JUUL Labs, Inc. v. Somi Ko / Kosomi Soft
Claim Number: FA1805001786532
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Alyssa M. Worsham of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Somi Ko / Kosomi Soft (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulkorea.com>, registered with Name.com, Inc.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 14, 2018; the Forum received payment on May 14, 2018.
On May 16, 2018, Name.com, Inc. confirmed by e-mail to the Forum that the <juulkorea.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 May 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 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@juulkorea.com. Also on May 17, 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 June 14, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, JUUL Labs, Inc., has been using the JUUL mark in connection with its vaporizer business since 2015. 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 Sep. 22, 2015). See Compl. Ex. D. Respondent’s <juulkorea.com> domain name is confusingly similar to Complainants JUUL mark because it contains the mark in its entirety, adds a geographic term, and adds the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the <juulkorea.com> domain name because Respondent is not commonly known by the domain name nor has Complainant authorized Respondent to use the JUUL mark in any way. Respondent has failed to use the mark in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the domain name to host a website that appears to be affiliated with the Complainant in order to sell counterfeit goods.
iii) Respondent registered and is using the <juulkorea.com> domain name in bad faith. Respondent uses the disputed domain name to divert Internet users and create a faulty association with Complainant in order to sell counterfeit products. Respondent had actual knowledge of Complainant’s rights in the JUUL mark prior to Respondent’s registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes through ‘Other Correspondence’ that there was Respondent’s request for the extension of time to Respond to which the Forum notified Respondent of the fact that Respondent’s request for an extension was untimely received on 6/12/2018 and was without payment -- as such it would be rejected. Respondent informed the Forum that it requested for the extension of time on June 11 in L.A. time. The Panel notes that the applicable time in the proceedings should be the one of the location of the Forum. Furthermore, Respondent’s request for the extension of time was without payment. As such, the Panel agrees with the Forum’s rejection of the request for the extension of time.
Respondent argues in an unofficial correspondence to the Forum that as a JUUL enthusiast, it had no intention of infringing the disputed domain name, nor sold any JUUL counterfeit product. It has dedicated its time into making a site in Korean, to inform the smokers in South Korea how excellent JUUL is. During its effort, it seems that there may have been misconceptions caused to the JUUL labs Incorporated. It would be willing to negotiate in a manner that does not violate the ICANN UDRP policy, as its intention of this website is not caused in bad faith.
1. Respondent registered the disputed domain name on November 10, 2017.
2. Complainant has established rights in the JUUL mark through the USPTO registration (e.g. Reg. No. 4,818,664, registered Sep. 22, 2015).
3. The disputed domain name’s resolving webpage displays advertisement of multiple counterfeit JUUL products for sale.
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 claims rights in the JUUL mark based upon registration with the USPTO. Registration with the USPTO is sufficient to establish complainant’s rights in a mark pursuant to Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides a copy of the USPTO registration for the JUUL mark (e.g. Reg. No. 4,818,664, registered Sep. 22, 2015). See Compl. Ex. D. Therefore, the Panel finds that the Complainant established its’ rights in the mark per Policy ¶ 4(a)(i).
Next, Complainant alleges that Respondent’s <juulkorea.com> domain name is confusingly similar to Complainant’s JUUL mark because it contains the mark in its entirety, adds a geographic term, and adds a gTLD. Additions of a geographic term and/or a gTLD are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Here, Complainant argues that Respondent’s domain name contains the JUUL mark in its entirety, adds the geographic term “Korea,” and adds the “.com” gTLD. Therefore, the Panel finds that Respondent’s <juulkorea.com> domain name is confusingly similar to Complainant’s JUUL mark under a Policy ¶ 4(a)(i) analysis.
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”).
Complainant alleges that Respondent lacks rights and legitimate interests in the <juulkorea.com> domain name because Respondent is not commonly known by the domain name nor has Complainant authorized Respondent to use the JUUL mark in any fashion. Where a response is lacking WHOIS information may be used to identify a respondent. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its’ mark may support a finding that a respondent is not commonly known by a 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). Here, Complainant provides the WHOIS information which identifies the respondent as “Somi Ko.” See Compl. Ex. A. Additionally, Complainant argues that they have not authorized or licensed the Respondent to use the JUUL mark in any way. Therefore, the Panel finds that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to use the <juulkorea.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant alleges that Respondent attempts to divert users to a scam webpage to sell counterfeit products. Use of a domain name to divert users to a scam website which offers counterfeit products may not be considered a bona fide offering of goods and services under Policy ¶ 4(c)(i) and (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.”). Here, Complainant provides screen shots of the disputed domain name’s resolving webpage where multiple counterfeit JUUL products are advertised for sale. See Compl. Ex. H. Therefore, the Panel finds that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services under a Policy ¶ 4(c)(i) and (iii) analysis.
Next, Complainant argues that Respondent fails to use the <juulkorea.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Explicitly, Complainant alleges that Respondent uses the website to pass off as Complainant to sell counterfeit products. Use of a domain name to confuse Internet users as to the source, sponsorship, affiliation, or endorsement of the scam website may not be considered a noncommercial or fair use under Policy ¶ 4(c)(i) and (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Complainant provides screen shots which show the Respondent using the JUUL mark on the resulting webpage of the disputed domain name as well as an Instagram account. See Compl. Ex. H and I. Therefore, the Panel finds that the Respondent failed to use the disputed domain name in connection with a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. The Panel notes that Respondent is asserting in its unofficial correspondence to the Forum that it has dedicated its time into making a site in Korean, to inform the smokers in South Korea how excellent JUUL is. However, this assertion has not accompanied any supporting evidence while Complainant provides screenshots which show the disputed domain name’s resolving web pages offering counterfeit JUUL products for sale. See Compl. Ex. H. Furthermore, as Respondent has not filed a Response to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and is using the <juulkorea.com> domain name in bad faith. Specifically, Complainant alleges that Respondent is using the disputed domain name to divert Internet users to Respondent’s webpage in an attempt to sell fraudulent products. Use of a domain name to disrupt a complainant’s business to sell respondent’s counterfeit goods may be evidence of bad faith under Policy ¶ 4(b)(iii). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”). Here, Complainant alleges through screenshots that Respondent is using the domain name to sell counterfeit products that are almost identical to those offered by Complainant. See Compl. Ex. H. Accordingly, the Panel finds that the Respondent registered and is using the <juulkorea.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Next, Complainant argues that Respondent registered and is using the disputed domain name in bad faith. Explicitly, Complainant alleges that Respondent is using the resolving webpage to sell counterfeit products for commercial gain. Use of a domain name to sell respondent’s fraudulent products in order to commercially gain may support a finding of bad faith under Policy ¶ 4(b)(iv). See 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). Complainant provides screenshots which show the disputed domain name’s resolving web pages offering counterfeit JUUL products for sale. See Compl. Ex. H. Therefore, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith according to Policy ¶ 4(b)(iv).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the <juulkorea.com> domain name. Specifically, Complainant alleges that Respondent had actual knowledge due to the use of the JUUL mark in the domain name. The inclusion of a complainant’s mark in a domain name in order to take advantage of the value and goodwill associated with complainant’s mark may be sufficient to support a finding that respondent had knowledge of complainant’s rights in the mark according to Policy ¶ 4(a)(iii). See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”). Here, Complainant asserts that Respondent’s domain name incorporates the entire JUUL mark. Therefore, the Panel infers due the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in the JUUL mark prior to Respondent’s registration of the <juulkorea.com> domain name according to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juulkorea.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 18, 2018
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