JUUL Labs, Inc. v. Hasrat Shaikh
Claim Number: FA2103001937299
Complainant is JUUL Labs, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Hasrat Shaikh (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juul-vape-uae.com>, registered with GoDaddy.com, 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 March 19, 2021; the Forum received payment on March 19, 2021.
On March 22, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <juul-vape-uae.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 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@juul-vape-uae.com. Also on March 25, 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 April 20, 2021, 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 mark acquired through its portfolio of trademark registrations described below and extensive use of the mark on its vaporizers and related products since 2015.
Complainant submits that based on Nielsen retail monthly sales data for vapor devices, Complainant sold 16.2 million devices and posted more than $1 billion in revenue in 2018. As of 2020, Complainant had more than 50% of the US e-cigarette market share and a market presence in more than a dozen countries.
Complainant alleges that the disputed domain name <juul-vape-uae.com> is confusingly similar to its JUUL mark as it comprises Complainant’s JUUL registered trademark in its entirety, adding only the generic term “vape,” which is short for “vapor” and closely associated with Complainant’s business, two hyphens, the geographic term “uae”, and the generic Top Level Domain (“gTLD”) .com extension.
Complainant submits that the generic elements do not sufficiently distinguish the disputed domain name for purposes of the Policy. Citing Hewlett-Packard Dev. Co. L.P. v. Surya Tech., FA0708001059665 (Forum Oct. 2, 2007) (“addition of a term that relates to the business in which Complainant engages and the addition of the gTLD are not sufficient to differentiate a domain name from a known mark”).
Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not identified by the disputed domain name in the WHOIS.
Complainant asserts that Respondent is not affiliated with Complainant in any way adding in particular that Respondent is not licensed by Complainant to use Complainant’s trademarks, nor is Respondent an authorized vendor, supplier, or distributor of Complainant’s goods and services.
Referring to screen captures of the website to which the disputed domain name resolves which have been annexed to the Complaint, which is an online shop offering vaporizer products. Complainant’s mark and logo are prominently displayed on the website which offers both Complainant’s and third party products for sale.
Complainant alleges that Respondent has therefore used the disputed domain name to divert Internet users to his misleading website that adopts the Complainant’s JUUL marks and an imitation of the JUUL Logo for his own brand identity and further alleges that such use is designed to capitalize on confusion to promote Respondent’s competing online store offering competing third-party vaporizer products.
Complainant alleges that such use is calculated and likely to confuse and mislead the public as to the source of Respondent’s website and services. This constitutes passing off and is not a fair, nominative, or otherwise legitimate use. See Microsoft Corp. v. lijiuliang, FA0912001300266 (Forum Feb. 11, 2010) (“Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website … is not a bona fide offering or of goods services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
The use of a domain name confusingly similar to Complainant’s JUUL marks to promote a competing online store and competing third-party products is also not a legitimate use. See Amazon Technologies, Inc. v. Lin, FA1301001480702 (Forum Feb. 26, 2013) (“Respondent’s use of the disputed domain name to offer competing goods or services is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”).
Complainant adds that the disputed domain name is being used in bad faith even if actual JUUL products are also available on Respondent’s website. See e.g., Experian Information Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (“Even if Respondent were legally selling Complainant’s products, it would not have the right to use Complainant’s trademark in the domain name to sell products of Complainant’s competitors, especially using a domain name that suggests that Complainant is the source of these [offerings]...”).
Complainant further alleges that Respondent registered the disputed domain name in bad faith alleging that Respondent knew about the JUUL marks when registering the disputed domain name because, Respondent specifically refers to Complainant and displays an imitation of the JUUL logo and images of Complainant’s products and packaging at the resolving website.
Complainant adds that since Respondent is in the vaporizer business and he could not have been unaware of Complainant’s famous vaporizer brand.
