JUUL Labs, Inc. v. Rachel Anorov / Julrii / Juulrii
Claim Number: FA1912001874021
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Aaron Hendelman of Wilson Sonsini Goodrich & Rosati, USA. Respondent is Rachel Anorov / Julrii / Juulrii (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <juulrii.com>, registered with Tucows, Inc.; <julrii.shop> and <juujuucollective.com>, both 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 5, 2019; the Forum received payment on December 5, 2019.
On December 6, 2019, Tucows, Inc. and GoDaddy.com, LLC confirmed by e-mail to the Forum that the <juulrii.com>, <julrii.shop>, and <juujuucollective.com> domain names are registered with Tucows, Inc. and GoDaddy.com, LLC and that Respondent is the current registrant of the names. Tucows, Inc. and GoDaddy.com, LLC have verified that Respondent is bound by the Tucows, Inc. and GoDaddy.com, LLC registration agreements 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 December 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2020 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@juulrii.com, postmaster@julrii.shop, postmaster@juujuucollective.com. Also on December 9, 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.
A timely Response was received and determined to be complete on January 3, 2020.
On January 10, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Established in 2015, 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, Reg. No. 4,818,664, registered on September 22, 2015.
Respondent’s <juulrii.com>, <julrii.shop>, and <juujuucollective.com> domain names are identical or confusingly similar to Complainant’s mark. The <juulrii.com> domain name consists of Complainant’s mark and the added suffix “rii.” The <julrii.shop> domain name consists of almost the entirety of Complainant’s mark, with only the removal of the letter “u” and the addition of the suffix “rii.” The <juujuucollective.com> domain name consists of almost the entirety of Complainant’s mark, with only the removal of the letter “l” and the addition of the generic word “collection” [scil. collective].
Respondent has no rights or legitimate interests in the <juulrii.com>, <julrii.shop>, and <juujuucollective.com> domain names. Respondent is not commonly known by the name JUUL, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent cannot assert rights in the JUULRII mark based on an application to register the mark in Australia as Respondent only applied after receiving notice from Complainant. Respondent fails to use the domain names 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 misleading website which largely incorporates the JUUL mark and is designed to capitalize on confusion between the parties. Respondent also passively holds the <juulrii.com> domain name.
Respondent registered and uses the <juulrii.com>, <julrii.shop>, and <juujuucollective.com> domain names in bad faith. Respondent uses the disputed domain names to divert Internet users to Respondent’s own website which offers unauthorized JUUL compatible products from a third-party business. Respondent also passively holds the <juulrii.com> domain name. Respondent’s clear attempt to take advantage of the value and goodwill of Complainant’s mark show actual or constructive knowledge of Complainant’s mark prior to registration of the disputed domain names.
B. Respondent
Respondent requests the Panel deny Complainant transfer of the <juujuucollective.com> domain name. Respondent agrees to transfer the domain name <julrii.shop> to Complainant. GoDaddy has informed Respondent that the domain name <juulrii.com> has already been cancelled. If this is incorrect, Respondent also consents to have this domain name cancelled.
Respondent’s <juujuucollective.com> domain name refers to the term “good juju” and is substantially different from Complainant’s JUUL mark.
Respondent does not give users the impression of authorization or association with Complainant on the <juujuucollective.com> domain name and provides a disclaimer stating as much on the “About Us” section of the resolving webpage. Respondent uses the <juujuucollective.com> domain name for a legitimate business purpose, offering fashion items and accessories.
Respondent filed a trademark application for the “juulri” mark (note the lower case) on August 11, 2019, prior to the initial cease-and-desist letter on August 27, 2019. This pending trademark is completely unrelated to Complainant’s JUUL mark. Respondent utilizes a substantially different logo (a stylized letter “J”) to avoid giving the impression of affiliation or association with Complainant.
The domain name <juulri.com> was registered by Respondent on July 2, 2019. Following a cease and desist letter from Complainant dated August 27, 2019, that domain name has been inactive. The domain name <julrii.shop> was registered by Respondent on September 11, 2019. That domain name resolved to a website at “www.juujuucollective.com” following the registration by Respondent of the domain name <juujuucollective.com> on October 10, 2019. That website promoted accessories such as necklaces designed to fit vaporizer devices and depicted such accessories attached to Complainant’s devices. Respondent applied to register “juulrii” as a trademark in Australia on August 11, 2019, a few days after an initial email from Complainant dated August 6, 2019. That application is currently pending.
In light of Respondent’s consent to the transfer to Complainant of the domain name <julrii.shop> and to the cancellation (if not already cancelled) of the domain name <juulrii.com>, the Panel need not determine the issues raised by Complainant in relation to those domain names.
