WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Photomath Inc. v. Wyman Qin.

Case No. D2018-1352

1. The Parties

The Complainant is Photomath Inc. of San Mateo, California, United States of America (“US”), represented by Vukmir & Associates, Croatia.

The Respondent is Wyman Qin.

2. The Domain Name and Registrar

The disputed domain name <photomath.app> is registered with West263 International Limited (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2018. On June 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 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. On June 22, 2018, the Center sent an email in English and Chinese regarding the language of the proceeding. The Complaint requested that English be the language of the proceeding and the Respondent requested that Chinese be the language of the proceeding on the same day. On June 26, 2018, the Complainant submitted an amended Complaint upon the Center’s request.

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 in English and Chinese of the Complaint, and the proceedings commenced on June 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2018. On June 27, 2018 and July 12, 2018, the Respondent submitted two informal emails, but did not file a formal Response. On July 20, 2018, the Center informed the Parties that it will proceed to panel appointment.

The Center appointed Joseph Simone as the sole panelist in this matter on July 24, 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

Photomath Inc. is a company that operates a mobile application called “Photomath”. The application is best described as a “camera calculator”, which utilizes a phone's camera to recognize mathematical equations and displays step-by-step solutions directly onscreen. It is available on Google Android and iOS. The application was first released in 2014 by Microblink, a company based in Zagreb, Croatia. As of 2017, the Complainant has been operating as a separate company within the Microblink group of affiliated companies.

Since its release in 2014, the Photomath mobile application has attracted a high degree of industry and media attention, including on CNN and in Time magazine. It has been downloaded almost 100 million times on Apple’s App Store and on Google Play, and has been continuously listed among the top five educational apps on these platforms.

The Complainant is the owner of the following trademark registrations for PHOTOMATH:

- Indian trademark No. 3381272, registered on April 12, 2018, covering goods and services in classes 9, 41 and 42;

- Republic of Korea trademark No. 1304043, registered on December 11, 2017, covering goods in class 9;

- Russian Federation trademark No. 1304043, registered on November 1, 2017, covering goods and services in classes 9, 41 and 42;

- Japanese trademark No. 1304043, registered on July 7, 2017, covering goods in class 9;

- US trademark No. 5169740, registered on March 28, 2017, covering goods and services in classes 9, 41 and 42;

- Australian trademark No. 1787449, registered on May 21, 2016, covering goods and services in classes 9, 41 and 42;

- Mexican trademark No. 1857659, registered on May 21, 2016, covering services in class 42;

- European Union trademark No. 1304043, registered on May 21, 2016, covering goods and services in classes 9, 41 and 42;

- Brazilian trademark Nos. 910987424, 910987475, 910987599, registered on May 4, 2016, covering goods and services in classes 9, 41 and 42;

- US trademark No. 4830212, registered on October 13, 2015, covering goods and services in classes 9 and 42.

The authors of the Photomath application invented the PHOTOMATH trademark, which is coined from two English language words – “photo” and “math”, thereby being suggestive of the function of the application.

In addition, the Complainant operates the following domain name incorporating its trademark:

<photomath.net> registered on December 12, 2013.

The disputed domain name <photomath.app> was registered on May 8, 2018. Previously, it resolved to a Chinese language webpage, with English language text in the upper right stating “Domain name is for sale”. The screen-captured evidence displays scrambled characters, but a search on “www.domaintools.com” shows the website title is Chinese.

Clicking on the links redirected to various online locations including to an “.app” domain name marketplace hosted by the Chinese microblogging website Weibo. Currently, and at least as early as June 7, 2018, attempts to access this webpage return an “Error 502” message.

Prior to commencing this proceeding, in early April 2018, the Complainant registered several of its PHOTOMATH trademarks with the Trademark Clearinghouse to avail itself of the priority registration benefits during the Sunrise period for new Top-Level Domains (“TLDs”) including the “.app” TLD. In early May 2018, during the Sunrise period, the Complainant tried to register the disputed domain name through the registrar Moniker Online Services, LLC (“Moniker”), but Moniker was unsuccessful for reasons that are not entirely clear. Moniker stated that the registration was denied in error and it would create the application for the Go Live phase. After the Go Live period commenced and the Complainant inquired about the status of the registration, Moniker informed the Complainant that another registrar had secured the disputed domain name faster than them by 1 minute and 8 seconds.

The Complainant subsequently received a notification from the Trademark Clearinghouse on May 9, 2018, that the disputed domain name matching the Complainant’s PHOTOMATH trademark was registered on May 8, 2018.