As additional evidence of Respondent’s state of knowledge, Complainant adds that Respondent was previously found to have acted in bad faith in JUUL Labs, Inc. v. Farooq Ahmed / Juul UAE, FA2101001930181 (Forum Mar. 1, 2021) (finding <juulvape-dubai.com> confusingly similar to JUUL). Although WHOIS does not identify the same nominal registrant for the disputed domain name, the disputed domain name is clearly owned by the same individual or entity since the landing page for the disputed domain name mentions <juulvape-dubai.com>, which was the subject of the prior adverse decision, in both the page title and the disclaimer.
Complainant adds that the landing page for <juulvape-dubai.com> was also substantially identical to the landing page for the disputed domain name, including an identical logo. Also, Respondent registered the disputed domain name less than a week after receiving the prior adverse decision. This pattern of behavior evidences further bad faith under the Policy. Citing. Provide Commerce, Inc. v. Jardimar Holdings Corp / Charingola, FA1305001502077 (Forum June 27, 2013) (“the existence of previous UDRP decisions where Respondent was found to have registered a domain name in bad faith reveals Respondent’s pattern of cybersquatting behavior”).
It is contended that the registration of the disputed domain name with actual knowledge of Complainant’s rights is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (“[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse”).
Complainant further alleges that Respondent is using the disputed domain name in bad faith arguing that by incorporating Complainant’s JUUL marks into the disputed domain name and adopting a confusingly similar name and logo as its sole brand and identity, Respondent creates the false impression that its website originates with or is endorsed or certified by Complainant. It is contended that this is precisely the sort of conduct that falls under Policy ¶ 4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names. Citing MetroPCS, Inc. v. Robertson, FA0609000809749 (Forum Nov. 13, 2006) (finding bad faith where the respondent’s web site gave the false impression of being affiliated with the complainant).
By promoting Respondent’s online store and competing vaporizer brands using a domain name and trade name confusingly similar to Complainant’s JUUL mark, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s marks, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Citing V Secret Catalogue, Inc. v. Bryant Little, FA0407000301728 (Forum Sept. 2, 2004) (“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”).
Complainant adds that it has its own online store offering its vaporizer products and contends that Respondent’s use of the disputed domain name to promote alternative online store and competing vaporizer brands also potentially diverts and disrupts Complainant’s business and this falls under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA0608000768859 (Forum Sept. 21, 2006) (use of disputed domain name to operate a competing website constitutes bad faith according to Policy ¶ 4(b)(iii)).
Complainant adds that such use of the disputed domain name to promote competing products constitutes bad faith even if actual JUUL products are also available. Citing Intex Recreation Corp. v. RBT, Inc., Weinstein, D2010-0119 (WIPO March 3, 2010) (ordering transfer where the respondent was offering both the complainant’s goods as well as those of competitors and stating “The Respondent argues that there was no intent to mislead consumers, because the content of the website associated with the Domain Name clearly identified products by manufacturer. But this does not change the fact that the Domain Name itself misleadingly suggests an affiliation with the Complainant and then leads the consumer to competing products sold by or through the Respondent. This abuse of the Complainant’s trademark for commercial gain fits the illustration of bad faith...”).
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:
· 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 States registered trademark JUUL (device), registration number 6,064,902, registered on the Principal Register on May 2020 for goods in international classes 9 and 16;
· United States registered trademark JUUL, registration number 6,211,614, registered on the Principal Register on December 1, 2020 for goods in international class 9
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 was registered on March 6, 2021 and resolves to a website that purports to offer Complainant’s goods and competing goods.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar to the Forum in response to the request for verification of the registration details of the disputed domain name in the course of this proceeding.
The Registrar confirmed that Respondent, whose name had been redacted on the published WhoIs is the registrant of the disputed domain name.
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, convincing and uncontested evidence of its rights in the JUUL mark acquired through its portfolio of trademark registrations described below and extensive international use of the mark on its vaporizers and related products since 2015, growing to have an annual revenue of over $1 billion in 2018.
