JUUL Labs, Inc. v. Domain Administrator / See PrivacyGuardian.org
Claim Number: FA2005001896575
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Susanna P. Lichter of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Domain Administrator / See PrivacyGuardian.org (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulpodonlinestore.com>, registered with NameSilo, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 15, 2020; the Forum received payment on May 15, 2020.
On May 18, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <juulpodonlinestore.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 May 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 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@juulpodonlinestore.com.
Also on May 20, 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 June 12, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the JUUL trademark acquired through its ownership of its portfolio of registered trademarks described below and its use of the JUUL and JUULPOD marks as trademarks for its electronic cigarettes and related products since 2015. Complainant asserts that it has acquired a growing reputation and goodwill in the marks as its business expanded to more than $1 million in monthly retail sales in January 2016, and Complainant posted more than $1 billion in annual revenue for the calendar year 2018. Complainant claims that as of the beginning of 2019, it controlled approximately 75% of the US e-cigarette market share.
Complainant submits that the disputed domain name is nearly identical and confusingly similar to Complainant’s JUUL and JUULPOD marks. Complainant argues that the addition of the generic term “onlinestore” does not limit the risk of confusion between Complainant’s trademark and the disputed domain name. See, e.g., JUUL Labs, Inc. v. Zekeriya Deniz / FBS INC / Whoisprotection.biz, Case No. FA1907001852295 (Forum Aug. 28, 2019) (“Respondent merely adds the term “sigara”, and the gTLD “.com” to the JUUL mark. The Panel agrees with Complainant and finds the <juulsigara.com> domain name does not contain changes that would sufficiently distinguish it from the JUUL mark per Policy ¶ 4(a)(i)”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Arguing that Respondent is not known by the name JUUL or JUULPOD and has not acquired any trademark rights or legitimate interests in the terms JUUL or JUULPOD. 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)).
Complainant adds that it has not licensed or otherwise permitted Respondent to use the JUUL or JUULPOD marks, or any confusingly similar mark, or to apply for or use any domain name incorporating its marks or any confusingly similar term. See Telstra Corp. Ltd. v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 13, 2000) (respondent had no rights or legitimate interests to use domain name because respondent was not licensed or otherwise permitted to use complainant’s trademark).
Complainant further argues that Respondent’s use of the JUUL and JUULPOD marks in the disputed domain name is not nominative and can easily be avoided, and accordingly Respondent does not need to make use of the JUUL or JUULPOD mark in the disputed domain name in order to identify its website. See Six Continents Hotels, Inc. v. Hotel Partners of Richmond, Case No. D2003-0222 (WIPO May 14, 2003) (finding that the use of the complainant’s HOLIDAY INN mark in the domain name <holidayinnhotelreservations.com> was not nominative fair use because it was not an unavoidable and necessary use of a mark to identify respondent’s services).
Complainant alleges that Respondent has used the disputed domain name to divert Internet users to a misleading website, that is designed to capitalize on confusion between the respective Parties’ domain names and Complainants’ marks in order to advertise Complainant’s products for sale on an unauthorized basis and to promote and sell competing products. In this regard Complainant refers to a screenshot of the website which the disputed domain name resolves which purports to offer both Complainant’s products and “JUUL Compatible Pods”.
Complainant argues that such use of its trademarks to misleadingly divert Internet traffic is not a legitimate, noncommercial or fair use of the disputed domain name. See JUUL Labs, Inc. v. jeong jongseok, Case No. FA1909001862622 (Forum Oct. 16, 2019) (ordering transfer of the disputed domain to the complainant and finding the respondent had no rights or legitimate interests in the domain where the respondent was using the domain to “pass itself off as Complainant in furtherance of diverting internet users to Respondent’s website…[which] 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 offerings of goods or services…, nor a non- commercial or fair use…”).
Complainant alleges that the disputed domain name was registered and is being used in bad faith, arguing that Respondent’s use of the disputed domain name demonstrates actual knowledge of Complainant’s rights by the registrant, and that the disputed domain name was registered to take advantage of the value and goodwill associated with the JUUL and JUULPOD marks under ICANN Policy ¶ 4(a)(iii).
Complainant argues that the registration of a domain name for such a purpose constitutes bad faith. See Ticketmaster Corp. v. Spider Web Design, Inc., Case No. D2000-1551 (WIPO Feb. 4, 2001) (“actual or constructive knowledge of [c]omplainant’s rights in [t]rademark is a factor supporting bad faith”).
Complainant adds that Respondent is using the disputed domain name in bad faith to lure Internet users to Respondent’s own website that promises unauthorized JUUL products and promotes and sells competitor’s products.
Complainant submits that Internet users who are directed to Respondent’s website are likely to believe that they have successfully accessed a website originating from or approved by Complainant and argues that this type of use of a domain name has been recognized as bad faith use in violation of ICANN Policy ¶ 4(b)(iv). See Fossil, Inc. v. wwwfossil-watch.org c/o Hostmaster, Case No. FA 335513 (Forum Nov. 9, 2004) (finding bad faith where respondent attempted to profit from the fame of complainant’s trademark by attracting Internet traffic to his website)).
