JUUL Labs, Inc. v. Domain Administrator / See PrivacyGuardian.org
Claim Number: FA2008001908335
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 <juulpodofficial.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 August 13, 2020; the Forum received payment on August 13, 2020.
On August 14, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <juulpodofficial.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 August 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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@juulpodofficial.com. Also on August 17, 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 September 10, 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 <juulpodofficial.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the JUUL mark established through its ownership its portfolio of trademark registrations described below. Complainant also claims rights in the JUUL and JUULPOD marks at common law because of the goodwill it has established in the marks though their extensive use since 2015.
In this regard, Complainant refers to the Nielsen retail monthly sales data of vapor devices, to show that it has sold 51,454 units in January 2016 which rose to 16.2 million devices by 2018 with more than $1 billion in revenue. Complainant states that in addition to convenience stores and other retail outlets, it also sells and markets its products via its websites hosted at <juul.com> <juulvapor.com> and <juullabs.com>.
Complainant alleges that the disputed domain name is nearly identical to Complainant’s JUUL and JUULPOD marks and is likely to cause consumer confusion. Complainant argues that the addition of generic term “official” does not limit the risk of confusion between Complainant’s trademark and the disputed domain name. 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).
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 term 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 a term confusingly similar to the JUUL or JUULPOD marks. 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 submits that Respondent’s use of the JUUL and JUULPOD marks in the disputed domain name is not nominative and can easily be avoided—Respondent does not need to make use of either the JUUL or JUULPOD mark in its own 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).
Referring to a screenshot of the website to which the disputed domain name resolves, that prominently displays the JUUL and JUULPOD marks and offers both Complainant’s and competitor’s goods for sale, Complainant alleges that Respondent has used the infringing domain name to divert Internet users to its misleading website that is designed to capitalize on confusion between the respective parties’ domain names and marks in order to promote and sell products from Complainant’s competitor.
Complainant argues that such diversion to a misleading website is not a legitimate, noncommercial or fair use of the disputed domain name and is, in fact, further evidence of bad faith 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 offering 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 clearly had actual knowledge of Complainant’s rights in its name and trademarks when it registered the disputed domain name and argues that given Respondent’s actual knowledge of Complainant’s rights, the disputed domain name was therefore registered to take advantage of the value and goodwill associated with the JUUL and JUULPOD marks under ICANN Policy ¶ 4(a)(iii). Complainant submits that 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”).
Alleging that the disputed domain name is being used in bad faith, Complainant again refers to the screenshot of the website to which it resolves and argues that it illustrates that Respondent uses the disputed domain name to lure Internet users to Respondent’s own website that promises unauthorized JUUL products and promotes and sells competitor’s products.
Complainant asserts that Internet users who are directed to Respondent’s site are likely to believe that they have successfully accessed a website originating from or approved by Complainant. Complainant submits 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 Twitter v. Domain Admin, Case No. FA1503001607451 (Forum April 2, 2015) (bad faith shown by registrant’s scheme to divert web traffic from mark owner’s website to respondent’s own website for the purpose of “exploit[ing] visitors either by passing off goods, or infecting the visitor’s computer with malware or otherwise”).
Complainant further argues 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 adds that 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. A material difference between legitimately sold products and those sold on an unauthorized basis has been found as an exception to the first sale doctrine sufficient to support a finding of consumer confusion. Grateful Palate, Inc. v. Joshua Tree Imports, LLC, 220 F. App’x 635, 637 (9th Cir. 2007) (“After that first sale…the trademark holder may establish infringement only if he demonstrates that the goods are materially different).
Complainant asserts that the warranty on its JUUL branded products expressly excludes “Devices or charging cases purchased outside of the United States or from unauthorized retailers”. Therefore, as Respondent is an unauthorized retailer, any products sold on Respondent’s site are excluded from coverage under Complainant’s warranty, and such an exclusion constitutes a material difference likely to result in a likelihood of confusion. Complainant refers to a number of court decisions in the United States that have found that warranty differences accompanying a trademarked product – including where a product is no longer covered by a manufacturer’s warranty upon resale – may constitute material differences: Beltronics USA, Inc. v. Midwest Inventory Distrib., LLC, 562 F.3d 1067, 1073 (10th Cir. 2009) (finding no error in the district court’s conclusion that “material differences may include warranties and services associated with [a trademarked product]”)). See also SKF USA Inc. v. Int'l Trade Comm’n, 423 F.3d 1307, 1312 (Fed. Cir. 2005) (holding “physical material differences are not required to establish trademark infringement involving gray market goods”); Societe Des Produits Nestle, S.A. v. Casa Helvetia, Inc., 982 F.2d 633, 644 n.7 (1st Cir. 1992) (“[T]he appropriate test should not be strictly limited to physical differences. Other sorts of differences—differences in, say, warranty protection or service commitments—may well render products non-identical in the relevant Lanham Trade—Mark Act sense.”); Hokto Kinoko Co. v. Concord Farms, Inc., 810 F. Supp. 2d 1013, 1026 (C.D. Cal. 2011) (finding material differences in warranty, customer support, and labeling information support a high likelihood of confusion).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant produces of electronic smoking vaporizer devices, frequently referred to as electronic cigarettes, and accessories which are distinguished by the JUUL mark.
