DECISION

 

Young Innovations, Inc. v. [unknown holder]

Claim Number: FA2310002067016

PARTIES

Complainant is Young Innovations, Inc. ("Complainant"), represented by Jennifer Mikulina of McDermott Will & Emery LLP, Illinois, USA. Respondent is [unknown holder] ("Respondent"), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <younginnovations.bio> ("Domain Name"), registered with NameCheap, Inc..

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 19, 2023; Forum received payment on October 19, 2023.

 

On October 19, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <younginnovations.bio> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 October 23, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 2023 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@younginnovations.bio. Also on October 23, 2023, 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.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On November 14, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE:  FALSE REGISTRANT INFORMATION

Complainant alleges that the WHOIS information listed for the Domain Name is false because the named registrant is one of the employees of Complainant. Complainant provides uncontested evidence that its employee was not responsible for the registration of the Domain Name.  Complainant requests the redaction of the named registrant of the Domain Name, as provided for by Paragraph 4(j) of the Policy.  Complainant made the request in its Complaint, as required by Forum Supplemental Rule 15(b).  Complainant provides evidence of an email message to a third party using the Domain Name, wherein the registrant of the Domain Name impersonates Complainant's employee.  To avoid the association of an adverse UDRP decision with Complainant's employee, the Panel orders that the named individual Respondent be redacted from the case caption of this Decision and replaced with "unknown holder."  See Capital One Financial Corp. v. [Unknown Holder], Case No. FA1607001684338 (Forum Aug. 23, 2016) ("Respondent contends that it has been the victim of identity theft.  Specifically, on July 28, the Forum received email communications from Respondent stating that 'Someone has apparently used my name without my knowledge or permission'... The information supplied in that e-mail communication makes the claim of identity theft plausible, and Complainant does not contest this assertion.  Accordingly, this Panel finds that it is in the interests of justice that the identity of the Respondent named in the Complaint be redacted from this decision to protect the identity of that person.").

 

All references to "Respondent" in the Findings and Decision below mean and refer to the person who actually registered the Domain Name, who is identified as "[unknown holder]" in the case caption, and not Complainant's employee.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Young Innovations, Inc., is involved in the development, manufacture and sale of dental and orthodontic equipment and related products under the name Young Innovations.  Complainant has rights in the YOUNG mark based on registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 6,304,706, registered March 30, 2021 with a date of first use in 1998).  Respondent's <younginnovations.bio> domain name is confusingly similar to Complainant's YOUNG mark since it merely adds the term "innovations" and the ".bio" generic top level domain ("gTLD").

 

Respondent lacks rights and legitimate interests in the <younginnovations.bio> domain name.  Respondent is not commonly known by the Domain Name and Complainant has not licensed Respondent to use the YOUNG mark.  Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domain resolves to a webpage with hyperlinks and Respondent uses the Domain Name to pass off as Complainant in phishing emails.

 

Respondent registered and uses the <younginnovations.bio> domain name in bad faith.  Respondent uses the Domain Name to pass off as Complainant in phishing emails.  Furthermore, Respondent had actual knowledge of Complainant's rights in the YOUNG mark as Respondent is using the Domain Name to impersonate Complainant.  Finally, Respondent provided false WHOIS contact information.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the YOUNG mark.  The Domain Name is confusingly similar to Complainant's YOUNG mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant has rights in the YOUNG mark based upon registration of the mark with the USPTO (e.g. Reg. No. 6,304,706, registered March 30, 2021).  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 Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office ("USPTO").).

 

The Panel finds that the Domain Name is confusingly similar to the YOUNG mark because it wholly incorporates the YOUNG Mark and adds the generic term "innovations" and the ".bio" gTLD.  A domain name that consists of a mark and a generic word and a gTLD does not distinguish itself from the mark per Policy ¶ 4(a)(i).  See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant's entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because the domain name syntax requires TLDs.").  

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name.  In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.").  The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the YOUNG mark.  Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.  WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged.  See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS lists an individual employee of Complainant as registrant of record, however there is clear evidence before the Panel, discussed earlier in the decision, that Respondent is falsely using the name of this employee in its registration details.  Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii). 

 

The Domain Name is inactive but prior to the commencement of proceedings resolved to a parking page with pay-per-click hyperlinks unrelated to Complainant's business which by itself does not show a bona fide offering of goods and services (see Bloomberg Finance L.P. v. Syed Hussain / Domain Management, FA1410001582912 (Forum Nov. 10, 2014) (concluding that the respondent's use of the disputed domain name to host hyperlinks, unrelated to the complainant's business, did not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii)). 

 

Complainant alleges, and provides evidence supporting its allegations, that Respondent uses an email address associated with Domain Name to attempt to pass itself off as Complainant in furtherance of a phishing scam, requesting that existing invoices be paid to an account unconnected to the Complainant. Use of a disputed domain name to pass off as a complainant through emails is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) ("Respondent uses the at-issue domain name to pose as Complainant's CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant's ability to process a transfer.  Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy  ¶ 4(c)(iii)"); see also Caterpillar Inc. v. ruth weinstein, FA 1770352 (Forum March 7, 2018) ("Use of a disputed domain name in an attempt to pass itself off as a complainant and to conduct a phishing scheme is indicative of a failure to use said domain name in connection with a bona fide offer of goods and services per Policy ¶ 4(c)(i) or a legitimate noncommercial or otherwise fair use per Policy ¶ 4(c)(iii).");

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that at the time Respondent registered the Domain Name, September 21, 2023, Respondent had actual knowledge of Complainant's YOUNG mark. The Respondent has used the Domain Name to pass itself off as Complainant, indeed a named employee of Complainant, for financial gain.  In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses the Domain Name to impersonate Complainant (and indeed a named employee of Complainant) in furtherance of a phishing scheme. Use of a disputed domain name to impersonate a complainant in furtherance of a phishing scheme is evidence of bad faith per Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent's apparent use of the disputed domain name in furtherance of a 'phishing' scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)).  Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <younginnovations.bio> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Nicholas J.T. Smith, Panelist

Dated: November 15, 2023