Young Innovations, Inc. v. Anjesh Tuladhar / YoungInnovations
Claim Number: FA2303002037871
Complainant is Young Innovations, Inc. (“Complainant”), represented by Jennifer Mikulina of McDermott Will & Emery LLP, Illinois, USA. Respondent is Anjesh Tuladhar / YoungInnovations (“Respondent”), represented by Prashant Shrestha, Nepal.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <younginnovations.tech>, registered with NameCheap, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Ivett Paulovics as Panelist.
Complainant submitted a Complaint to Forum electronically on March 29, 2023; Forum received payment on March 29, 2023.
On March 29, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <younginnovations.tech> 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 March 30, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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.tech. Also, on March 30, 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.
A timely Response was received and determined to be complete on April 19, 2023.
On April 20, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ivett Paulovics 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends to have established rights in the YOUNG and YOUNG INNOVATIONS trademarks through continuous and widespread use in commerce since 1998 in connection with a full line of dental and orthodontic equipment, tools, products, preparations, apparatus, handpieces, and instruments, along with the development, manufacture, and marketing of supplies and equipment used by dentists, dental hygienists, dental assistants, and consumers in the United States and around the world. The disputed domain name is identical and confusingly similar to its marks (and company name), as well as its domain name <younginnovations.com>, as the mere addition of the generic top-level domain (“TLD”) “.tech” does not serve to distinguish the domain name from Complainant’s marks.
Complainant also contends that Respondent lacks rights or legitimate interests in the disputed domain name since Respondent is neither affiliated with, nor has been licensed or permitted to use Complainant’s distinctive marks or any domain name incorporating such marks. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a page with sponsored hyperlinks. In addition, Respondent has made no demonstrable preparations to make a bona fide use of the domain name.
Finally, Complainant contends that Respondent registered and uses the disputed domain name in bad faith by featuring third-party pay-per-click (“PPC”) hyperlinks. Respondent has also failed to develop the resolving page for a legitimate purpose. There is no reason for Respondent to register and use the domain name other than to trade off the reputation and goodwill of Complainant’s marks, to cause confusion among Internet users and third parties, and to prevent Complainant from owning the domain name. Finally, Respondent had constructive knowledge of Complainant’s rights in its marks.
B. Respondent
Respondent contends to be one of the leading technology firms in Nepal with a focus on providing innovative software solutions, specifically web and mobile applications and data solutions. Respondent was unaware of Complainant’s marks as “young” is a commonly used word.
Since its incorporation in 2007 Respondent has continuously used its company name and domain name <younginnovations.com.np> in its area of business and, thus, is commonly known by the name “YoungInnovations”. Respondent uses the disputed domain name to support its overseas business.
Respondent did not register the disputed domain name in bad faith to mislead Complainant’s customers or disrupt Complainant’s business. Rather, the disputed domain name was registered to support its legitimate business. Respondent’s business is also unrelated to Complainant’s business.
Complainant is a US company developing and manufacturing dental and orthodontic equipment (See Compl. Exhibit E). Complainant owns the mark for the word “YOUNG” through trademark registration with the United States Patent and Trademark Office since March 30, 2021 (Reg. No. 6,304,706) in the International classes 3, 5, 8, 10, 11, and 21 (See Compl. Exhibit D). Complainant uses the domain names <ydnt.com> and <youngdental.com> to promote its products (See Compl. Exhibit E).
Respondent is a Nepal-based software and technology company (See Resp. Annexes I and II). Respondent uses the domain name <younginnovations.com.np> to promote its business (See Resp. Annex I).
The disputed domain name was registered with privacy and proxy service on October 13, 2022 (See Compl. Exhibit A). Upon Forum’s request for Registrar verification, the Registrar has confirmed that Respondent is Anjesh Tuladhar, YoungInnovations.
The disputed domain name resolves to a page with third-party’s commercial links (See Compl. Exhibit B).
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.
In this case, Complainant relies on the US federal trademark YOUNG (Reg. No. 6,304,706 dated March 30, 2021) and also on the common law trademark YOUNG INNOVATIONS, asserting to have “used its Marks for decades” and “[A]s a result of such widespread, continuous, and prominent use, Complainant’s Marks have acquired significant goodwill and public recognition, as a means by which the public identifies Complainant’s Goods and Services.”
To this end, Complainant provides the following documents:
- certificate of registration of the YOUNG trademark (word) issued by the United States Patent and Trademark Office “USPTO” (See Compl. Exhibit D);
- 3 pages of printouts of the websites associated with Complainant’s domain names <ydnt.com> and <youngdental.com> (See Compl. Exhibit E).
