JUUL Labs, Inc. v. Rohan Verma
Claim Number: FA1909001861964
Complainant is JUUL Labs, Inc. (the “Complainant”), represented by Chelsea E. Carbone of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Rohan Verma (the “Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulindian.com>, registered with GoDaddy.com, 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.
Bart Van Besien as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 12, 2019; the Forum received payment on September 12, 2019.
On September 13, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <juulindian.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 September 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@juulindian.com. Also on September 13, 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.
A timely Response was received and determined to be complete on September 17, 2019.
On September 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bart Van Besien 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 operates in the vaporizer and smoking-alternative industry under the name ‘JUUL’. Complainant purports to represent approximately 75% of the US e-cigarette market share. Complainant’s retail sales generated more than $77 million in revenue from retail sales in February 2018. Complainant posted more than $1 billion in revenue in 2018.
Complainant has rights in the JUUL mark to promote its vaporizer business based upon its registration of three trademarks with the United States Patent and Trademark Office (“USPTO”) (hereafter the “JUUL Mark(s)”):
· ‘JUUL’, Reg. No. 4,818,664, registered Sep. 22, 2015;
· ‘JUUL’ (stylized), Reg. No. 4,898,257, registered Feb. 09, 2016; and
· ‘JUULSALTS’, Reg. No. 5,667,074, registered Jan. 29, 2019 (See Ex. D).
Complainant purports that it owns registrations for the Juul Mark elsewhere in the world as well (no evidence was submitted of such registrations).
Complainant further claims that, at the time of filing the Complaint, the disputed domain name <juulindian.com> redirected to a website <avcdistributions.com> that attempts to exploit the goodwill associated with Complainant and its JUUL Marks (however, at the time of the decision, the disputed domain name redirects to an empty website). According to Complainant, this website prominently displayed JUUL products in combination with similar products produced by competitors, all of which were purportedly for sale through the site. Visitors to the site seeking JUUL products were being misled to believe that Respondent is an authorized seller of JUUL products, or indeed Complainant itself, which it is not. According to Complainant, Respondent has never used the Infringing Domain Name for any purpose other than to exploit consumer confusion and to trick users with the false implication that the site is affiliated with Complainant, or in fact that the proffered goods, a combination of JUUL branded and competitor products, were being sold by Complainant itself.
Respondent’s <juulindian.com> domain name is identical or confusingly similar to Complainant’s JUUL Mark because it wholly incorporates Complainant’s JUUL Mark, and merely adds the geographic term “indian” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <juulindian.com> domain name. Respondent is not authorized or licensed to use Complainant’s JUUL Mark, and there is no evidence to suggest that Respondent listed in the WHOIS record is commonly known by the disputed domain name, or has acquired any trademark rights in the term ‘JUUL’. Respondent also does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent attempts to capitalize on the fame of the JUUL Mark and purportedly offers unauthorized or competing products. Respondent has used the Infringing Domain Name to divert Internet users to a misleading website, a website that prominently incorporates the JUUL Mark in the domain name, and is designed to capitalize on confusion between the respective parties’ domain names and marks. Respondent’s use of the JUUL Mark in the infringing domain name is not nominative and can easily be avoided, as he does not need to make use of the JUUL Mark in its own domain name in order to identify its website.
Respondent registered and uses the <juulindian.com> domain name in bad faith because Respondent uses the disputed domain name to disrupt Complainant’s business by diverting traffic from Complainant’s legitimate website. Furthermore, Respondent attempts to attract, for commercial gain, users to the disputed domain name where he sells counterfeit or competing versions of Complainant’s products. In doing so, Respondent takes advantage of the value and goodwill associated with the JUUL Marks. Respondent had actual knowledge of Complainant’s JUUL Mark prior to registering the disputed domain name, as he uses the infringing domain name to promise and/or sell unauthorized JUUL products and products produced by competitors, and had no other reason to register the infringing domain name than to exploit the JUUL brand.
B. Respondent
Respondent submitted a response on Sep. 17, 2019. In its response, Respondent stated the following:
“In view of the aforesaid facts, the Respondent herein reiterates that it does not wish to use the disputed domain name in the future.
Accordingly, the Respondent hereby requests your good self to take note of the afore-stated facts and drop the proceedings sought to be initiated vide the present Complaint.”
Although Respondent did not literally state that he consents to transfer the <juulindian.com> domain name to Complainant, he clearly mentions that he is not interested in using the disputed domain name, and asks to stop the procedure on this basis.
