JUUL Labs, Inc. v. juul nation / JuulNation
Claim Number: FA1910001869238
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Chelsea E. Carbone of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is juul nation / JuulNation (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulnation.net>, registered with Tucows Domains 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 30, 2019; the Forum received payment on October 30, 2019.
On October 31, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <juulnation.net> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 November 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@juulnation.net. Also on November 1, 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 November 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant has been in the vaporizer business since 2015. Complainant has rights in the JUUL trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,818,664, registered Sep. 22, 2015). Respondent’s <juulnation.net> domain name is identical or confusingly similar to Complainant’s trademark as it includes the JUUL trademark in its entirety, merely adding the generic or descriptive term “nation” and the “.net” generic top-level domain (“gTLD”) to the trademark.
Respondent lacks rights or legitimate interests in the <juulnation.net> domain name. Respondent is not licensed or authorized to use the Complainant’s JUUL trademark and is not commonly known by the disputed domain name.
Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to offer Complainant’s products and the products of its competitors, in direct competition with its business.
Respondent registered and uses the <juulnation.net> domain name in bad faith. Respondent uses the webpage to sell unauthorized products of the Complainant and its competitors for commercial gain. In addition, Respondent had actual knowledge or constructive notice of Complainant’s JUUL trademark when it registered the <juulnation.net> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 4,818,664 JUUL (word), registered September 22, 2015 for goods in classes 1, 30 and 34;
No. 4,898,257 JUUL (in stylized lettering), registered February 9, 2016 for goods in class 34; and
No. 5,667,074 JUULSALTS (word), registered January 29, 2019 for goods in class 34.
The disputed domain name was registered on April 2, 2019.
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”).
The Complainant asserts rights in the JUUL trademark based on registration with the USPTO. Registration of a trademark with the USPTO sufficiently confers a complainant’s rights in a trademark for the purposes of Policy ¶4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides copies of its registration of the JUUL trademark with the USPTO (e.g., Reg. No. 4,818,664, registered Sep. 22, 2015). Accordingly, the Panel finds that Complainant has established rights in the JUUL trademark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <juulnation.net> domain name is identical or confusingly similar to Complainant’s trademark as it includes the JUUL trademark in its entirety, merely adding a modifier and a gTLD to the trademark. Additions of generic and/or descriptive terms and a gTLD to a complainant’s trademark does not negate any confusing similarity between a disputed domain name and trademark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel notes that in the present case, Respondent merely adds the term “nation”, which – if at all having any meaning in this coonnection – merely maybe referring to the fact that JUUL is a “national” trademark, as well as adding a “.net” gTLD to Complainant’s JUUL trademark. The Panel therefore finds that the disputed domain name is confusingly similar to the JUUL trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 contends that Respondent lacks rights or legitimate interests in the <juulnation.net> domain name. Specifically, Complainant argues that Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or authorized to use Complainant’s JUUL trademark. Where a response is absent, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). 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 “juul nation / JuulNation” which as such is more or less identical to the disputed domain name <juulnation.net> and thereby indicates that the Respondent may have rights or legitimate interests in the <juulnation.net> domain name. However, there are several facts in this case that together indicates that Respondent has no rights to <juulnation.net> or has a clean and legally valid business name / company name that is “JuulNation”:
i. The Panel has carefully studied the Respondents website, as provided by the Complainant as Exhibit G of the Complaint. There is no physical address or other contact information that can be legally connected to a business/company name “JuulNation”, only the disputed domain name,
ii. The Respondent is - as further described below – using the disputed domain name for a web site that tries to copy Complainant’s official web site, thereby clearly indicating that Respondent is trying to actively mislead Complainant’s customers, and
iii. Respondent has decided to not file a Response, thereby not argue against the Complainant’s conclusion of lack of rights or legitimate interests.
Based on the above, the Panel finds that Respondent has no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).
Complainant argues Respondent fails to use the <juulnation.net> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the webpage to sell unauthorized products compatible with Complainant’s, as well as products that compete with Complainant. As indicating above, selling competing goods and/or services does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel finds that Respondent fails to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Complainant argues that Respondent registered and uses the <juulnation.net> domain name in bad faith. Specifically, Complainant contends that Respondent disrupts Complainant’s business and attempts to attract users for commercial gain by using the disputed domain name to sell goods both compatible with and competing with Complainant’s products. A respondent’s use of a disputed domain name to sell goods and/or services in competition with a complainant can evince bad faith under Policy ¶¶4(b)(iii) and/or (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (finding bad faith where the respondent used the infringing domain name to disrupt the complainant’s business by diverting Internet users from the complainant’s website to the respondent’s website where it offered competing printer products); see also Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s products and offer competitive and/or counterfeit products). As noted above, Complainant provides screenshots of Respondent’s disputed domain name’s resolving webpage which sells goods compatible with and competing with Complainant’s products. Therefore the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant argues that Respondent must have had actual and constructive knowledge of Complainant’s JUUL trademark. The Panel note that while constructive notice of a complainant’s trademark is insufficient for a finding of bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Here, Complainant asserts given the global reach of the Internet and the fact that Respondent's website displays the JUUL trademark alongside unauthorized and/or counterfeit electronic cigarette products, Respondent must have been aware of Complainant and its JUUL trademark prior to registering the disputed domain name. In addition to this, the Panel notes that both the Complainant and the Respondent are based in California, USA. The Panel therefore agree that Respondent had actual knowledge of Complainant’s rights in the JUUL trademark prior to registering the <juulnation.net> domain name, thereby supporting a finding of bad faith under 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 <juulnation.net> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: December 9, 2019
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