JUUL Labs, Inc. v. diy / Jasen Lee
Claim Number: FA1906001848348
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Chelsea E. Carbone of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is diy / Jasen Lee (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulkit.com> registered with NameSilo, 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on June 17, 2019; the Forum received payment on June 17, 2019.
On June 18, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <juulkit.com> domain name (the Domain Name) is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 June 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of July 11, 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@juulkit.com. Also on June 21, 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 16, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 uses the JUUL mark in connection with its manufacture and distribution of vaporizer devices and accessories as a smoking alternative for adults. Complainant has rights in the JUUL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,898,257 registered February 9, 2016). Respondent’s Domain Name is identical or confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the generic term “kit.”
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name, nor has Complainant licensed or otherwise permitted Respondent to use the mark. Also, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses it to divert Internet users to the Respondent’s scam website which sells counterfeit or unauthorized versions of Complainant’s products. Respondent also uses the Domain Name to collect personal information of Internet users.
Respondent registered and uses the Domain Name in bad faith. Respondent uses it to pass off as Complainant and to promote or sell counterfeit or unauthorized versions of Complainant’s products. Finally, Respondent had knowledge of Complainant’s rights in the JUUL mark at the time of registration.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 4.3, 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”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The JUUL mark was registered to Complainant with the USPTO (Registration No. 4,898,257) on February 9, 2016. Registration of a mark with the USPTO is sufficient to establish a complainant’s rights in that mark. 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.”). Complainant provides copies of its registrations with the USPTO (e.g. Reg. No. 4,818,664, registered Sep. 22, 2015). See Compl Ex. D. Therefore, the Panel may find Complainant has rights in the JUUL mark under Policy ¶ 4(a)(i).
Respondent’s Domain Name is identical or confusingly similar to Complainant’s mark as it wholly incorporates the mark, merely adding the generic term “kit” and the generic top-level domain (gTLD) “.com.” Adding a generic term and a gTLD to a complainant’s mark is insufficient to differentiate the disputed domain name from the mark for the purposes of Policy ¶ 4(a)(i). 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)). Finally, the WIPO Overview 3.0 at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name, and this establishes its confusing similarity to Complainant’s mark.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the JUUL mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to the respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not commonly known by the Domain Name, (ii) Complainant has not authorized or licensed Respondent to use its marks, (iii) Respondent’s use of the Domain Name is not nominative and can easily be avoided, and (iv) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or other fair use because it diverts Internet users to Respondent’s web site, which sells counterfeit or unauthorized versions of Complainant’s products, and also phishes for sensitive personal and private information from visitors to the site. These allegations are addressed as follows:
The information submitted to the Forum by the registrar lists the registrant of the Domain Name as “diy / Jasen Lee.” Neither of these names bears any resemblance to the Domain Name. UDRP panels have consistently held that, in the absence of evidence to the contrary, a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant states that Respondent is not affiliated or associated in any way with Complainant, and that Complainant has never licensed or authorized Respondent to use its marks. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), 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.”).
Complaint Exhibit G is a screenshot of Complainant’s web site. The top of every other page displays the name “JUULkit.” The site displays numerous photos of different vaporizers and accessories, clearly offering them for sale. Where a brand name for these products is visible, it is uniformly the JUUL name and stylized. No other brands of products are shown on the site. At the bottom of every other page, those which do not display JUULkit at the top, appears the copyright notation “© 2018 JUULkit.com. All rights reserved.” Nowhere on the web site is there any explanation of Respondent’s relationship with Complainant, such as a statement that JUULkit is not Complainant or not affiliated with it. The site also has pages which solicit personal information, such as name, address, email address, and telephone number, from visitors who wish to purchase products offered on the site. It also solicits delivery preferences and payment options.
Complainant argues among other things that, even if Respondent is selling genuine JUUL products, it cannot gain rights or legitimate interests in the Domain Name because Complainant has not authorized it to sell those products. Complainant has specific competence to say that Respondent is not an authorized dealer and the Panel accepts that as true. Nevertheless, it does not accept Complainant’s argument. The “first sale” or “exhaustion” doctrine is well established in trademark law. Once a trademark owner releases its goods into the marketplace, it relinquishes control over their distribution, and any resale, even if “not authorized,” does not constitute trademark infringement; it is permissible under law. Polymer Technology Corp. v. Mimran, 975 F.2d 58, 61-62 (2d Cir. 1992; Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93, 103 (2d Cir. 2010); Original Appalachian Artworks, Inc. v. Granada Electronics, Inc., 816 F.2d 68, 73 (2d Cir. 1987).
