JUUL Labs, Inc. v. Olesia Maznychenko
Claim Number: FA2003001888124
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Natalia Pakhomovska of DLA Piper Ukraine, LLC, Ukraine. Respondent is Olesia Maznychenko (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juul.host>, registered with Registrar of Domain Names REG.RU 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 13, 2020; the Forum received payment on March 13, 2020.
On March 16, 2020, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <juul.host> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 March 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 2020 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@juul.host. Also on March 23, 2020, 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 April 20, 2020, 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 is written in Russian making the favored language of the proceedings also in Russian. However, pursuant to UDRP Rule 11(a), the Panel finds that there is a likely possibility that the Respondent is conversant and/or proficient in the English language and further that conducting the proceeding is Russian would unfairly burden Complainant. Importantly, Respondent, although having been given appropriate notice of the instant complaint, has failed to offer any objection to going forward in English. Therefore, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant contends as follows::
Complainant, JUUL Labs, Inc. is in the business of selling vaporizer devices and accessories.
Complainant has rights in the JUUL mark based upon the registration with the United States Patent and Trademark Office (“USPTO”).
Additionally, Respondent’s <juul.host> domain name is identical to Complainant’s mark because it wholly incorporates Complainant’s JUUL mark, simply adding the “.host” top-level domain (“TLD”) to create the disputed domain name.
Respondent does not have rights or legitimate interests in the <juul.host> domain name. Respondent is not licensed or permitted to use Complainant’s JUUL mark and is not commonly known by the at-issue domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to divert users to a misleading website that promotes competing products.
Respondent registered and uses the <juul.host> domain name in bad faith. Respondent disrupts Complainant’s business through promotion of competing products. Additionally, Respondent attempts to attract Internet users to its competing website for commercial gain through the sale of unauthorized products. Finally, Respondent has actual knowledge of Complainant’s rights in the JUUL mark as shown through use of Complainant’s logo and information on Respondent’s own website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the JUUL trademark.
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 branded products and offers competing products or unauthorized JUUL products for sale.
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 identical to a trademark in which Complainant has rights.
Complainant’s registration of the JUUL mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Further, Respondent’s <juul.host> domain name incorporates Complainant’s JUUL trademark, followed by the top-level domain name “.host.” However, the slight difference between Complainant’s trademark and Respondent’s domain name do nothing to distinguish the at-issue domain name from Complainant’s trademark pursuant to Policy ¶ 4(a)(i) since top-level domain names are disregarded for the purposes of Policy ¶ 4(a)(i) analysis Therefore, the Panel concludes that Respondent’s <juul.host> domain name is identical to Complainant’s JUUL trademark. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”).
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). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
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 the at-issue domain name identifies the domain name’s registrant as “Olesia Maznychenko” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <juul.host>domain name. The Panel therefore concludes that Respondent is not commonly known by the <juul.host> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the <juul.host> domain name to pass itself off as Complainant so that it may offer unauthorized JUUL products. In particular, Complainant shows that the at-issue domain name addresses a website that displays Complainant’s trademark and official pictures of Complainant’s products while offering unauthorized JUUL products for sale. Respondent’s use of the domain name in this manner falsely implies that there is a relationship between Complainant and Respondent. Respondent’s use of the domain name in this manner points to 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 Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also, eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <juul.host> domain name was registered and used in bad faith. As discussed below, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First as mentioned above, Respondent’s trademark identical domain name is used to address a website displaying Complainant’s JUUL mark so that Respondent may pass itself off as being sponsored by, or affiliated with, Complainant, when it is not. Respondent further uses its <juul.host> website to offer unauthorized JUUL products for sale. Using the <juul.host> domain name to create the false impression of affiliation with Complainant in order to disrupt Complainant’s business and compete with Complainant by selling unauthorized JUUL products shows Respondent’s bad faith registration and use of the <juul.host> domain name per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also, H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)).
Finally, Respondent registered <juul.host>knowing that Complainant had trademark rights in the JUUL mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s use of Complainant’s trademark on the <juul.host> website, and from the unauthorized offering of JUUL products on such website. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <juul.host>domain name in bad faith 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juul.host> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 21, 2020
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