JUUL Labs, Inc. v. Constantin Calugher
Claim Number: FA1905001845431
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Alyssa M. Worsham of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Constantin Calugher (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulsite.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 29, 2019; the Forum received payment on May 29, 2019.
On May 30, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <juulsite.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 May 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2019 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@juulsite.com. Also on May 30, 2019, 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 July 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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
Complainant, JUUL Labs, Inc., is a well-known nicotine vaporizer (“e-cigarette”) company. Complainant has rights in the JUUL trademark based upon its extensive use of the mark since April of 2015 and its registration thereof in many countries around the world including the United States as early as September 22, 2015. Respondent’s <juulsite.com> domain name, registered on September 21, 2018, is confusingly similar to Complainant’s JUUL mark, as it is merely a combination of the mark, the .com generic top-level domain (“gTLD”), the generic term “site”.
Respondent has no rights or legitimate interests in the <juulsite.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the JUUL mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain resolves to a webpage where Respondent offers counterfeit or unauthorized versions of Complainant’s products for sale or engages in information gathering from site visitors, perhaps in furtherance of a phishing scheme. Although authentic JUUL products are sold through convenience stores and other retail outlets, they are only offered online through Complainant’s website and the websites of authorized resellers. Respondent is not an authorized online reseller.
Respondent registered and is using the <juulsite.com> domain name in bad faith. Respondent uses the Infringing Domain Name to lure internet users to Respondent’s own webpage that is branded with the JUUL Mark and promises fraudulent or unauthorized products for Respondent’s commercial gain, or perhaps offers no products at all and is merely an information gathering site. Finally, Respondent had actual 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.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 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 extensive multi-national use of the mark as well as its registration of the mark in the United States and elsewhere in the world. Registration of a mark with with USPTO is sufficient to establish rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”) Complainant provides examples of its use of the JUUL mark as well as copies of some of its current United States registrations. Therefore, the Panel finds that the Complainant has rights in the JUUL mark under Policy ¶ 4(a)(i).
Next, Complainant argues that the Respondent’s <juulsite.com> domain name is confusingly similar to the JUUL mark, as it incorporates the mark in its entirety along with a generic term, and a gTLD. The addition of generic terms and gTLDs are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).) Complainant asserts that Respondent’s <juulsite.com> domain name incorporates the JUUL mark in its entirety, the generic term “site”, and the “.com” gTLD. With reference to inclusion of the word “site” in the disputed domain name, this word does nothing to reduce confusion as it is neutral at best and, at worst, relates to the sale of Complainant’s products on a website.
For the above-stated reasons, the Panel finds that the <juulsite.com> domain name is confusingly similar to the JUUL mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to demonstrate that it does have rights or legitimate interests in the domain name. 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 fails to use the <juulsite.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii). The main argument in support of this is that the JUUL branded products offered for sale at the Respondent’s website are either counterfeit or unauthorized. In the case of Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Chunhai Zhang, D2012-0136 (WIPO, April 10, 2012) the Panel addressed the question of what type of evidence might suffice to demonstrate that products offered at the website of a disputed domain name are counterfeit. First, the Panel rejected the notion that, within the context of a UDRP case, hard physical proof of counterfeiting by a “trap” purchase and subsequent product examination is required. Id. However, it also agreed that mere conclusory allegations of counterfeiting, without more, may not be sufficient. Id. Ultimately, the Panel concluded that “[c]ircumstantial, rather than direct, evidence of counterfeiting may well suffice…” and it gave an example such as “branded goods offered for sale at exceptionally low prices…” Id. Another case noted that screenshots of products offered at an accused website which appear to be “of poor quality and different in design and construction from true” branded products may be accepted as evidence of counterfeiting. C. & J. Clark International Limited v. zhu yuan, FA 1486918 (Forum Apr. 22, 2013).
In the present case, the Complaint makes statements such as “The purpose of the site is clearly to sell counterfeit or unauthorized vaporizer products…” and “any promises of JUUL Labs offerings on this website are for unauthorized and potentially counterfeit goods”. Elsewhere the Complainant states that users who attempt to purchase goods from Respondent’s website “may receive counterfeit or otherwise faulty products”. However, no specific evidence is cited nor are arguments asserted to support the conclusion that the goods being offered at the <juulsite.com> website are in fact counterfeit. Furthermore, the Complainant asserts that any goods sold at Respondent’s site must be unauthorized as the only legitimate online source for authentic JUUL products are Complainant’s website or those of authorized dealers. However, the Complaint points out that authentic JUUL products are sold in “convenience stores and other retail outlets”. As such, the Complaint does not address the possibility that the goods offered at Respondent’s site may have been purchased at such shops and then resold through the site. In light of the above, it is not clear to the Panel that the goods offered for sale at the <juulsite.com> website are either counterfeit or unauthorized.
