Young Innovations, Inc. v. Joseph Richardson / Y.oung I.nnovations
Claim Number: FA2104001941382
Complainant is Young Innovations, Inc. (“Complainant”), represented by Jennifer Mikulina of McDermott Will & Emery LLP, Illinois, USA. Respondent is Joseph Richardson / Y.oung I.nnovations (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <younginnovationsyi.com>, registered with Tucows Domains Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Adam Taylor as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 13, 2021; the Forum received payment on April 13, 2021.
On April 14, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <younginnovationsyi.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 April 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 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@younginnovationsyi.com. Also on April 15, 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 May 5, 2021.
On May 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Adam Taylor as Panelist.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Respondent consents in its Response to transfer the <younginnovationsyi.com> domain name to Complainant. However, after the initiation of this proceeding, Tucows Domains Inc. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. As a result, the Panel may find that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <younginnovationsyi.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
However, the correspondence before the Panel indicates that Complainant has rejected Respondent’s offer to transfer the disputed domain name without a decision on the merits by the Panel. In these circumstances, the Panel will proceed and analyze the case under the elements of the UDRP.
A. Complainant
Complainant uses its marks in connection with dental and orthodontic equipment. Complainant has rights in the YOUNG mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,304,706, registered Mar. 30, 2021). See Compl. Ex. D. Respondent’s <younginnovationsyi.com> domain name is confusingly similar to Complainant’s YOUNG mark and “Young Innovations” business name because it merely adds the terms “innovations” and “yi” to the mark, or just the term “yi” to Complainant’s business name.
Respondent does not have rights or legitimate interests in the <younginnovationsyi.com> domain name because Respondent is not licensed or authorized to use Complainant’s mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent passively holds the domain name.
Respondent registered and uses the <younginnovationsyi.com> domain name in bad faith. Respondent fails to make any active use of the disputed domain name. Additionally, Respondent’s registration of the disputed domain name constitutes typosquatting. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the YOUNG mark when it registered the disputed domain name.
B. Respondent
Respondent asserts that it has contacted Complainant’s legal representative with a view to cooperating with transfer of the <younginnovationsyi.com> domain name to the Complainant.
Complainant has supplied dental and orthodontic equipment under the “Young Innovations” business name for some 20 years.
Complainant operates its own website at the <younginnovations.com> domain name.
Complainant has registered the YOUNG mark with the USPTO (e.g., Reg. No. 6,304,706, registered Mar. 30, 2021).
Respondent registered the <younginnovationsyi.com> domain name on September 30, 2020.
Respondent has used the <younginnovationsyi.com> domain name for a Shopify holding page.
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.
Complainant has rights in the YOUNG mark based upon the registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of the YOUNG mark with the USPTO (e.g., Reg. No. 6,304,706, registered Mar. 30, 2021). See Compl. Ex. D. Thus, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <younginnovationsyi.com> domain name is confusingly similar to Complainant’s YOUNG mark and “Young Innovations” business name because it merely adds the terms “innovations” and “yi” to the mark, or just the term “yi” to Complainant’s business name. Addition of generic or descriptive terms and a gTLD to a mark is generally insufficient to negate confusing similarity between a domain name and the mark it incorporates per Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Complainant notes that in addition to the confusing similarity between the disputed domain name and the YOUNG mark, the disputed domain name is also nearly identical to Complainant’s own <younginnovations.com> domain name.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s YOUNG mark under Policy ¶ 4(a)(i).
The Panel is reminded that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <younginnovationsyi.com> domain name because Respondent is not licensed or authorized to use Complainant’s mark and is not commonly known by the disputed domain name. WHOIS information may be used to determine whether a respondent is has rights or legitimate interest in a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Where a respondent appears to be commonly known by a disputed domain name, the Panel may still find the respondent lacks rights or legitimate interest in the disputed domain name if the respondent lacks authorization to use the complainant’s mark and fails to provide affirmative evidence in support of this identity. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). The WHOIS information for the disputed domain name identifies the registrant as “Joseph Richardson / Y.oung I.nnovations” but Respondent provides no affirmative evidence in support of this identity and no evidence in the record suggests Respondent is authorized to use the YOUNG mark. See Amend. Compl. Ex. A2. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant claims that Respondent does not use the <younginnovationsyi.com> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent passively holds the domain name. Inactive holding of a disputed domain name is generally not considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant claims Respondent inactively holds the disputed domain name and Complainant provides a screenshot of the generic message resolving at the disputed domain. See Compl. Ex. B. Therefore, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that while Complainant has not made any legally cognizable arguments under Policy ¶ 4(b), such arguments are not required under the Policy — so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (the panel noting that Policy ¶ 4(b) factors “are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances”). The Panel may therefore find Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith.
Complainant claims that Respondent registered and uses the <younginnovationsyi.com> domain name in bad faith because Respondent fails to make any active use of the disputed domain name. Complainant provides a screenshot of the generic message resolving at the disputed domain. See Compl. Ex. B. Passive holding of a disputed domain name may be evidence of bad faith registration and use under Policy ¶ 4(a)(iii). The Panel notes that the <younginnovationsyi.com> domain name consists of the Complainant’s highly distinctive business name plus the letters “yi” which comprise an acronym of that name and that the Respondent has failed to submit a substantive Response providing any evidence of actual or contemplated good-faith use of the <younginnovationsyi.com> domain name. Therefore, the Panel agrees with Complainant and find bad faith registration and use under Policy ¶ 4(a)(iii) based on passive holding.
Complainant further claims that Respondent had actual or constructive knowledge of Complainant’s rights in the YOUNG mark when it registered the <younginnovationsyi.com> domain name. Actual knowledge of a Complainant’s rights in a mark evidences bad faith per Policy ¶ 4(a)(iii) and may be shown by the entirety of circumstances surrounding registration and use. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel finds that the Respondent had the Complainant’s mark in mind when registering the disputed domain name in view of the distinctiveness of the Complainant’s mark and the failure of the Respondent to file a substantive Response denying knowledge of the Complainant. The Panel therefore finds bad faith per Policy ¶ 4(a)(iii) based on actual knowledge of the Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <younginnovationsyi.com> domain name be TRANSFERRED from Respondent to Complainant.
Adam Taylor Panelist
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