Complainant also alleges that Respondent is using the site to sell counterfeit and unauthorized products and to phish for customers’ private information but offers no evidence whatever in support. From the pages shown on Complaint Exhibit G, the site appears in all respects to be a genuine, legitimate source of Complainant’s products, and there is no evidence to the contrary. Complainant’s allegations in this regard are unproven and the Panel does not consider them further.[i]
The rule governing the use of a complainant’s mark for a site that sells a complainant’s product in the secondary market was stated in OkiData Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and has been generally followed since 2001. A respondent’s use of a disputed domain name in the resale of a complainant’s products constitutes a bona fide offering of goods or services in accord with Policy ¶ 4(c)(i) where (i) the respondent actually offers the goods or services at issue, (ii) the respondent uses the site to sell only the trademarked goods, (iii) the site accurately discloses the registrant’s relationship with the trademark owner, and (iv) the respondent does not try to corner the market in all domain names. Inter-Tel, Inc. v. Marcus, FA 727697 (Forum July 27, 2006) (respondent’s use of the disputed domain name in the resale of complainant’s products constitutes a bona fide offering of goods or services in accord with Policy ¶ 4(c)(i) where the respondent actually offered the goods or services at issue, the respondent used the site to sell only the trademarked goods, the site accurately disclosed the registrant’s relationship with the trademark owner, and the respondent did not try to corner the market in all domain names, (which would have thus deprived the trademark owner of reflecting its own mark in a domain name), Project Mgt. Institute v. CMN.com, WIPO Case No. D2013-2035; WIPO Overview 2.0, ¶2.4, ¶2.3, New Kids On The Block v. News American Publg., Inc., 971 F.2d 302 (1992); Toyota Motor Sales, U.S.A., Inc. v. Tabani, 610 F.3d 1171 (2010); General Motors, LLC v. Flashcraft, WIPO Case No. D2011-2117.
In this case, Respondent appears to meet all of the OkiData requirements save one. Its site simply fails to disclose in any meaningful or effective way its relationship (or non-relationship) with Complainant. While it is true that Respondent’s name is displayed clearly at the top of alternating pages, and the copyright notation naming Respondent appears on the others, the Panel finds that this fails to convey enough information for the visitor to recognize that he or she is dealing with a reseller, and not with Complainant or one of its affiliates. Respondent’s use of the Domain Name thus does not qualify as a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i). Respondent’s site is clearly a commercial site and it is therefore not making a legitimate noncommercial use of the Domain Name.
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct;
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s web site or location or of a product of service on respondent’s web site or location.
The evidence of Respondent’s use of the Domain Name discussed above in connection with the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is using the Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site. This fits squarely within the circumstances articulated by Policy ¶ 4(b)(iv) and is clear evidence of bad faith registration and use.
Second, Respondent is using the Domain Name to pass off as Complainant and offer products that are advertised as Complainant’s, in competition with Complainant. This diverts business from Complainant and is thus naturally disruptive of Complainant’s business. It fits within the circumstances articulated by Policy ¶ 4(b)(iii) and is evidence of bad faith registration and use. Capital One Financial Corp. v. Michael Bock, FA1718603 (FORUM March 28, 2017) (finding bad faith registration because “…the disputed domain name and resolving website were designed to pass off as a product of Complainant for the purpose of business competition.”), Dell Inc. v. Prashant Chhibber, FA 1785651 (Forum June 1, 2018) (“Respondent offers support services related to Complainant’s products that are in direct competition with the services Complainant offers. The Panel finds that Respondent registered and used the domain names in bad faith per Policy ¶ 4(b)(iii).”).
Finally, it is evident from the notoriety of Complainant’s JUUL mark, from Respondent’s copying that mark verbatim into the Domain Name, and from Respondent’s web site selling Complainant’s products that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in June 2018 (WHOIS report submitted as Complaint Exhibit A shows registration date). Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <juulkit.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
July 17, 2019
[i] The Panel is more than a little offended by Complainant’s making these serious, derogatory allegations without any evidence to support them.
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