However, use of a disputed domain name to impersonate a complainant may not be considered a bona fide offer of goods and services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Emaar Properties PJSC v. Marguerite Patrie, FA 1635622 (Forum Oct. 22, 2015) (“Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) [where] Respondent’s website also features copyrighted photographs that were, upon information and belief, taken directly from Complainant’s website, and purports to offer hotel reservations for Complainant’s Al Manzil Hotel.”). Here, from the screenshots submitted into evidence, it is obvious to the Panel that the website of the <juulsite.com> domain name is designed and organized so as to impersonate the Complainant and pass itself off as being a legitimate site of the Complainant’s. The website prominently features the same graphic logo for the JUUL mark as used by the Complainant and it displays a large number of professionally produced photographs of both the Complainant’s products and packaging as well as images of people using such products. Finally, the site’s footer displays the notice “© 2019 JUULSite Inc”.
Furthermore, even assuming that the JUUL products offered on the <juulsite.com> website are authentic, Respondent’s use of the domain name does not satisfy the test for a bona fide offering of goods or services by resellers as set out in the seminal case of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO, November 6, 2001). Respondent’s website appears to offer third-party products that are “compatible with JUUL” and it contains no mention or other indication of its lack of a relationship with the Complainant. As noted above, the site’s graphics and footer do quite the opposite – they convey the false impression that Respondent is, in fact, the Complainant.
Under the circumstances, the Panel finds that Respondent fails to use the <juulsite.com> 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 further argues that Respondent lacks rights and legitimate interests in the <juulsite.com> domain name because Respondent is not authorized or permitted to use Complainant’s JUUL mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from the complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”) The WHOIS record for the <juulsite.com> domain name identifies the Respondent’s name as “Constantin Calugher” and no information in the record shows that Respondent is legitimately known otherwise or was authorized to use Complainant’s mark in any way. Thus, in the absence of any response or other submission from the Respondent, the Panel finds that Respondent lacks rights and legitimate interests in the <juulsite.com> domain name under Policy ¶ 4(c)(ii).
In light of the evidence presented and in the absence of any response, evidence, or other submission by the Respondent, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
It is asserted that the Respondent had actual knowledge of the Complainant’s rights in the JUUL trademark prior to Respondent’s registration of the <juulsite.com> domain name based on the Complainant’s extensive and multi-national use of the mark and on the content of Respondent’s website. Actual knowledge of a complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”) Here, Complainant provides screenshots of the <juulsite.com> website which show Respondent displaying the JUUL mark and logo as well as sales listings for JUUL branded e-cigarette products. Therefore, the Panel concludes that the Respondent had actual knowledge of Complainant’s rights in the JUUL mark prior to registration of the disputed domain name, thereby laying the foundation for a finding of bad faith under Policy ¶ 4(a)(iii).
Next, Complainant claims that Respondent registered and uses the <juulsite.com> domain name in bad faith in that Respondent lures internet users to its website that is branded with the JUUL Mark and promises counterfeit or unauthorized products. Screenshots of Respondent’s website are provided showing extensive use of the Complainant’s JUUL logo and images of its products. Complainant further claims that “[i]f 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” and that this may be monetized for phishing purposes. While the Panel notes that Complainant has submitted into evidence a screenshot of a page at Respondent’s site titled “Your Cart (1 Item)”, the submitted evidence does not include a cart page in which users are asked for personal information. However, other page screenshots in evidence show a field titled “Subscribe to our newsletter” at which users are invited to input their email addresses. In light of the evidence submitted, and for the reasons stated above, the Panel declines to conclude that counterfeit or unauthorized products are being offered at Respondent’s website. Similarly, without any supporting evidence or argument, it cannot be concluded that the email submission element of the website is used merely to harvest user information for phishing purposes.
Nevertheless, by copying Complainant’s well-known JUUL logo and using copied product and marketing photos and other indicia such as a copyright notice that contains the JUUL mark, Respondent intentionally uses its <juulsite.com> domain name to create a likelihood of confusion with such mark for the purpose of attracting customers to its website at which both JUUL and third-party products appear to be offered for sale. This activity supports a finding of bad faith under Policy ¶ 4(b)(iv). See, American Cheerleader Media, LLC. v. ilir shoshi / cheer, FA 1592319 (Forum Jan. 20, 2015) (“The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as … Respondent utilizes a logo and stylized font identical to Complainant’s own, as well as Complainant’s copyrighted images and text in an attempt to pass itself off as Complainant.”)
With no opposing evidence or other submission before it, the Panel finds it reasonable to conclude that the Respondent registered and uses the <juulsite.com> domain name to impersonate the Complainant. It is thus used for commercial gain based upon confusion with the JUUL mark in bad faith under Policy ¶ 4(b)(iv) and, thus, ¶ 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 <juulsite.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: July 16, 2019
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