JUUL Labs, Inc. v. Mahir Sultanov
Claim Number: FA2003001889454
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Aaron D. Hendelman of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Mahir Sultanov (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulturk.com>, registered with FBS 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 23, 2020; the Forum received payment on March 23, 2020.
On March 24, 2020, FBS Inc. confirmed by e-mail to the Forum that the <juulturk.com> domain name is registered with FBS Inc. and that Respondent is the current registrant of the name. FBS Inc. has verified that Respondent is bound by the FBS 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 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 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@juulturk.com. Also on March 25, 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 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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, JUUL Labs, Inc., is a well-known vaporizer (“e-cigarette”) company. Complainant has rights in the JUUL trademark based upon its extensive use of the mark in commerce since 2015 and its registration thereof with the United States Patent and Trademark Office (“USPTO”) as of that same year. Respondent’s <juulturk.com> domain name, registered on November 7, 2020, is confusingly similar to Complainant’s JUUL mark, as it is merely a combination of the mark, the .com generic top-level domain (“gTLD”), and the geographic term “Turk”.
Respondent has no rights or legitimate interests in the <juulturk.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the JUUL mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain resolves to a webpage where Respondent offers unauthorized versions of Complainant’s products for sale. Although authentic JUUL products are sold through convenience stores and other retail outlets, they are only offered online through Complainant’s website. As such, Respondent cannot be an authorized online reseller.
Respondent registered and is using the <juulturk.com> domain name in bad faith. Respondent uses the Infringing Domain Name to lure internet users to Respondent’s own webpage that is branded with the JUUL logo and promises unauthorized products for Respondent’s commercial gain. Finally, Respondent had actual knowledge of Complainant’s rights in the JUUL mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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 Panel notes Complainant’s request that English be the language of this administrative proceeding pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Turkish language Registration Agreement for the disputed domain name. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Evidence exhibiting Respondent’s understanding of the English language should be considered and the parties must not be unduly prejudiced by the use of a language other than that appearing in the registration agreement of the disputed domain name. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Turkish language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”) In support of its request Complainant points to the fact that portions of the website that resolves from the disputed domain name appear in English and that Requiring the proceedings to be conducted in Turkish would unduly burden the
Complainant which is located in the U.S. and does not speak Turkish. Such burden, it is asserted, includes the cost of translating the complaint into Turkish and an unnecessary delay of the proceedings. Therefore, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to indicate the high probability that the Respondent is proficient in the English language. Further, Respondent has not filed a response or made any other submission to contest Complainant’s language request despite being notified of the Complaint in both the English and Turkish languages. After considering the circumstance of the present case, the Panel decides that these proceedings will be conducted in English.
Complainant has rights in the JUUL mark based upon its use of the mark since 2015 and its registration thereof with the USPTO in the same year. Registration of a mark with the USPTO is generally sufficient to establish rights in the mark. 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).”) Since Complainant submits copies of its registration certificates for the JUUL mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues that the Respondent’s <juulturk.com> domain name is confusingly similar to the JUUL mark, as it incorporates the mark in its entirety along with a geographic term and a gTLD. The addition of geographic terms and gTLDs are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). 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.”) Complainant asserts that Respondent’s <juulturk.com> domain name incorporates the JUUL mark in its entirety, the geographic term “turk”, and the “.com” gTLD. Such additions are insufficient to avoid confusion with Complainant’s mark. Philip Morris Products S.A. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Cihan Atalay, D2018-1879 (WIPO Sep. 28, 2018) (“The Complainant’s mark IQOS is completely reproduced and recognizable in the disputed domain name <iqosturk.com>. The addition of the term “turk” does not prevent a finding of confusing similarity.”)
For the above-stated reasons, the Panel finds that the <juulturk.com> domain name is confusingly similar to the JUUL mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to demonstrate that it does have 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <juulturk.com> domain name because Respondent is not licensed or permitted to use Complainant’s JUUL mark and is not commonly known by the disputed domain name. In considering this issue, WHOIS information can be used to show that a respondent is or is not commonly known by the disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”) Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies “Mahir Sultanov” as the registrant of the disputed domain name and no information suggests that Respondent is known otherwise or that it has been authorized to use the JUUL mark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Next, Complainant claims that Respondent does not use the disputed domain for any bona fide offering of goods or services or a legitimate noncommercial or fair use and instead uses the domain to divert users to a misleading website that promotes unauthorized and competing products. Use of a confusingly similar domain name to sell competing products is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See okia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).; see also Florists’ Transworld Delivery v. Malek, FA 676433 (Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). From the screenshots submitted into evidence, it appears to the Panel that the website of the <juulturk.com> domain name is designed and organized so as to impersonate the Complainant and pass itself off as being a legitimate site of the Complainant’s. The website prominently features the same graphic logo for the JUUL mark as used by the Complainant, and it displays a number of professionally produced photographs of the Complainant’s products followed by listed prices that are presented in such a way as to emphasize that they are deeply discounted. Even assuming that the JUUL products offered on the <juulturk.com> website are authentic, Respondent’s use of the domain name does not satisfy the test for a bona fide offering of goods or services set out in the seminal case of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO, November 6, 2001) for the reasons that Respondent’s website offers what appear to be third-party products that are “compatible” with Complainant’s products and it contains no mention or other indication of its lack of a relationship with the Complainant.
In light of the evidence presented and in the absence of any response or other submission by the Respondent, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
It is asserted that the Respondent had actual knowledge of the Complainant’s rights in the JUUL trademark prior to Respondent’s registration of the <juulturk.com> domain name based on the Complainant’s extensive and multi-national use of the mark and on the content of Respondent’s website. Actual knowledge of a complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”) Here, Complainant provides screenshots of the <juulturk.com> website which displays the JUUL mark and logo as well as sales listings for products bearing the JUUL mark. Therefore, the Panel concludes that the Respondent had actual knowledge of Complainant’s rights in the JUUL mark prior to registration of the disputed domain name, thereby laying the foundation for a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant further argues that Respondent registered and uses the <juulturk.com> domain name in bad faith by disrupting Complainant’s business through promotion of competing products. Use of a disputed domain name to promote competing products acts as evidence of an attempt to disrupt business in bad faith under Policy ¶ 4(b)(iii). See H-D U.S.A., LLC v. Linchunming / linchunming, FA 1589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”) The screenshots of Respondent’s website provided by Complainant indicates that “compatible” products are offered for sale. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iii) based upon the Respondent offering for sale products that Compete with those of the Complainant.
Finally, Complainant argues that Respondent registered and uses the confusingly similar <juulturk.com> domain name in bad faith by attempting to attract Internet users to its competing website for commercial gain through the sale of unauthorized products. Use of a disputed domain name to lure internet users to a website for the sale of counterfeit and competing products is recognized as bad faith under Policy ¶ 4(b)(iv). See 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)). Complainant provides screenshots of Respondent’s website and notes the likelihood of confusion due to Respondent’s display of Complainant’s logo and its offering for sale of JUUL branded products at deep discounts. Respondent has not participated in this case and so offers no explanation to refute the Complainant’s arguments. Thus, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juulturk.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: April 20, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page