JUUL Labs, Inc. v. Dave Dawson
Claim Number: FA2001001880805
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Aaron D. Hendelman of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Dave Dawson (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulservice.com>, registered with Realtime Register B.V..
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 January 27, 2020; the Forum received payment on January 27, 2020.
On January 29, 2020, Realtime Register B.V. confirmed by e-mail to the Forum that the <juulservice.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 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@juulservice.com. Also on February 3, 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 February 25, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 by its ownership of the portfolio of trademark registrations described below and the goodwill it claims to have established in the mark by extensive use since 2015.
Complainant claims a substantial goodwill and reputation in the use of the mark on its vaporizer and related products and submits that in 2018 it posted more than $1 billion in revenue in 2018 and controlled approximately 75% of the market share of US e-cigarette sales through sales in convenience stores, other retail outlets, through its primary website hosted at <juul.com> and at other websites to which its domain names <juulvapor.com> and <juullabs.com> resolve, Complainant asserts that its websites had over 2 million unique visitors each month as of September 2019.
Complainant submits that the disputed domain name <juulservice.com> is nearly identical to Complainant’s JUUL mark and is likely to cause consumer confusion arguing that the addition of the term “service” does not limit the risk of confusion between Complainant’s trademark and the disputed domain name and, in fact, may create more risk. See, e.g., JUUL Labs, Inc. v. Munawar Ali, Case No. FA1907001852801 (Forum Aug. 14, 2019) (finding the domain name <juulvapedubai.com> was confusingly similar to the JUUL Mark and noting “[t]he additions of generic and/or geographic words to a complainant’s mark does not negate any confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i)”.)
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent is not known by the name JUUL and asserts that it has not licensed or otherwise permitted Respondent to use the JUUL mark, 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 mark.
Complainant further submits that Respondent has not acquired any trademark rights or legitimate interests in the term JUUL. 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 submits that Respondent’s use of the JUUL mark in the disputed domain name is not nominative. Respondent does not need to make use of the JUUL mark in its own domain name or on its site in order to identify its website more generally and such use could easily be avoided. 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).
Furthermore, Complainant asserts that Respondent has used the disputed domain name to divert Internet users to a misleading website that prominently incorporates the JUUL mark in its domain name address and that such diversion 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 asserts that the disputed domain name was registered after Complainant adopted and began using the JUUL marks and submits that the disputed domain name was registered and is being used in bad faith.
Complainant argues that the registrant of the disputed domain name clearly had actual knowledge of Complainant’s rights at the time of registration and that the disputed domain name was registered to take advantage of the value and goodwill associated with the JUUL mark.
Complainant submits that this is shown by the fact that Respondent uses the disputed domain name to promise unauthorized “free” JUUL products, that Respondent holds itself out as “juulservice”.
Complainant submits that there was no reason to register the disputed domain name other than to exploit the JUUL brand.
Complainant adds that Respondent uses the disputed domain name to lure Internet users to Respondent’s own website that promises unauthorized “free” JUUL products to Internet users who are likely to believe that they have successfully accessed a website originating from or approved by Complainant.
Complainant submits that such 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 Respondent’s use of the disputed domain name to divert and disrupt Internet traffic in itself constitutes bad faith under Policy ¶ 4(b)(iii). See Twitter, Case No. FA1503001607451(“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).”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the JUUL mark which extensively used internationally in its nicotine delivery vaporizers and pods business.
Complainant is the owner of a portfolio of trademark registrations for the JUUL mark in standard and stylized lettering including United States trademark registration number 4,818,664, registered on September 22, 2015 on the Principal Register for goods in international classes 1, 30, and 34
The disputed domain name was registered on March 21, 2019 and resolves to a website purporting to offer Complainant’s products for sale. Complainant has adduced in uncontested evidence a copy of the website to which the disputed domain name resolves which inter alia states “[f]or a limited time we are shipping out FREE JUUL starter kits to anyone who orders within the promotion period just fill out your address and receive our free e-cigarette set within 1week free shipping worldwide.”
There is no information available about Respondent except for that provided in the Complaint, in the Registrar’s WhoIs database and the Registrar’s response to the FORUM’s request for verification of the registration details of the disputed domain name for the purposes of this Complaint proceedings. Respondent’s name and details does not appear on the public WhoIs which notes that that they are “redacted for privacy”.
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 evidence of its rights in the JUUL mark acquired by its abovementioned portfolio of trademark registrations and its use of the mark on its e-cigarette and related products since 2015.
The disputed domain name consists of Complainants JUUL mark in combination with the word “service”. Complainant’s trademark is incorporated in its entirety and is the initial, dominant and only distinctive element of the disputed domain name as the word “service” has no distinguishing character. The gTLD <.com> extension may be ignored for the purposes of comparison in the present case.
This Panel finds therefore that the disputed domain name is confusingly similar to the trademark JUUL 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 an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent, who has used a privacy service to conceal his identity is not commonly known by the disputed domain name or the name JUUL; that Complainant has not licensed or otherwise permitted Respondent to use the JUUL mark, 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 mark; and as Respondent’s use of the JUUL mark in the disputed domain name could easily have been avoided it is not nominative or fair use.
Complainant adds that Respondent’s use of the JUUL mark within the disputed domain name to lure Internet users to a misleading website is not a legitimate, noncommercial or fair use of the disputed domain name.
In such circumstances, the burden of production shifts to Respondent to prove that he has rights or legitimate interests, however Respondent has failed to respond in this proceeding.
While the point has not been addressed by Complainant, and Respondent has failed to respond to the Complaint, it might be argued that the record shows that Respondent’s website purports to present Respondent as a bona fide reseller of Complainant’s goods. Since 2001, the decision in Oki Data Americas, Inc. v. ASD, Inc. Case No. D2001-0903 has provided guidance as to whether a reseller has rights or legitimate interests in a disputed domain name.
In Oki Data the panel decided that to be “bona fide,” the offering must meet several requirement including that the respondent must actually be offering the goods or services at issue, must use the site to sell only the trademarked goods and that the website to which the domain name resolves must accurately disclose the registrant's relationship with the trademark owner and the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In the present Complaint however this Panel is satisfied that the Oki Data defense would not be available to Respondent because, while the website to which the disputed domain name resolves only purports to offer Complainant’s goods, it does not disclose that there is no business relationship between Respondent and Complainant and in fact purports to give the impression that Complainant owns or is associated with Respondent’s website by using Complainant’s trademark, without explanation and display’s the statement with a copyright legend: “ © 2020 JUUL All Rights Reserved.”
As Respondent has failed to discharge the burden of production, this Panel finds 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).
There is no evidence or circumstances on record indicating that the disputed domain name was registered or acquired for any reason other than for the primary purpose of diverting Internet traffic away from Complainant. The disputed domain name is a combination of Complainant’s well-known trademark and a generic element. On the balance of probabilities, the disputed domain name was created and registered to target Complainant’s name, mark, reputation and goodwill in the JUUL mark and to divert Internet users.
The website to which the disputed domain name resolves misleadingly purports to present itself as being owned by, having an association with, or being endorsed by Complainant. This Panel finds therefore that on the balance of probabilities, by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of his web site and a product or service on his web site.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. As Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) it 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 <juulservice.com> domain name be TRANSFERRED from Respondent to Complainant.
_________________________________
James Bridgeman SC
Panelist
Dated: February 26, 2020
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