (Wipo Jan. 15, 2004) (“...as a general matter, bad faith is not likely to be found when a Complainant relies on a trademark that did not exist at the time a disputed domain name is registered when seeking to make use of the Policy. However, there are many exceptions to this general statement.”). Some such exceptions are specifically cited in the WIPO Overview 3.0, section 3.8.2, as follows:
As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.
Applying subparagraph (iii) above, the Panel notes the significant media attention that Complainant’s product connected with its service mark generated immediately prior to Respondent’s October 30, 2014 acquisition of the disputed domain name, including: at the TechCrunch Disrupt Europe, 2014 competition in London (i.e., Oct. 20, 2014); on CNN (i.e., Oct. 22, 2014); and on the Ellen DeGeneres television program (i.e., Oct. 28, 2014). Moreover, per subparagraph (iv) above, Complainant filed its application for its USPTO trademark on October 27, 2014, a few days before the Respondent’s acquisition of the disputed domain name. See Compl. Ex. D and E; see also MG Icon LLC v. DNS MANAGER, FA 1649222 (Forum Jan. 4, 2016) (“...Complainant’s rights, for the purposes of the Policy, in its US mark [...] date back to 2005, when it applied for registration.").
Given these circumstances, the Panel is inclined to believe that Respondent, who boasts of being quite internet savvy, was undoubtedly aware of the growing notoriety of Complainant's application and likely registered the disputed domain name in bad faith, just as Complainant geared up to exploit its publicized launch of a new product.
As to the use to which the disputed domain name is being put, the Panel accepts Complainant's unopposed evidence that the name resolves to a website that presents PPC links to third-party websites, some of which compete directly with Complainant’s offerings, for the intended commercial benefit of Respondent, however modest the present profits might be. As that benefit depends upon internet user confusion between the Complainant’s service mark and the identical disputed domain name, the Panel concludes that Respondent is using the disputed domain name in bad faith per Policy ¶ 4(b)(iv). See Fontem Holdings 4, B.V. v. J- B-, Limestar Inc., D2016-0344 (Wipo May 10, 2016) (“The Panel further finds that the Respondent's use of the [ disputed] Domain Name to resolve to a parking page containing sponsored links constitutes bad faith as the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, in accordance with paragraph 4(b)(iv) of the Policy.”); see also MG Icon LLC v. DNS MANAGER, supra (“...Respondent uses the disputed domain name to host pay-per-click links to competitors of Complainant, so Respondent is taking advantage of the likelihood of confusion related to the domain in order to profit [...] which constitutes bad faith usage pursuant to Policy ¶ 4(b)(iv).”).
As a result, the Panel finds that Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith.
Reverse Domain Name Hijacking: Given that the Complainant has prevailed under all three elements of ¶ 4(a) of the Policy, the Respondent’s RDNH request can not succeed in this Case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <photomath.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Hon. John J. Upchurch, Panelist
Dennis A. Foster, Chair
Dated: February 22, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page