JUUL Labs, Inc. v. T K
Claim Number: FA1906001847855
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Chelsea E. Carbone of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is T K (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapestjuul.com>, registered with Google LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 13, 2019; the Forum received payment on June 13, 2019.
On June 14, 2019, Google LLC confirmed by e-mail to the Forum that the <cheapestjuul.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 June 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 2019 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@cheapestjuul.com. Also on June 18, 2019, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On July 11, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it operates in the vaporizer and smoking-alternative industry. Since the company’s launch in mid-2015, its vaporizers have been growing in popularity. Based on Nielsen retail monthly sales data of vapor devices, Complainant sold 51,454 units in January 2016, with sales increasing to 3.5 million units sold in February 2018 alone. Perhaps even more impressive, Complainant’s retail sales generated more than $77 million in revenue from retail sales (Nielsen Retail Sales data) in February 2018. Complainant posted more than $1 billion in revenue in 2018. In 2018, Complainant sold 16.2 million devices. Complainant currently represents approximately 75% of the US e-cigarette market share and it launched in an additional eight country markets in 2018. Complainant has rights in the JUUL mark through its registration of the mark in the United States in 2015. As a result of the tremendous success of Complainant’s JUUL-branded vaporizer devices and related accessories, people around the world have come to associate the JUUL mark exclusively with Complainant and therefore Complainant maintains trademark registrations and applications all over the world for its JUUL-related marks.
Complainant alleges that the disputed domain name is identical or confusingly similar to its JUUL mark as it incorporates the mark in its entirety and is differentiated only by the addition of the generic term “cheapest.”
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not known by the disputed domain name, nor has Complainant licensed or otherwise permitted Respondent to use the mark or to sell Complainant’s products. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass off as Complainant and offer for sale counterfeit or unauthorized versions of Complainant’s products. The resolving website displays content that mimics Complainant’s own marketing content, including prominently displaying Complainant’s mark and logo.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s business by offering for sale counterfeit or unauthorized versions of Complainant’s products. Finally, Respondent had actual knowledge of Complainant’s rights in the JUUL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark JUUL and uses it to market vaporizer and smoking-alternative products. The mark is famous.
Complainant’s rights in its marks date back to at least 2015.
The disputed domain names were registered in 2018.
Complainant has not licensed or otherwise authorized Respondent to use its marks or to sell its products.
The resolving website displays Complainant’s mark and logo, and material copied from Complainant’s legitimate website; it offers for sale unauthorized or counterfeit versions of Complainant’s products. The resolving website displays a disclaimer. The WHOIS information is incorrect.
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 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”).
The disputed domain name incorporates Complainant’s JUUL mark in its entirety and is differentiated only by the addition of the generic term “cheapest” and the “.com” generic top-level domain (“gTLD”). The addition of a generic term and a gTLD is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The Panel therefore finds that the <cheapestjuul.com> domain name is confusingly similar to Complainant’s JUUL mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise permitted Respondent to use the JUUL mark, to register domain names using Complainant’s mark, or to sell Complainant’s products. Respondent is not commonly known by the disputed domain name: absent a response, WHOIS information may be used to determine whether a respondent is commonly known by the 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). Here, the WHOIS information for the disputed domain name lists the registrant as “T K.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to offer for sale counterfeit or unauthorized versions of Complainant’s products.
Complainant alleges that Respondent attempts to pass of as Complainant. However, the resolving website contains a disclaimer stating: “Cheapest Juul is in no way affiliated with said JUUL or JUUL LABS”. Consequently, the Panel finds that Respondent does not attempt to pass off as Complainant.
According to paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith”. Further, paragraph 2.15 of the WIPO Overview states: “to support a claim to rights or legitimate interests under the UDRP, the use of a disputed domain name must in any event not be abusive of third-party trademark rights.” For the reasons given below, the Panel finds that Respondent’s use of the disputed domain name is abusive of Complainant’s trademark rights; the Panel also finds bad faith registration and use. Consequently, the mere existence of the disclaimer does not establish that Respondent has rights or legitimate interests in the disputed domain name.
The well-known case Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO, Nov. 6, 2001) addresses “the difficult question of whether an authorized sales or service agent of trademarked goods can use the trademark at issue in its domain name”. Such is not the situation here: Respondent is not an authorized sales or service agent. Further, the products offered by Respondent may be counterfeit. Therefore, the Panel finds that Respondent fails to use the disputed domain to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(a)(i) or (iii). See Urban Outfitters Inc. v. Ju Yu, D2014-0029 (WIPO March 14, 2014) (use of <cheapfreepeople.net> to host website designed to look like Free People website and selling counterfeit FREE PEOPLE apparel is not bona fide offering of goods or a legitimate use of FREE PEOPLE mark).
For all the reasons given above, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark and logo, displays material copied from Complainant’s website, and includes a disclaimer indicating that Respondent was well aware of Complainant’s mark. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Further, Respondent disrupts Complainant’s business by offering for sale counterfeit or unauthorized versions of Complainant’s products. Use of a disputed domain name to disrupt a complainant’s business by offering for sale counterfeit and/or unauthorized products can evince bad faith under Policy ¶ 4(b)(iii). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Twitter v. Domain Admin, FA1503001607451(“Respondent’s use of the domain name disrupted Complainant’s business and misappropriated the trademark value of Complainant’s mark to wrangle visitors to its website thereby demonstrating Respondent’s bad faith registration and use of the name pursuant to Policy ¶ 4(b)(iii).”). Accordingly, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii) on this ground also.
Finally, the WHOIS information is incomplete or incorrect. Complainant’s address is given as “North, North, IL, United States, 60181”. This is not a valid address. Misleading WHOIS contact information can evince bad faith registration and use under Policy ¶ 4(a)(iii). See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”); see also ABB Asea Brown Boveri Ltd v. Global Mgr, FA 1702001716963 (NAF Mar. 30, 2017) (“Complainant contends that Respondent provided false contact information while registering the disputed domain. Registering a confusingly similar domain name using false contact information can evince bad faith registration.”); see also j2 Global Canada, Inc. and Landslide Technologies, Inc. v. Vijay S Kumar/Strategic Outsourcing Services Pvt Ltd, FA 1411001647718 (NAF Jan. 4, 2016) (“False or misleading contact information indicates bad faith registration and use.”); see also Chevron Intellectual Property LLC v. Phillip Thomas/Chevron Pacific, FA 1504001615524 (NAF May 29, 2015) (“Complainant’s use of false registration data and its unexplained redirection of the disputed domain name to Complainant’s own website are further indications of such bad faith.”); see also McDonald’s Corp. v. Holy See, FA 0304000155458 (NAF June 27, 2003) (“The Panel finds that Respondent provided false contact information in the registration certificates and that such actions, even though not specifically enumerated in the Policy, may form the basis for a finding of bad faith registration and use.”); see also Mars, Incorporated v. RaveClub Berlin, FA 0106000097361 (NAF July 16, 2001) (providing false registration and contact information for infringing domain names evidenced Respondent’s bad faith). Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) on this ground also.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapestjuul.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 11, 2019
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