JUUL Labs, Inc. v. Law Pui Lam Henry
Claim Number: FA1808001804440
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Alyssa M. Worsham of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Law Pui Lam Henry (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulhk.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 31, 2018; the Forum received payment on August 31, 2018.
On September 4, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <juulhk.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 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 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@juulhk.com. Also on September 5, 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 September 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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 a world leader in the production and sale of vaporizer devices and accessories. Complainant has rights in the JUUL mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,818,664, registered Sep. 22, 2015). Respondent’s <juulhk.com> domain name is confusingly similar to Complainant’s mark because the name wholly incorporates Complainant’s JUUL mark, and is only differentiated by the addition of the geographic term and a generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <juulhk.com> domain name. Respondent is not authorized to use Complainant’s JUUL mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant to sell counterfeit versions of Complainant’s products, or passes off in furtherance of a phishing scheme to steal internet user’s personal and financial information.
Respondent registered and uses the <juulhk.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name’s resolving website where Respondent attempts to disrupt complainant’s business by passing off as Complainant to sell counterfeit versions of Complainant’s products, or passes off in furtherance of a phishing scheme to steal internet users’ personal and financial information. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the JUUL mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <juulhk.com> 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 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 to have rights in the JUUL mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish Complainant’s rights therein under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides a copy of its USPTO registration for the JUUL mark (e.g., Reg. No. 4,818,664, registered Sep. 22, 2015). The Panel fids that Complainant has sufficiently demonstrated its rights in the JUUL mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <juulhk.com> domain name is confusingly similar to Complainant’s mark because the name wholly incorporates the JUUL mark while adding a geographic term and a gTLD. The addition of a geographic term and a gTLD to a complainant’s mark does not sufficiently mitigate any confusing similarity between the resultant domain name from the mark under Policy ¶ 4(a)(i). See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). Here, Respondent’s domain name wholly includes Complainant’s JUUL mark, adds the “hk” geographic term for Hong Kong, and incorporates the “.com” gTLD. The Panel finds that Respondent’s <juulhk.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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 argues that Respondent lacks rights and legitimate interests in the <juulhk.com> domain name because Respondent is not authorized by Complainant to use the JUUL mark. Where a response is lacking, WHOIS information may be used to identify a respondent per Policy ¶ 4(c)(ii). 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 a complainant to use its mark may support a finding that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies Respondent as “Law Pui Lam Henry.” Furthermore, no information of the record indicates that Respondent was authorized to use the Complainant’s JUUL mark. The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further alleges Respondent fails to use the <juulhk.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent attempts to pass itself off as Complainant at the disputed domain name to sell counterfeit versions of Complainant’s products, or to steal internet users’ personal and financial information. Use of a disputed domain name to pass off as a complainant to sell counterfeit products or in furtherance of a phishing scheme does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business); see also Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Here, Complainant provides screenshots of the disputed domain name’s resolving website. The website prominently features Complainant’s JUUL mark, purports to be the only JUUL HK store in Hong Kong, and boasts a large inventory of JUUL products. Complainant argues that this claim is inaccurate, as JUUL products are only offered online from Complainant itself, and therefore, Respondent cannot be a legitimate seller of its goods. The Panel finds from Complainant’s uncontested allegations and evidence that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant claims that Respondent registered and uses the <juulhk.com> in bad faith. Specifically, Complainant argues that Respondent diverts internet users to the disputed domain where Respondent attempts to pass itself off as Complainant to sell counterfeit versions of Complainant’s products, or passes off in furtherance of a phishing scheme to steal internet user’s personal and financial information. Use of a disputed domain name to pass itself off as a complainant to sell counterfeit products or in furtherance of a phishing scheme constitutes bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use per Policy ¶ 4(b)(iv)); see also Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (determining that the respondent’s offering of counterfeit versions of the complainant’s software creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)). Here, Complainant provides screenshots of the disputed domain name’s resolving website. The website prominently features Complainant’s JUUL mark and purports to be the only JUUL HK store in Hong Kong and boasts a large inventory of JUUL products. Complainant alleges that Respondents assertion is not true, and is in support of illegitimate use. The Panel finds this is evidence Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent had actual and constructive knowledge of Complainant’s rights in the JUUL mark prior to registering the <juulhk.com> domain name. Complainant claims that Respondent’s use of the mark in the disputed domain name and on the resolving website indicates Respondent had actual knowledge of the JUUL mark. Complainant further submits that Respondent’s offering of counterfeit products strengthens this inference. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark and registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
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 <juulhk.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: September 28, 2018
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