On May 12, 2018, the Complainant received an email in English from the Respondent as follows:

“I register the photomath.app domain, if you wanna get it, I would sell it to you in an extremely low price.”

On the same day, the Complainant responded that it would be interested if the price is low. The Respondent replied “30000 dollars”.

On May 14, 2018, the Respondent emailed asking if the Complainant had any questions on the price.

On May 25, 2018, the Complainant sent the Respondent a cease-and-desist letter, requesting transfer of the disputed domain name and offering to cover the Respondent’s documented out-of-pocket costs directly related to registration and hosting.

On May 29 2018, the Respondent replied: “I would just sell it to other one, which means you need to pay more ^_^”.

The Complainant then commenced this proceeding.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant contends that the disputed domain name is identical or confusingly similar to the mark PHOTOMATH in which it has rights, based on the following:

The Complainant holds a number of PHOTOMATH trademarks registered and used worldwide, all of which predate the disputed domain name. The disputed domain name incorporates the Complainant’s PHOTOMATH trademark in its entirety, and the same trademark is clearly recognizable within the disputed domain name without any modifications. It is generally accepted that the TLD “.app” suffix may be disregarded under the confusing similarity test.

Rights or legitimate interests

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name based on the following:

(i) There is no indication that the Respondent has been commonly known by the disputed domain name or holds trademark or service rights in the same.

(ii) The Complainant has never licensed or otherwise permitted the Respondent to use its PHOTOMATH trademark, or to apply for or use any domain name incorporating the same. Google search results using key words for the Respondent and the Complainant’s PHOTOMATH trademark reveal no results, and a trademark search for registered trademarks in the name of the Respondent through TMview® database also returns no results.

(iii) There is no indication that the Respondent has been using the disputed domain name in connection with a bona fide offering of goods / services; or that the Respondent has been making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

(iv) To the contrary, the Respondent registered the disputed domain name with the primary purpose of selling the disputed domain name to the Complainant or to a third person, including potential competitors, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs. The disputed domain name resolved to a webpage in Chinese language, with the English language text in the upper right corner stating, “Domain name is for sale”. The person that represented himself as the registrant of the disputed domain name, made an unsolicited offer to sell the same to the Complainant for USD 30,000. Furthermore, by clicking on the text (links), visitors were redirected to other online locations, e.g., to a website in Chinese language “appdomain” which appears to be the “.app” domain name market place.

(v) Such use of the disputed domain name by the Respondent is consistent with cybersquatting. This is especially the case since, in accordance with the Trademark Clearinghouse procedure, the Respondent would have been informed that the disputed domain name matched the Complainant’s trademark PHOTOMATH and proceeded with the registration regardless of said notification and being aware of the Complainant’s rights.

(vi) Furthermore, the Complainant’s PHOTOMATH trademark should be considered well-known, due to the extensive use and registration of the same around the world. In the absence of any license or permission from the Complainant to use such well-known trademarks in the respective domain name, previous UDRP panels have found that no actual or contemplated bona fide or legitimate use of the domain name can reasonably be claimed.

Registered and Used in Bad Faith

The Complainant submits that the disputed domain name was registered in bad faith on the following grounds:

UDRP panels have found bad faith registration based in part on proof that the respondent “knew or should have known” about the existence of the complainant’s trademark. The Complainant contends the Respondent was aware of the Complainant, the Complainant’s Photomath application and the Complainant’s PHOTOMATH trademark at the time of registration given the following:

(a) The disputed domain name incorporates the Complainant’s PHOTOMATH trademark in its entirety, without any modifications, and PHOTOMATH is an invented term created by the authors of the Photomath application, not a dictionary word.

(b) The Complainant’s PHOTOMATH trademark should be considered well-known and the registration of such marks has in itself been taken to suggest opportunistic bad faith. Nevertheless, the Respondent had a duty to verify that the registration of the disputed domain name did not infringe the rights of any third party. A quick trademark search or web search would have revealed the Complainant’s rights in the mark PHOTOMATH.

(c) Based on the rules of the Trademark Clearinghouse, the Respondent would have been informed of the Complainant’s trademark rights prior to registration but proceeded with registration anyway.

(d) The Respondent contacted the Complainant with an unsolicited offer to sell the disputed domain name for valuable consideration in excess of its out-of-pocket costs. Upon receiving the Complainant’s cease-and-desist letter, the Respondent replied he would just sell the disputed domain name to a third person, meaning the Complainant would have to pay more.

(d) The disputed domain name initially resolved to a Chinese language webpage with English language text stating “Domain name is for sale”. By clicking on the links, visitors were redirected to other online locations including what appeared to be a Chinese “.app” domain name market place.