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 the 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.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant asserts rights in the JUUL Mark based upon registration with the USPTO. The registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to 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).”). Here, Complainant provides registrations for its trademarks (See Ex. D). Complainant claims to have rights in the JUUL Mark based upon the aforementioned registrations with the USPTO. The Panel notes that one of the trademarks (with Reg. No. 4,818,664, registered on Sep. 22 2015) is registered under the name Pax Labs, Inc. Complainant notes that its legal name was changed from Pax Labs, Inc. to Juul Labs, Inc. on June 13, 2017, but has not provided evidence of this name change in its Complaint. The other two trademarks are registered under the name JUUL Labs, Inc (i.e., Complainant). Therefore, based on at least two of the trademark registrations with the USPTO under the name Juul Labs, Inc., the Panel finds Complainant has rights in the JUUL Mark per Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s domain name <juulindian.com> is identical or confusingly similar to Complainant’s JUUL Mark because it wholly incorporates Complainant’s JUUL Mark, and merely adds the geographic term “indian” and the “.com” gTLD. The addition of geographic terms and a gTLD are insufficient to overcome a claim of identicality or confusing similarity. See Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”); see also Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”).
The Panel agrees with Complainant and finds Respondent’s disputed domain name to be identical or confusingly similar to Complainant’s JUUL Mark.
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
The Panel reiterates that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden subsequently shifts to the 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 has no rights or legitimate interests in the <juulindian.com> domain name as Respondent is not authorized by Complainant to use the JUUL Mark and there is no evidence to suggest Respondent is commonly known by the disputed domain name. WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name (See Ex. A). 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). Additionally, lack of authorization to use a complainant’s mark may support a finding that the Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Complainant provides WHOIS information for Respondent indicating that Respondent is known as “Rohan Verma”, and no information indicates that Respondent was authorized to use Complainant’s JUUL Mark. See Compl. Ex. A.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <juulindian.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that, at the time when the Complaint was filed, the disputed domain name redirected to a competing website. The Panel notes that this competing website is no longer active, and that the disputed domain name, at the time of the decision, refers to an empty page.
Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Specifically, Complainant provides a screenshot of the disputed domain name’s resolving webpage where, at the time when the Complaint was filed, Respondent offered counterfeit or competing versions of Complainant’s products for sale. See Compl. Ex. G. Complainant argues that this does not constitute a legitimate noncommercial or nominative fair use.
Although it is difficult for the Panel to verify whether or not the domain name redirected to a website where JUUL products and/or competing products were being sold (from the screenshots of this website, it is not entirely clear that this website is a redirect from the domain name), the Panel notes that the allegations of Complainant are not contested by Respondent (Respondent did submit a response but did not contest the claims of the Claimant).
From this fact, and the combination of the other factors mentioned above (in particular the fact that Respondent is not known under the disputed domain name and was not authorized by the Claimant), the Panel determines that Respondent does not have rights or legitimate interests in the <juulindian.com> domain name.
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the <juulindian.com> domain name in bad faith because he attempts to attract, for commercial gain, users to the disputed domain name, where Respondent disrupts Complainant’s business by selling counterfeit versions of Complainant’s products. Use of a disputed domain name to reference a complainant’s products and offer competitive or counterfeit products is evidence of bad faith registration and use. See Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s products and offer competitive and/or counterfeit products). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage where, at the time when the Complaint was filed, Respondent offered the counterfeit or competing versions of Complainant’s products for sale (the Panel notes that this website is no longer active, and that the disputed domain name, at the time of the decision, refers to an empty page; from the evidence submitted by Complainant, it is difficult to verify whether or not the disputed domain name did indeed refer to a website where competing or counterfeit JUUL products were sold). See Compl Ex. G.
Finally, Complainant asserts that Respondent had actual and/or constructive knowledge of Complainant’s rights in the JUUL mark as the result of his extensive use of the mark predating the date on which Respondent registered the <juulindian.com> domain name, and Respondent’s use of the mark on the resolving webpage. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See 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.”). Use of a mark on a resolving webpage may demonstrate that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration, thus constituting bad faith. Finex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant provides a screenshot of the disputed domain name’s purported resolving webpage featuring the JUUL mark. See Compl. Ex. G.
From a combination of the various elements mentioned above (and in particular the fact that Respondent did not contest Complainant’s allegations of bad faith), the Panel finds that Respondent had actual notice of Complainant’s rights in the JUUL Mark, and has registered and uses the Disputed Domain Name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juulindian.com> domain name be TRANSFERRED from Respondent to Complainant.
Bart Van Besien, Panelist
Dated: October 1, 2019
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