JUUL Labs, Inc. v. Andrew McManus
Claim Number: FA1809001808640
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Alyssa M. Worsham of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Andrew McManus (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mexicojuul.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 24, 2018; the Forum received payment on September 24, 2018.
On September 24, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mexicojuul.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 September 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 2018 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@mexicojuul.com. Also on September 26, 2018, 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 October 19, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 an electronic cigarette company. Complainant uses the JUUL mark to provide and market its products and services. Complainant claims rights in the JUUL mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,818,664, registered on Sep. 22, 2015). Respondent’s <mexicojuul.com> domain name is confusingly similar to Complainant’s JUUL mark as it incorporates the mark in its entirety, merely adding the geographic term “Mexico” and the generic top level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <mexicojuul.com> domain name. Respondent is not permitted or licensed to use Complainant’s JUUL mark and is not commonly known by the disputed domain name. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <mexicojuul.com> domain name to divert Internet users to a scam website that sells Complainant’s counterfeit products and phishes for Complainant’s customers’ personal information.
Respondent registered and uses the <mexicojuul.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Additionally, Respondent used a privacy service to conceal its identity. Finally, Respondent had actual knowledge or constructive notice of Complainant’s JUUL mark prior to registering the <mexicojuul.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, JUUL Labs, Inc., is an electronic cigarette company. Complainant uses the JUUL mark to provide and market its products and services. Complainant has rights in the JUUL mark based upon registration with the USPTO) (e.g., Reg. No. 4,818,664, registered on Sep. 22, 2015). Respondent’s <mexicojuul.com> domain name is confusingly similar to Complainant’s JUUL mark.
Respondent created the <mexicojuul.com> domain name on September 5, 2018.
Respondent does not have rights or legitimate interests in the <mexicojuul.com> domain name. Respondent’s website prominently displays the JUUL marks and JUUL-branded products and offers these products for sale through the website. Text on the homepage of the site reads “JUUL MEX.” Visitors to the site seeking JUUL products are led to believe that Respondent is an authorized seller of JUUL products in Mexico, and it is not. If a visitor places a JUUL-branded product in their shopping cart they are taken to a page where they are asked for their personal information. Respondent is using the site to sell counterfeit or unauthorized JUUL products or is instead operating an illegal phishing scam to collect personal information for some other reason.
Respondent registered and uses the <mexicojuul.com> domain name 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the JUUL mark under Policy ¶ 4(a)(i) based upon its registration with the USPTO. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <mexicojuul.com> domain name is confusingly similar to the JUUL mark as it contains the mark in its entirety, and adds the geographic term “Mexico” as well as the gTLD “.com”.
Respondent has no rights or legitimate interests in the <mexicojuul.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent is not authorized to use Complainant’s mark. A privacy service was used by Respondent but was lifted for this proceeding, listing “Andrew McManus” as the registrant of the disputed domain name. Where a response is lacking, the WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. 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).
Respondent fails to make a bona fide offering or goods or services or legitimate noncommercial or fair use. Respondent uses the <mexicojuul.com> domain name to either sell counterfeit products or phish for Complainant’s users’ personal information. Sale of counterfeit products or phishing for a complainant’s customers personal information is evidence that a respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”); see also Virtu Financial Operating, LLC v. Lester Lomax, FA1409001580464 (Forum Nov. 14, 2014) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the respondent was using the disputed domain name to phish for Internet users personal information by offering a fake job posting on the resolving website). Here, Respondent's website prominently displays the JUUL trademark along with photographs of Complainant’s related products either to sell or scam Complainant’s customers into entering their personal information.
Respondent registered and is using the <mexicojuul.com> domain name in bad faith by disrupting Complainant’s business and diverting users to the disputed domain name to sells counterfeit products or phish for personal information. Disrupting a complainant’s business and diverting users to a disputed domain name which sells counterfeit goods is evidence of bad faith per Policy ¶¶ 4(b)(iii) and/or (iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products.
Respondent registered the <mexicojuul.com> domain name with actual knowledge of Complainant’s JUUL mark. Therefore, Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii) . See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mexicojuul.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 31, 2018
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