(e) Moreover, in these circumstances, the use of a privacy registration service can be taken as a further indication of bad faith.

The Complainant submits that the disputed domain name is being used in bad faith on the following grounds:

The disputed domain name initially resolved to a Chinese language webpage with English language text stating, “Domain name is for sale”. By clicking on links, visitors would be redirected to other online locations, including a Chinese language website “appdomain”. Therefore, in addition to registering the disputed domain name of the purpose of selling it, the Respondent was also using the disputed domain name to attract Internet users to the webpage for commercial gain.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions, though in email correspondence with the Center via multiple email addresses, the Respondent communicated the following in Chinese:

- The Respondent had never heard of the Complainant before registering the disputed domain name.

- The Respondent did not send the Complainant an email and they have fabricated these facts.

- The Complainant does not have a Chinese trademark.

- When registering the disputed domain name, there was no indication of a trademark conflict.

- The word “photomath” is a natural word and does not belong to a specific trademark at all.

6. Discussion and Findings

6.1 Beneficial registrant

In accordance with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.4.5, in cases involving privacy or proxy services, the Panel has the discretion to determine the respondent against which the case should proceed.

The disputed domain name is registered by Domain Protection Services, Inc. of Qatar; however the Panel believes that the sole underlying beneficiary registrant is Wyman Qin - as indicated by the Complainant.

The Respondent communicated with the Complainant via one email address: “[…]@gmail.com”, and with the Center via two separate email addresses: “[…]@qq.com” and Wyman “[…]@qq.com”. The Panel has considered the response to the cease-and-desist letter containing an admission by “Wyman Qin” as Registrant. Further, the name Wyman is associated with “[…]@qq.com” and this address was listed as the contact on the webpage to which the disputed domain name initially resolved. Finally, the correspondence with “[…]@qq.com” is consistent with that of Wyman “[…]@qq.com”, therefore the former appears to simply be another email address used by the Respondent. Domain Protection Services, Inc. appears to have purely provided privacy services to hide the contact information of the underlying registrant.

Given the foregoing, the Panel determines the sole Respondent to be Wyman Qin.

6.2 Language of Proceeding

The Complainant filed the Complaint in English and requested that English be the language of the proceeding, for the following reasons:

(i) The disputed domain name consists of Latin letters, rather than Chinese characters.

(ii) The person who has represented himself as the registrant of the disputed domain name has initially contacted the Complainant’s representative with the offer to sell the disputed domain name through an email written in English. The same refers to the subsequent email correspondence between the Complainant’s representative and said person, which was conducted exclusively in English.

(iii) As neither the Complainant nor its authorized representative in this administrative proceeding speak Chinese language, the Complainant would have to incur significant costs in translating the Complaint and the annexes to the same into the Chinese language.

(iv) The preparation of such translations would also delay the proceeding significantly.

After notification of the Complaint, the Respondent sent two emails from separate email addresses saying he only understood Chinese on June 22, 2018 and June 27, 2018.

In accordance with paragraph 11 of the Rules:

“…the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Given this, prima facie, the language of the proceeding should be Chinese.

However, section 4.5.1 of the WIPO Overview 3.0 provides for certain scenarios which may warrant proceeding in a language other than that of the registration agreement including evidence showing that the respondent can understand the language of the complaint. For the abovementioned reasons, the Panel considers that the Respondent is behind all three email addresses, therefore given the Respondent’s ability to respond to the cease-and-desist letter in English and offer to sell the disputed domain name, the Respondent understands English and the nature of the claim brought against him.

Moreover, the Panel points to the “overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition.” (General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).

The Respondent submitted a short, informal response in Chinese by email but did not make any attempt to file a formal response nor request a standard template response in Chinese.

The Panel is satisfied that the Respondent was given a fair opportunity to present its case and will not be prejudiced if English is chosen as the language of the proceeding. By contrast the Complainant would be unduly burdened if required to translate its submissions into Chinese, therefore the Panel will proceed to write the decision in English.

6.3 Substantive Matters

A. Identical or Confusingly Similar

Under the first element of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).

That is, the complainant must first demonstrate substantive rights in the trademark on which the complaint is based. In this case, the Panel finds that the Complainant has registered rights in the mark PHOTOMATH for which the Complainant has several trademark registrations. Therefore, this aspect is satisfied.

A complainant must then demonstrate that the disputed domain name is identical or confusingly similar to the trademark. Per section 1.7 of the WIPO Overview 3.0, the test for whether the domain name is identical or confusingly similar to the trademark is a relatively straightforward comparison. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962).

