JUUL Labs, Inc. v. Harry L. Werner
Claim Number: FA2001001880938
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Aaron D. Hendelman of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Harry L. Werner (“Respondent”), Kansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <realjuulpods.com>, registered with Porkbun 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 28, 2020; the Forum received payment on January 28, 2020.
On January 28, 2020, Porkbun LLC confirmed by e-mail to the Forum that the <realjuulpods.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 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@realjuulpods.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 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 has 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). Complainant also claims common law rights in the JUULPODS mark. Respondent’s <realjuulpods.com> domain name is confusingly similar to Complainant’s JUUL and JUULPODS marks as it incorporates the mark in its entirety, merely adding the generic term “real”.
Respondent does not have rights or legitimate interests in the <realjuulpods.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 disrupts Complainant’s business by attempting to sell competing products. Further, Respondent attempts to phish for Internet users’ personal information through a fake “Contact Us” webpage.
Respondent registered and uses the <realjuulpods.com> domain name in bad faith. Respondent uses the disputed domain name to sell unauthorized JUUL products and promote products from competitors. Finally, Respondent had actual knowledge of Complainant’s JUUL mark prior to registering the <realjuulpods.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is JUUL Labs, Inc. (“Complainant”), of San Francisco, CA, USA. Complainant is the owner of domestic and international registrations for the mark JUUL and related marks, which it has continuously used since at least as early as 2015, in connection with its sale of vaporizer devices and accessories.
Respondent is Harry L. Werner (“Respondent”), of Wichita KS, USA. Respondent’s registrar’s address is listed as Portland, OR, USA. The Panel notes that the <realjuulpods.com> domain name was registered on or about December 23, 2019.
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 claims rights in the JUUL mark based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). 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). Complainant provides copies of its’ USPTO registrations for the JUUL mark (e.g., Reg. No. 4,818,664, registered on Sep. 22, 2015). The Panel here finds that Complainant has rights in the JUUL mark per Policy ¶ 4(a)(i).
Since Complainant has not yet filed a registration for the JUULPODS mark, Complainant’s claims common law rights in the JUULPODS mark for the purposes of Policy ¶ 4(a)(i). Common law rights are typically found through a showing that a secondary meaning in the mark has been created in the minds of the public. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Complainant claims its JUUL-branded website enjoys significant web traffic, with over 2 million unique visitors each month as of September 2019. Traditionally, a secondary meaning is also established by evidence of a complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to the complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant points to positive media recognition and claims its branded vaporizers and pods have been growing in popularity. Based on Nielsen retail sales data, JUUL generated more than $1 million in monthly retail sales in January 2016 and this figure rapidly increased to $77 million in retail sales for February 2018. Complainant posted more than $1 billion in revenue in 2018. As of the end of 2018, Complainant controlled approximately 75% of the US e-cigarette market share. The Panel notes that while Complainant’s figures are exemplary of those typically supporting showings of secondary meaning, normally one wants to see the data tied in more directly with the specific mark/product in question as opposed to the mark representing the company overall. However, in the instant case the panel finds Complainant’s contentions to be generally sufficient, and thus finds that Complainant has established common law rights by showing the JUULPODS mark has taken on a secondary meaning in association with Complainant’s business.
Complainant next claims that Respondent’s <realjuulpods.com> domain name is confusingly similar to Complainant’s JUUL and JUULPODS marks as Respondent merely adds a generic term to the mark. The addition of a generic term to complainant’s mark does not negate any confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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.). Additionally, the Panel notes the addition of a gTLD is irrelevant in determining whether or not a disputed domain name is confusingly similar to a mark. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant argues Respondent merely adds the term “real” to the JUULPODS mark. Furthermore, Respondent’s adds the “.com” gTLD to the mark which is irrelevant under Policy ¶ 4(a)(i). The Panel here finds that the <realjuulpods.com> domain name does not contain changes that sufficiently distinguish it from the JUUL and JUULPODS marks per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues Respondent has no rights or legitimate interests in the <realjuulpods.com> domain name. Specifically, Complainant argues Respondent is not licensed or authorized to use the JUUL marks and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name 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.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by 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). The WHOIS information of record identifies Respondent as “Harry L. Werner,” and there is no other evidence to suggest Respondent was authorized to use the JUUL marks. The Panel here finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant alleges Respondent fails to make a bona fide offering or goods or services or legitimate noncommercial or fair use because Respondent attempts to disrupt Complainant’s business by diverting internet users to a scam website where it sells unauthorized products. Use of a domain name to disrupt complainant’s business in order to sell unauthorized products may be 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 JUUL Labs, Inc. v. Nicholas Maes, Case No. FA1907001851377 (Forum Aug. 15, 2019) (“Using a disputed domain name to sell either counterfeit or unauthorized versions of a complainant’s products may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use…”). Here, Complainant contends Respondent's website prominently displays the JUUL trademark along with photographs of Complainant’s related products in an attempt to sell unauthorized products and products of Complainant’s competitors. The Panel here finds that Respondent’s unauthorized attempts to sell Complainant’s goods does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and is using the <realjuulpods.com> domain name in bad faith by disrupting Complainant’s business and diverting users to the disputed domain name which sells unauthorized products. Disrupting a complainant’s business and diverting users to a disputed domain name which sells unauthorized goods may evince bad faith per Policy ¶¶ 4(b)(iii) and (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 unauthorized or counterfeit products.) Here, Complainant contends that Respondent is using the JUUL mark on the resolving webpage to sell unauthorized products of Complainant and its’ competitors. Furthermore, by using the <realjuulpods.com> domain name along with photographs of Complainant’s products, Respondent attempts to profit by creating a likelihood of confusion with Complainant’s JUUL mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site and products offered through the disputed domain name’s resolving website. The Panel here finds Respondent attempts to disrupt Complainant’s business and commercially benefit from Complainant’s mark support a finding of bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant lastly argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. A respondent who registers an infringing domain name with knowledge of complainant’s mark may be acting in bad faith under Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Complainant asserts given the global reach of the Internet and the fact that Respondent's website displays the JUUL mark alongside unauthorized electronic cigarette products, Respondent must have been aware of Complainant and its JUUL mark prior to registering the disputed domain name. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the JUUL mark prior to registering the <realjuulpods.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <realjuulpods.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 10, 2020
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