Complainant adds that even if Respondent’s website were not engaged in the sale of unauthorized JUUL products and the promotion and sale of competitor’s products, which it is, Respondent’s use of a domain name to divert Internet traffic and disrupt a third-party business—as is the case here— constitutes bad faith under Policy ¶ 4(b)(iii). See Twitter, Case No. FA1503001607451(Forum Apr. 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).”).
Complainant concludes by submitting that Respondent’s use of the disputed domain name is also likely to cause consumer confusion given that the unauthorized JUUL branded products sold by Respondent are materially different than Complainant’s JUUL branded products because any resale in these circumstances would no longer be covered by Complainant’s warranty manufacturer’s warranty which expressly excludes “Devices or charging cases purchased outside of the United States or from unauthorized retailers”.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant manufactures electronic cigarettes and related products which it markets using the JUUL and JUULPOD marks.
Complainant owns a portfolio of registered trademarks including
· United States registered trademark JUUL registration number 4,818,664, registered on September 20, 2015 on the Principal Register for goods in international classes 1, 30 and 34;
· United States registered trademark JUUL registration number 4,898,257, registered on February 9, 2016 on the Principal Register for goods in international class 34.
Complainant has an established Internet presence and maintains a website, to which its domain name <juul.com> resolves, to market and provide information about its products.
The disputed domain name was registered on March 24, 2020 and resolves to a website which purports to offer Complainant’s and third-party products for sale.
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WHOIS and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name in the course of this proceeding.
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”).
Complainant has adduced uncontested clear and convincing evidence of its rights in the JUUL trademark through its ownership of the above-mentioned United States registrations and the goodwill that has accrued in the mark by use since 2015. Complainant has also provided uncontested clear and convincing evidence of its rights in the JUULPOD mark by extensive use in its e-cigarette business.
The disputed domain name is composed of Complainant’s JUUL and JUULPOD trademarks in their entirety in combination with the terms “online” and “store” and the generic Top-Level Domain extension <.com>.
Complainant’s JUUL and JUULPOD trademarks are the initial, dominant and only distinctive elements in the disputed domain name. The elements “online” and “store” are descriptive and add no distinctive character to the disputed domain name.
For the purposes of comparison, the generic Top-Level Domain <.com> extension may be ignored because, in the circumstances of this Complaint, it would be recognized as a technical necessity for the domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent is not known by the name JUUL or JUULPOD and has not acquired any trademark rights or legitimate interests in the term JUUL or JUULPOD; that Complainant has not licensed or otherwise permitted Respondent to use the JUUL or JUULPOD marks, or any confusingly similar mark, or to apply for or use any domain name incorporating its marks or any confusingly similar term; that Respondent’s use of the JUUL and JUULPOD marks in the disputed domain name is not nominative and can easily be avoided, and accordingly Respondent does not need to make use of the JUUL or JUULPOD marks in the disputed domain name in order to identify its website; that Respondent has used the disputed domain name divert Internet users to a misleading website; that the website to which the disputed domain name resolves is designed to capitalize on consumer confusion with Complainants’ marks and its website in order to advertise Complainant’s products for sale on an unauthorized basis and to promote and sell competing products; that such use of Complainant’s trademarks to misleadingly divert Internet traffic is not a legitimate, noncommercial or fair use of the disputed domain name.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove its rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has failed to discharge the burden.
In these circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Given the distinctive character of Complainant’s JUUL and JUULPOD marks that are the dominant and only distinctive elements in the disputed domain name, in the absence of any explanation from Respondent, this Panel must find on the balance of probabilities that the registrant of the disputed domain name was aware of Complainant and the reputation and goodwill in its JUUL and JUULPOD marks when the disputed domain name was chosen and registered.
This Panel therefore finds that on the balance of probabilities that the disputed domain name was chosen and registered in bad faith in order to take predatory advantage of goodwill associated with Complainant’s marks in order to attract and divert Internet traffic.
This finding is supported by the bad faith use to which the disputed domain name has been put, resolving to Respondent’s website that purports to offer for unauthorized sale Complainant’s and competing products.
This Panel also finds therefore that on the balance of probabilities, Respondent is using the disputed domain name in bad faith in an intentional attempt to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's JUUL and JUULPOD marks as to the source, sponsorship ,affiliation, or endorsement of Respondent’s web site.
As this Panel has found that the disputed domain name was both registered and is being used in bad faith, Complainant has also succeeded in the third and final element of the test in Policy ¶ 4(a)(iii). Complainant is therefore entitled to the remedy requested.
Having established all three elements required under the ICANN Policy, this Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juulpodonlinestore.com> domain name be TRANSFERRED from Respondent to Complainant.
_____________________________________
James Bridgeman SC
Panelist
Dated: June 12, 2020
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