The disputed domain name is composed of Complainant’s JUUL trademark in its entirety, in combination with the terms “vape,” “uae”, two hyphens and the TLD <.com> extension.
The term “vape” is generic and closely associated with Complainant’s business, “ UAE” is a geographic term. Neither adds any distinctive character to the disputed domain name.
Nor is there any distinctive character provided by the two hyphens, of the generic TLD extension <.com>.
This Panel finds therefore that the disputed domain name is confusingly similar to the JUUL mark in which Complainant has rights. Complainant has therefore 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 arguing that
· Respondent is not identified by the disputed domain name in the WHOIS;
· Respondent is not affiliated with Complainant in any way and in particular Respondent is not licensed by Complainant to use Complainant’s trademarks, nor is Respondent an authorized vendor, supplier, or distributor of Complainant’s goods and services;
· screen captures of the website to which the disputed domain name resolves which have been annexed to the Complaint, show that Respondent has used the disputed domain name to divert Internet users to his misleading website that adopts the Complainant’s JUUL marks and an imitation of the JUUL Logo for his own brand identity and is designed to capitalize on confusion to promote Respondent’s competing online store offering competing third-party vaporizer products;
· Respondent’s use of the disputed domain name is calculated and likely to confuse and mislead the public as to the source of Respondent’s website and services which constitutes passing off and is not a fair, nominative, or otherwise legitimate use of the disputed domain name;
· Respondent’s use of the disputed domain name to promote Respondent’s competing online store offering competing third-party products is also not a legitimate use of the disputed domain name;
· even if actual JUUL products are also available on Respondent’s website, Respondent’s use of Complainant’s JUUL mark in the disputed domain name is not a bona fide or legitimate use.
It is well established that if Complainant makes out a prima facie case, that Respondent has no rights or legitimate interests in the disputed domain name the burden of production shifts to Respondent to prove that he has such rights or legitimate interests
Respondent has failed to discharge the burden of production and therefore Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name itself is a combination of Complainant’s distinctive JUUL mark, a reference to Complainant’s vaporizer products and an implied association with a market for those goods in the UAE.
It is significant that the disputed domain name was registered within days of the decision in favor of Complainant in JUUL Labs, Inc. v. Farooq Ahmed / Juul UAE, FA2101001930181 (Forum Mar. 1, 2021) (finding <juulvape-dubai.com> confusingly similar to JUUL). and the website to which the disputed domain name resolves mentions <juulvape-dubai.com>, which was the subject of said prior adverse decision.
Taken together these factors show that the registrant of the disputed domain name was, on the balance of probabilities, actually aware of Complainant, its name, mark, reputation and JUUL branded products when the disputed domain name was chosen and registered and that the disputed domain name was registered in bad faith with Complainant’s mark in mind in order to take predatory advantage of Complainant’s goodwill and reputation.
The disputed domain name, which is confusingly similar to Complainant’s JUUL mark, is being used by Respondent as an address of a website on which Respondent has established his online shop that purports to offer Complainant’s and third-party vaporizer products. Complainant’s JUUL mark and logo are prominently displayed along with images of Complainant’s products and packaging.
These factors alone allow this Panel to find that the disputed domain name was registered in bad faith because the address of Respondent’s website creates at least an initial false impression that there is false impression that its website originates with or is endorsed or certified by Complainant, thereby using Complainant’s mark to disrupt Complainant’s business.
In addition, by using the disputed domain name as his website address, Respondent is seeking to commercially benefit, unfairly, opportunistically, and in bad faith from the goodwill associated with Complainant’s mark.
Because Respondent is offering competing vaporizer brands on his website, such use of the disputed domain name constitutes bad faith even if actual JUUL products are also available.
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 element of the test in Policy ¶ 4(a)(iii) and is entitled to be granted the relief requested.
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-vape-uae.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: April 21, 2021
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