JUUL Labs, Inc. v. Robert Sabagh / Plug Digital
Claim Number: FA2102001932394
Complainant is JUUL Labs, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Robert Sabagh / Plug Digital (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juul2.com>, registered with Google 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 February 17, 2021; the Forum received payment on February 17, 2021.
On February 17, 2021, Google LLC confirmed by e-mail to the Forum that the <juul2.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 February 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 2021 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@juul2.com. Also on February 18, 2021, 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 March 15, 2021, 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.
A. Complainant
Complainant contends as follows:
Complainant is an alternative for adult smokers, and as of 2019, Complainant controls approximately 75% of the US e-cigarette market share.
Complainant has rights in the JUUL mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <juul2.com> domain name is identical or confusingly similar to Complainant’s JUUL mark as it merely adds the numeral “2” and the generic top-level domain (“TLD”) “.com” to Complainant’s mark.
Respondent lacks rights or legitimate interests in the <juul2.com> domain name. Respondent is not commonly known by the JUUL mark, nor has Respondent been authorized by Complainant to use the JUUL mark. Respondent has not used the domain name in connection with a bona fide offering of goods or services as Respondent uses it to pass off as Complainant and promote products that compete with Complainant.
Respondent registered and uses the <juul2.com> domain name in bad faith. Respondent passes off as Complainant and promotes competing products. Respondent had actual knowledge of Complainant’s rights to the JUUL mark prior to registering the at-issue domain name as Respondent’s <juul2.com> website references Complainant while displaying Complainant’s trademark and images of Complainant’s products and packaging. Finally, Respondent registered the <juul2.com> domain name using a WHOIS privacy shield.
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 uses the <juul2.com> domain name to pretend it is associated with Complainant in furtherance of promoting third-party merchandise that directly competes with JUUL products.
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 or identical to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its JUUL trademark as well as other national registrations for its JUUL mark. Any national registration of the JUUL mark is sufficient to demonstrate Complainant’s rights in a 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 <juul2.com> domain name contains Complainant’s JUUL trademark followed by the numeral “2” with all followed by a domain name-necessary top-level name, here “.com”. The slight difference between Respondent’s domain name and Complainant’s trademark is insufficient to distinguish the <juul2.com> domain name from Complainant’s JUUL trademark for the under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <juul2.com> domain name is confusingly similar or identical to Complainant’s trademark. See Am. Online, Inc. v. garybush co uk, FA 360612 (Forum Dec. 22, 2004) (“Respondent’s domain name is confusingly similar to Complainant’s AOL mark because the disputed domain name incorporates the mark with the mere addition of the non-distinctive number ‘0.’ The addition of the number ‘0’ is insufficient to distinguish the domain name from Complainant’s mark.”).
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 “Robert Sabagh / Plug Digital” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <juul2.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <juul2.com> 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).
Additionally, Respondent uses the confusingly similar <juul2.com> to address a website that displays the JUUL logo, is designed to capitalize on confusion, and promotes an online store that offers competing third-party products for sale. Respondent’s use of the confusingly similar domain name in this manner indicates 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 General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
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 <juul2.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present and compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent uses its confusingly similar domain name to misdirect internet users seeking Complainant to Respondent’s <juul2.com> website. There Respondent further exploits the goodwill found in Complainant’s trademark by promoting merchandise from Complainant’s competitors. Using the domain name to feign an affiliation between Complainant and Respondent when there is none so that Respondent may commercially benefit demonstrates Respondent’s bad faith registration and use of the at-issue domain name under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting internet users from Complainant’s website to Respondent’s website where it offered competing printer products).
Furthermore, Respondent registered <juul2.com> knowing that Complainant had trademark rights in the JUUL mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the domain name as discussed elsewhere herein. Thus, Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <juul2.com> 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 <juul2.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 18, 2021
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