The first UDRP element functions primarily as a standing requirement. Paragraph 4(a)(i) of the Policy uses the term “trademark or service mark” which encompasses both registered and unregistered or common law marks. Panels agree that a complainant does not need to register a trademark with a governmental authority to have rights in a mark under Policy 4(a)(i) if the complainant can establish common law rights. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights, a complainant must demonstrate the mark has achieved strong secondary meaning in the minds of consumers, i.e. that it has become a distinctive identifier which consumers associate with the complainant’s goods and services. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Since the UDRP process provides for a single round of pleadings without the opportunity for discovery, relevant evidence demonstrating acquired distinctiveness/secondary meaning should be included in the complaint. Conclusory allegations of unregistered or common law rights would not normally suffice to show secondary meaning.
Since Complainant provides evidence of registration of the YOUNG mark with the USPTO, the Panel finds that Complainant has sufficiently demonstrated its rights in the YOUNG mark for purposes of paragraph 4(a)(i) of the Policy. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
On the other hand, the Panel finds that Complainant has failed to prove that it has unregistered or common law rights in the YOUNG INNOVATIONS mark. The 3 pages of printouts are coming exclusively from Complainant’s websites. The printout of the homepage associated with the domain name <ydnt.com> displays in its header a logo consisting in the word YOUNG in bold characters and the word INNOVATIONS in smaller and simple characters. The printouts of 2 webpages associated with the domain name <youngdental.com> show that Complainant uses prominently the trademark YOUNG alone, while the sign composed of the word YOUNG in bold characters and the word INNOVATIONS in smaller and simple characters appears only in the footnote of the cited websites. Complainant has not demonstrated to have been using the domain name <younginnovations.com>, but only the domain names <ydnt.com> and <youngdental.com>. Although Complainant asserts to have used its marks for “decades”, it has not submitted adequate evidence of such use and has not shown that, through such “widespread, continuous, and prominent use”, the YOUNG INNOVATIONS mark acquired distinctiveness/secondary meaning. Not any figure on the amount of sales, any promotional material in specialized journals, any recognition by Complainant’s industry or by the consumers, any consumer survey or any other evidence has been provided to support Complainant’s conclusory allegations that it has rights in the YOUNG INNOVATIONS mark and such mark is widely known by consumers and associated primarily with Complainant.
Complainant refers to a previous UDRP case where the panel had found Complainant’s common law rights in the mark YOUNG INNOVATIONS (Young Innovations, Inc. v. Wouter Konemann, FA2009001911122, Forum October 7, 2020). This Panel has reviewed the cited decision published on Forum’s website. However, such decision does not mention which evidence persuaded the panel in its finding. Noting that: i) each case is decided on its own merits; ii) the burden of proof on Complainant; and iii) this Panel shall decide the Complaint on the basis of the statements and documents submitted by Complainant, in absence of additional materials supporting Complainant’s allegations, the Panel can neither take the previous UDRP case cited by Complainant into consideration for purposes of the present dispute, nor accept Complainant’s unsupported conclusory statements.
Now, the Panel turns to assess the identity or confusing similarity between Complainant’s YOUNG trademark and the domain name <younginnovations.tech>.
When a domain name wholly incorporates the complainant’s trademark, the domain name will normally be considered confusingly similar. The addition of other terms to the relevant trademark would not prevent a finding of confusing similarity. Panels also agree that the TLD (including new gTLDs) is a technical requirement of registration and, therefore, is normally to be disregarded under the confusing similarity test. However, the strength of a complainant’s trademark consisting in a generic or common term and/or the meaning of a TLD might be relevant to panel assessment under the second and third elements. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy 4(a)(ii) and Policy 4(a)(iii) and not under Policy 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy 4(a)(ii) and 4(a)(iii)).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s YOUNG trademark.
Under paragraph 4(a)(ii) of the Policy, the complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the disputed domain name. If the complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. 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.”).
But, by virtue of paragraph 4(c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate the respondent's rights or legitimate interests to the domain name:
(i) before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if a respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In this case, the Panel considers that Complainant has made out a sufficient prima facie case. The disputed domain name is confusingly similar to Complainant's YOUNG trademark. Respondent has not been authorized by Complainant to use its mark, whether in a domain name or otherwise. The disputed domain name was registered on October 13, 2022 and resolves to a parking page containing third-party links (pay-per-click or PPC links). These factors are sufficient to establish a prima facie case, and move the evidentiary onus under paragraph 4(a)(ii) of the Policy, to Respondent.
