JUUL Labs, Inc. v. Nicholas Maes
Claim Number: FA1907001851377
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Chelsea E. Carbone of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is nicholas maes (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thailandjuul.com>, registered with NameCheap, 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 9, 2019; the Forum received payment on July 9, 2019.
On July 10, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <thailandjuul.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 July 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 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@thailandjuul.com. Also on July 11, 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 August 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 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”) (e.g. Reg. No. 4,818,664, registered Sep. 22, 2015). Respondent’s <thailandjuul.com> domain name is identical or confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the geographic term “Thailand.”
Respondent has no rights or legitimate interests in the <thailandjuul.com> domain name. Respondent is not known by the disputed domain name, nor has Complainant licensed or otherwise permitted Respondent to use the mark. 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 the disputed domain name to divert Internet users to the Respondent’s scam website which sells counterfeit or unauthorized versions of Complainant’s products. Respondent uses the disputed domain name to collect personal information of Internet users.
Respondent registered and uses the <thailandjuul.com> domain name in bad faith. Respondent uses the disputed domain name to divert Internet traffic and disrupt Complainant’s business. Respondent uses the disputed domain name to pass off as Complainant by displaying the JUUL mark and branding and offer for sale of fraudulent products. Respondent uses the disputed domain name in furtherance of phishing by requesting email addresses from Internet users who visit the disputed domain name. Finally, Respondent had knowledge of Complainant’s rights in the JUUL mark at the time of registration of the disputed domain name.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. The Panel notes that Respondent registered the <thailandjuul.com> domain name on November 9, 2018.
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”).
PRELIMINARY ISSUE: CONSENT TO TRANSFER
The Forum was sent an informal communication from Respondent. In this email, Respondent purports to consent to the transfer of the <thailandjuul.com> domain name.
Respondent consents to transfer of the <thailandjuul.com> domain name to Complainant. However, after the initiation of this proceeding, NameCheap, Inc. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending.
Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. This “consent-to-transfer” approach is one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel will analyze this case under the elements of the UDRP.
Complainant asserts rights in the JUUL mark based on registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish a complainant’s rights in a mark. 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.”). Complainant provides copies of its registrations with the USPTO (e.g. Reg. No. 4,818,664, registered Sep. 22, 2015). Therefore, the Panel finds that Complainant has rights in the JUUL mark under Policy ¶ 4(a)(i).
Complainant next argues that the <thailandjuul.com> domain name is identical or confusingly similar to Complainant’s JUUL mark as it wholly incorporates the mark and adds the geographic term “Thailand.” The addition of a geographic term may not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”). Therefore, the Panel finds the disputed domain name to be confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant argues Respondent lacks rights or legitimate interest in the <thailandjuul.com> domain name as Respondent is not known by the disputed domain name, nor has Respondent been given license or permission to use the JUUL mark or register domain names using Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate 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 for the disputed domain name lists the registrant as “nicholas maes,” and there is no evidence to suggest that Respondent was authorized to use the JUUL mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <thailandjuul.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Complainant contends that Respondent uses the disputed domain name to divert Internet users to the Respondent’s scam website which sells counterfeit or unauthorized versions of Complainant’s products. 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 per Policy ¶¶ 4(c)(i) or (iii). See Gumwand Inc. v. jared brading, FA 1794058 (Forum Aug. 6, 2018) (finding that use of a confusingly similar domain name to resolve to a website which purported to sell chewing gum-removal equipment which was either counterfeit versions of Complainant’s goods, or goods which competed directly with Complainant’s chewing gum-removal equipment business, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use within Policy ¶¶ 4(c)(i) or (iii)). Complainant provides screenshots of the resolving webpage of the disputed domain name which purportedly offers for sale Complainant’s products which Complainant contends are counterfeit or unauthorized. Therefore, the Panel finds that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent uses the <thailandjuul.com> domain name to collect personal information of Internet user. Use of a disputed domain name in furtherance of phishing may not be a use that demonstrates rights or legitimate interest in a disputed domain name per Policy ¶ 4(a)(ii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1600534 (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).”). Complainant argues that when Internet users attempt to purchase the products offered via the disputed domain name, users are asked to enter their personal and financial information which may be a phishing scam. As Respondent does not rebut this contention, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and uses the <thailandjuul.com> domain name in bad faith as Respondent uses the disputed domain name to divert Internet traffic and disrupt Complainant’s business. An attempt to trade competitively with a complainant’s mark via a confusingly similar disputed domain name can demonstrate bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See Walgreen Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum Jul. 1, 2018) (“Respondent’s registration and use of the confusingly similar <walgreensshop.com> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).”). The Panel agrees, and finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant next argues that Respondent uses the <thailandjuul.com> domain name to pass off as Complainant by displaying the JUUL mark and branding. Use of a disputed domain name to pass off as a complainant in order to confuse Internet users into believing a respondent is a complainant or otherwise associated or affiliated with a complainant can demonstrate bad faith registration and use per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, Complainant provides screenshots of the resolving webpage of the disputed domain name which Complainant argues mimics Complainant’s website. Complainant also provides a screenshot of its own website for comparison. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent registered the <thailandjuul.com> domain name in bad faith as Respondent had knowledge of Complainant’s rights in the JUUL mark at the time of registration of the disputed domain name. Using a disputed domain name in a clear attempt to trade upon the goodwill of a complainant can show actual knowledge of a complainant’s rights in a mark and be evidence of bad faith per Policy ¶ 4(a)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018). Complainant argues that Respondent’s display of Complainant’s JUUL mark and branding is an attempt to trade upon the goodwill of Complainant’s JUUL mark. The Panel agrees, and finds that Respondent had actual knowledge of Complainant’s rights in the JUUL mark at the time of registration of the disputed domain name, thus constituting bad faith registration under Policy ¶ 4(a)(iii).
Therefore, Complainant has also satisfied 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 <thailandjuul.com> domain name be TRANSFERRED from Respondent to Complainant
David A. Einhorn Panelist
Dated: August 15, 2019
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