Complainant is the owner of a portfolio of registered trademarks including the following:
· United States registered trademark JUUL, registration number 4,818,664, registered on September 22, 2015 for goods in international classes 1, 30 and 34;
· United States registered trademark JUUL, registration number 4,898,257, registered on October 2, 2018, for goods in international class 34;
· United State registered trademark JUULSALTS, registration number 5,667,074, registered on January 29, 2-19, for goods in international class 34.
Complainant has an online presence and markets its products inter alia on its primary website at <juul.com> as well as <juulvapor.com> and <juullabs.com>.
The disputed domain name <juulpodofficial.com> was registered on April 2, 2020 and resolves to a website that purports to offer Complainant’s products and competing products for sale.
There is no information available about Complainant except for that provided in the Complaint, the Registrar’s WhoIs and information provided by the Registrar in response to the enquiry from the Forum seeking confirmation details of the registration of the disputed domain name for the purposes of this Complaint. Respondent has availed of a privacy service to conceal its name on the published WhoIs.
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 clear and convincing uncontested evidence of its rights in the JUUL and JUULPOD trademarks established through its ownership its portfolio of trademark registrations described above and the goodwill it has established in the marks through use in its business with more than $1 billion in annual revenue. The goodwill that it has established is global as it markets its products online via its websites hosted at <juul.com> <juulvapor.com> and <juullabs.com>.
The disputed domain name <juulpodofficial.com>, consists of both Complainant’s JUUL and JUULPOD marks in combination with the generic term “official” and the generic Top-Level Domain <.com> extension.
Complainant’s JUUL trademark are the initial, dominant and distinctive element in the disputed domain name. Also, its JUULPOD mark is the initial element and the term “pod” is likely to be taken as a reference to Complainant’s goods.
The term “official” is generic and has no distinguishing characteristic and <juulpodofficial.com> and in the circumstances of the present Complaint, the gTLD <.com> extension would be disregarded under the first element confusing similarity test, as it a standard requirement for registration.
This Panel finds therefore that the disputed domain name is confusingly similar to the trademark in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name alleging
· 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 the mark or a term confusingly similar to the JUUL or JUULPOD marks;
· that Respondent’s use of the JUUL and JUULPOD marks in the disputed domain name is not nominative and could easily have been avoided as it is not necessary to identify Respondent’s website;
· the screenshot of the website to which the disputed domain name resolves that has been exhibited in an annex to the Complaint, shows that Complainant’s JUUL and JUULPOD marks are prominently displayed without permission and the website purports to offer both Complainant’s and competitor’s goods for sale;
· that Respondent is therefore using the disputed domain name to divert Internet users to its misleading website that is designed to capitalize on confusion between the respective parties’ domain names and marks in order to promote and sell competing products which cannot be 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 not discharged the burden. In the 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).
Having reviewed the evidence and submissions, this Panel finds that on the balance of probabilities the disputed domain name was registered in bad faith.
The disputed domain name incorporates two of Complainant’s marks, without any distinguishing content and additionally the element “official” must be taken as an inference that the domain name – and therefore, in context, the website to which it resolves is owned or authorized by Complainant. The inclusion of the element “JUUL” in itself is sufficient to establish a prima facie case that the registrant of the disputed domain name was aware of Complainant but the addition of the element “pod” illustrates that the disputed domain name was registered with Complainant and it’s marks in mind in order to target Complainant and to take predatory advantage of its reputation and the consumer recognition of its JUUL and JUULPOD marks. The fact that the disputed domain name is being used as the address of a website that purports to offer Complainant’s good as well as competing goods confirms this finding.
It is clear from the uncontested evidence that the disputed domain name is being used to misleadingly lure Internet users to Respondent’s website which offers both Complainant’s goods, albeit potentially without the benefit of Complainant’s contractual warranty, but also competing goods.
This Panel 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 mark as to the source, sponsorship ,affiliation, or endorsement of its web site and to offer competing goods while taking advantage of Complainant’s reputation and goodwill.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith.
Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application for transfer of 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 <juulpodofficial.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________
James Bridgeman SC
Panelist
Dated: September 11, 2020
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