JUUL Labs, Inc. v. jeong jongseok
Claim Number: FA1909001862622
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Chelsea E. Carbone of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is jeong jongseok (“Respondent”), Republic of Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulbest.com>, registered with Gabia, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 17, 2019; the Forum received payment on September 17, 2019.
On September 18, 2019, Gabia, Inc. confirmed by e-mail to the Forum that the <juulbest.com> domain name is registered with Gabia, Inc. and that Respondent is the current registrant of the name. Gabia, Inc. has verified that Respondent is bound by the Gabia, 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 September 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@juulbest.com. Also on September 23, 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 October 16, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
The Panel notes that the relevant Registration Agreement present by Complainant is written in Korean making the favored language of the proceedings also in Korean. However, pursuant to UDRP Rule 11(a), the Panel finds that there is a likely possibility that the Respondent is conversant and proficient in the English language and further that conducting the proceeding in Korean would unfairly burden Complainant. Indeed, the website addressed by that at-issue domain name contains some amount of content in the English language. Importantly, Respondent, although having been given appropriate notice of the instant complaint, has failed to offer any objection to going forward in English as per Complainant’s request. Therefore, the Panel finds that the proceeding should be in English.
A. Complainant
Complainant contends as follows:
Complainant uses the JUUL mark in connection with vaporizer devices and accessories as a smoking alternative for adults.
Complainant has rights in the JUUL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <juulbest.com> domain name is identical or confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the term “best.”
Respondent has no rights or legitimate interests in the <juulbest.com> domain name. Respondent is not known by the at-issue domain name, nor has Complainant licensed or otherwise permitted Respondent to use the mark. Respondent does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the at-issue domain name to divert internet users to the Respondent’s website which passes itself off as being sponsored by Complainant, when it is not, and sells products compatible and/or competing with those products offered by Complainant.
Respondent registered and uses the <juulbest.com> domain name in bad faith. Respondent uses the domain name to divert internet traffic and disrupt Complainant’s business. Respondent uses the domain name to pass off as Complainant by displaying the JUUL mark and branding and offer for sale compatible or competing products. Finally, Respondent had actual knowledge of Complainant’s rights in the JUUL mark at the time of registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the JUUL trademark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the JUUL trademark.
Respondent’s domain name addresses a website that displays Complainant’s trademark and other intellectual property and offers JUUL compatible and/or competing products for sale to third parties.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its JUUL trademark. Such registration is sufficient to demonstrate Complainant’s rights in the JUUL mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <juulbest.com> domain name contains Complainant’s JUUL trademark followed by the term “best” all followed by the top-level domain name “.com”. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <juulbest.com> domain name from the JUUL trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <juulbest.com> domain name is confusingly similar to Complainant’s trademark. 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).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
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.
The WHOIS information for <juulbest.com> identifies the domain name’s registrant as “jeong jongseok” and the record before the Panel contains no evidence showing that Respondent is commonly known by the <juulbest.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <juulbest.com> domain name for the purposes of 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); see also, Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Additionally, Respondent uses the <juulbest.com> domain name to pass itself off as Complainant in furtherance of diverting internet users to Respondent’s website. Respondent’s website prominently displays the JUUL mark, along with pictures of products that are purportedly compatible with JUUL for sale through the website. Respondent’s use of the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Gumwand Inc. v. jared brading, FA 1794058 (Forum Aug. 6, 2018) (finding that use of a confusingly similar domain name to resolve to a website which purported to sell chewing gum-removal equipment which was either counterfeit versions of Complainant’s goods, or goods which competed directly with Complainant’s chewing gum-removal equipment business, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use within Policy ¶¶ 4(c)(i) or (iii)).
Given the forgoing and absent any contrary evidence, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain name under Policy ¶4(a)(ii).
The at-issue domain name was registered and was being used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights or legitimate interests, Respondent uses the <juulbest.com> domain name to address a website offering products that are compatible and/or in competition with Complainant’s products. Using a confusingly similar domain name in such a manner is disruptive to Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and /or (iv). See Twitter v. Domain Admin, FA 1607451 (Forum April 2, 2015) (“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).”); see also, Walgreen Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum Jul. 1, 2018) (“Respondent’s registration and use of the confusingly similar <walgreensshop.com> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).”).
Furthermore, Respondent had actual knowledge of Complainant’s rights in the JUUL mark when it registered <juulbest.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s use of Complainant’s trademark and other intellectual property on the <juulbest.com> website, and from Respondent’s use of the<juulbest.com> website in furtherance of selling products similar to, or compatible with, JUUL products. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name additionally shows Respondent’s bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juulbest.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 16, 2019
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