Respondent claims that it has rights or legitimate interests in the disputed domain name, because it has been commonly known as business by the disputed domain name. Respondent is a Nepalese company founded in 2007, carrying out its business activities in the Information and Communication Technology industry under the company/trade name Young Innovations. To this end, Respondent has submitted the Permanent Account (PAN) Registration Certificate dated May 24, 2007, issued by the Government of Nepal, Ministry of Finance, Department of Inland Revenue, and notarized on July 10, 2020. Such document certifies that the taxpayer’s name is Young Innovations Pvt. Ltd. and its business activities are “transaction of related to computer software”. It has also submitted the printout of the webpage associated with the domain name <younginnovations.com.np> used to promote its business.
Furthermore, Respondent contends that it has acted in bona fide, because the disputed domain name has been registered to serve the company’s core business and support it to market its software business overseas. No evidence supporting this latter assertion has been submitted.
It also claims that it was not aware of Complainant’s mark, as the term “young” is a commonly used word, and, thus, it had no intention to disrupt Complainant’s business.
The Panel approaches the claim to Respondent’s right or legitimate interest with considerable caution. This is because, despite Respondent having established a prima facie case as set out above, Complainant may still succeed in its Complaint if it can establish that the disputed domain name was selected, not for the purpose of reflecting a legitimate company name, but instead for the purpose of targeting Complainant and the goodwill attached to Complainant’s YOUNG trademark. The following circumstances were taken into due consideration by the Panel in deciding this case:
1. Respondent’s company name is Young Innovations and it conducts its business in the software and technology industry, at least in Nepal, under such trade name since 2007, as evidenced by the tax certificate and the printout of its website.
2. The disputed domain name is comprised of the words “young” (that coincides with Complainant’s mark, but it is also a commonly used term) and “innovations” (a generic term that is related to Respondent’s activities), as well as the TLD “.tech” (a suffix which also relates to Respondent’s activities). Considered as a whole, the second-level portion of the domain name is identical to Respondent’s company name.
3. The disputed domain name was registered on October 13, 2022, 5 months before the Complaint was submitted to Forum, and does not resolve to any active website. Rather, it resolves to a parking page with third-party’s commercial links. Business plans and operations can take time to develop and the evidence of use or intended use of a domain name may not be available shortly after its registration. However, the Panel does have some concern that Respondent has not produced any evidence demonstrating its use of or preparations to use the disputed domain name in relation with its international activities to support its allegations made in the Response.
4. As for the PPC links, while Complainant has relied on a screenshot of a webpage associated with the disputed domain name, the Panel notes that such results are likely to be location-sensitive and dependent upon the IP address of the searching device. Some of those links are related to Complainant’s business, some are unrelated, and at least one is related to Respondent’s business (“digital customer data platform” - See Compl. Exhibit B).
5. The Panel does not find Complainant’s trademark to be unique or so distinctive as to be overwhelmingly associated with Complainant as opposed to any other party. Complainant has neither established the distinctiveness and the reputation of its YOUNG trademark, nor demonstrated that Respondent was aware of Complainant and its mark at the time of registration of the disputed domain name.
Therefore, the Panel does not find Complainant’s use of its mark to be so notorious or so distinctive that Respondent must be assumed to have registered the disputed domain name (or its business back in 2007) with Complainant’s trademark in mind.
The Panel is of the view that Respondent has provided sufficient evidence to meet its burden and to demonstrate its right or legitimate interest on the “commonly known by” grounds. In UDRP cases where a respondent can demonstrate it actually does business as a disputed domain name, panels have found the respondent has rights and legitimate interests. See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Forum Apr. 11, 2003) (holding that the respondent had rights or legitimate interests in the disputed domain name where its business name was “Anytime OnLine Traffic School” and that it was therefore not far-fetched to use <aoltrafficschool.com> as a domain name for its business).
The Respondent having made out its claim to a right or legitimate interest under paragraph 4(c)(ii) of the Policy, the Complaint fails and must be dismissed.
In view of the Panel’s finding regarding Respondent’s right and legitimate interest in the disputed domain name, it is not necessary that the Panel makes any finding regarding paragraph 4(a)(iii) of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <younginnovations.tech> domain name REMAIN WITH Respondent.
Ivett Paulovics, Panelist
Dated: May 4, 2023
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