The Panel finds that Complainant has not established all the elements entitling it to transfer of the domain name <juujuucollective.com>.
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.
Complainant clearly has rights in the registered trademark JUUL, which is distinctive and very well known. The domain name <juujuucollective.com> is not identical to Complainant’s JUUL mark.
Complainant submits that the domain name <juujuucollection.com> [scil. <juujuucollective.com>] is confusingly similar to that mark because it incorporates almost the entirety of Complainant’s JUUL Mark, removing only the “l” but leaving the distinctive double “UU” for which Complainant says it is well known. Complainant has not provided evidence that it is well known other than by the full mark JUUL.
Further, Complainant argues that the addition of the word “collection” [scil. collective] is generic and serves no source identifying function, citing Novartis Ag v. David Sparkowich, Case No. D2013-1610 (WIPO Oct. 29, 2013) (ordering transfer of <buyomnitrope.com> to owner of the OMNITROPE mark and stating that “the disputed domain name is confusingly similar to the Complainant’s trademark because it fully incorporates said mark with the mere addition of the generic term ‘buy’”); citing also Terex Corporation v. Texas International Property Associates - NA, Case No. D2008-0733 (WIPO June 30, 2008) (ordering transfer of <terexcorp.com> to the owner of the TEREX mark and stating that it “has long been held that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question.”); and citing Fluor Corporation v. KMLOLO, Case No. D2010-0377 (WIPO May 17, 2010) (ordering transfer of <fluorme.com> to owner of FLUOR mark). Complainant says it is clear that Respondent moved to juujuucollection.com [scil. <juujuucollective.com>] as a third attempt to pretend to distance itself from Complainant while still being able to free-ride on the fame of the JUUL marks.
Respondent argues that the <juujuucollective.com> domain name substantially differs from Complainant’s JUUL mark and instead refers to the term “good juju.” Changes to a mark, like the substitution of a letter, which create an entirely new word and convey an entirely singular meaning from a mark can sufficiently distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Google, Inc. v. Wolfe, FA 275419 (Forum July 18, 2004) (“The <froogles.com> domain name is not confusingly similar to Complainant's GOOGLE mark. The dissimilar letters in the domain name are sufficiently different to make it distinguishable from Complainant's mark because the domain name creates an entirely new word and conveys an entirely singular meaning from the mark. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different websites are quite often similar, because of the need for language economy, and that very small differences matter.")
In determining confusing similarity, evidence of actual confusion is not required. The test is an objective one, confined to a comparison of the domain name and the trademark alone, independent of the products or services for which the domain name may be used, or other marketing and use factors usually considered in trademark infringement (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000‑1698; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327). Confusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?”: SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007‑0648.
The Panel accepts that where a trademark is fully incorporated and identifiable in a domain name (unlike such examples as <theatre.com> where the mark in question is HEAT), the mere addition of a generic term, such as “collective” would be insufficient to distinguish the domain name from the mark and that such domain names are confusingly similar to the mark. The cases cited by Complainant above concerned fully incorporated trademarks. In the present case, the domain name <juujuucollective.com> does not fully incorporate Complainant’s JUUL mark.
Ignoring the inconsequential gTLD suffix “.com”, (as is normal when assessing identity and confusing similarity for the purpose of Policy ¶4(a)(i)), in making an objective comparison of the domain name <juujuucollective.com> and the Complainant’s JUUL mark, the Panel accepts that the first 6 letters of the domain name constitute a repetition of the first 3 letters of Complainant’s mark. However, the absence of the letter “l” and the fact of that repetition are relevant to the question whether the domain name is confusingly similar to that mark. “Juujuu” does not create the same impression as “Juul”. This is not a case of the mere addition to the entirety of a mark of a generic word, so the word “collective” is relevant to the objective comparison to be made. In the result, the Panel is unpersuaded that Internet users are likely to wonder whether there is an association between the domain name and the mark.
Accordingly, the Panel finds that Complainant has not established that the domain name <juujuucollective.com> is identical or confusingly similar to the Complainant’s JUUL mark per Policy ¶ 4(a)(i).
Since Complainant has failed to establish this element, it is unnecessary to consider the elements of legitimacy and bad faith. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017).
In light of Respondent having consented to the transfer of the domain name <julrii.shop> to Complainant, it is Ordered that the <julrii.shop> domain name be TRANSFERRED from Respondent to Complainant.
In light of Respondent having consented to cancellation of the domain name <juulrii.com> if it has not already been cancelled, it is Ordered that the <juulrii.com> domain name be TRANSFERRED from Respondent to Complainant if it has not already been cancelled.
Having not established all three elements required under the ICANN Policy in relation to the domain name <juujuucollective.com>, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <juujuucollective.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: January 19, 2020
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