When comparing the disputed domain name with the trademark, the TLD “.app” may be disregarded (section 1.11 of WIPO Overview 3.0; F. Hoffmann-La Roche AG v. Domain Admin/xcite, WIPO Case No. DCC2007-0003).

After removing the “.app” suffix, the disputed domain name is identical to the Complainant’s trademark PHOTOMATH. Therefore, the first requirement of the UDRP is satisfied.

B. Rights or Legitimate Interests

A complainant must demonstrate that the respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the complaint (paragraph 4(a)(ii) of the Policy).

Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the panel, will demonstrate a respondent’s rights or legitimate interests in the disputed domain name.

In this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no such rights or legitimate interests, based on the following:

(i) There is no evidence that the Respondent is commonly known by the disputed domain name.

(ii) Prior to receiving notice of the dispute, there is no evidence of contemplated or actual bona fide use. Nor is there evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is not authorized or licensed to use the trademark PHOTOMATH or to apply for a domain name incorporating the mark. Moreover, the disputed domain name previously resolved to a website stating “Domain name is for sale” and listing a contact address. Clicking on one of the links redirected the user to a Chinese language website which appears to be a market place for “.app” domains. Additionally, the Respondent contacted the Complainant to attempt to sell the disputed domain name shortly after registration. Indeed, it seems the Respondent was prepared to sell the disputed domain name to the highest bidder. This is not bona fide use nor demonstrable preparations to use, rather it points to cybersquatting and a clear objective of commercial gain. The now inactive status of the webpage associated with the disputed domain name suggests the Respondent had no intent for bona fide or legitimate use at all.

Having prima facie established the Respondent’s lack of rights or legitimate interests, the burden of production then shifts to the Respondent (section 2.1 of WIPO Overview 3.0). In an email to the Center, the Respondent states that he had always registered to use the disputed domain name in China, however the Respondent has not filed a formal response nor presented any evidence to support any use of the disputed domain name. Nor does the Respondent own the trademark in China.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second requirement of the UDRP is satisfied.

C. Registered and Used in Bad Faith

Finally, a complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).

Paragraph 4(b) of the Policy sets out circumstances which, without limitation, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Subparagraph (i) states:

“circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name”

The Panel is satisfied the Respondent registered the disputed domain name for the primary purpose of selling it to the Complainant for consideration in excess of its out-of-pocket costs as set out under paragraph 4(b)(i) of the Policy. Shortly after registration, the Respondent made an unsolicited offer to the Complainant to sell the disputed domain name for an “extremely low price”. The Respondent then proposed “30000 dollars” (presumably US dollars), an amount that far exceeds the Respondent’s out-of-pocket costs. The Respondent contacted the Complainant two days later, no doubt intending to close the sale and finally, in response to the cease-and-desist letter, threatened to sell it to another third party, indicating that the Complainant would have to pay even more. This clearly demonstrates that the Respondent registered the disputed domain name in bad faith.

In addition, the disputed domain name previously resolved to a webpage stating the domain name was for sale and linked to a market place for the “.app” domain. This points against any indication that the Respondent registered or is using the disputed domain name in good faith.

In assessing bad faith, it is relevant that the Respondent “knew or should have known” of the Complainant’s trademark rights, which is a strong inference for bad faith (Volkswagen AG v. Jan-Iver Levsen, WIPO Case No. D2015-0069; Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051). In spite of the Respondent’s assertions otherwise, the Panel is satisfied the Respondent did in fact know of the Complainant’s trademark. The disputed domain name is identical to the Complainant’s trademark with no additions. The Complainant has achieved much recognition since launching its mobile application under the trademark and is it unlikely to be a coincidence that the Respondent chose the TLD “.app” which corresponds to the nature of the services provided under the trademark. Contrary to what the Respondent contends, the mark PHOTOMATH is not a natural word, but a combination of two words that would not normally appear together and do not appear as such in any dictionary or reference book. The Panel believes this is indeed a case of opportunistic bad faith and the Respondent was entirely aware of the Complainant’s prior rights. Attempts to conceal this using a privacy protection service, multiple email addresses and blatant denials of knowledge concerning this situation or that the Complainant has any trademark rights at all, further reinforce a finding of bad faith.

Therefore, the Panel is satisfied that the Respondent registered and is using the disputed domain name in bad faith and the third requirement of the UDRP is satisfied.

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 <photomath.app> be transferred to the Complainant.

Joseph Simone
Sole Panelist
Date: August 7, 2018