JUUL Labs, Inc. v. Teoman Tekin
Claim Number: FA1912001874043
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Chelsea E. Carbone of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Teoman Tekin (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulburada.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 5, 2019; the Forum received payment on December 5, 2019.
On December 9, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <juulburada.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 December 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@juulburada.com. Also, on December 10, 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 January 2, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 <juulburada.com> domain name is identical or confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the generic or descriptive term “Burada,” which is Turkish for “here.”
Respondent has no rights or legitimate interests in the <juulburada.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 website which sells unauthorized versions of Complainant’s products or competing products.
Respondent registered and uses the <juulburada.com> domain name in bad faith. Respondent uses the disputed domain name to divert Internet traffic to the disputed domain name 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 unauthorized and competitive products. 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.
Complainant is JUUL Labs, Inc. (“Complainant”), of San Francisco, CA, USA. Complainant is the owner of domestic and international registrations for the mark JUUL and related marks, which it has continuously used since at least as early as 2015, in connection with its sale of vaporizer devices and accessories.
Respondent is Teoman Tekin (“Respondent”), of Istanbul, Turkey. Respondent’s registrar’s address is listed as Burlington, MA, USA. The Panel notes that Respondent registered the <juulburada.com> domain name on or about May 11, 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”).
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.”). In the instant proceeding Complainant provides copies of its registrations with the USPTO (e.g. Reg. No. 4,818,664, registered Sep. 22, 2015). The Panel finds Complainant has rights in the JUUL mark under Policy ¶ 4(a)(i).
Complainant next argues that the <juulburada.com> domain name is identical or confusingly similar to Complainant’s JUUL mark as it wholly incorporates the mark and merely adds the generic or descriptive term “Burada,” which is Turkish for “here.” The Panel further notes the disputed domain name also adds the “.com” generic top-level domain (“gTLD”) to Complainant’s mark. The addition of a generic or descriptive term and a gTLD may not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel here finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <juulburada.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 identifies the registrant as “Teoman Tekin,” and there is no evidence in the record indicating Respondent was authorized to use the JUUL mark. The Panel here finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also argues Respondent does not use the <juulburada.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent uses the disputed domain name to divert Internet users to the Respondent’s website which sells unauthorized versions of Complainant’s products and competing products. Using a disputed domain name to sell unauthorized versions of a complainant’s products or competing 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)); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“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).”). Complainant provides screenshots of the resolving webpage of the disputed domain name which appears to offer for sale Complainant’s products which Complainant contends are unauthorized and competing products. The Panel here 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).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent uses the <juulburada.com> domain name to pass off as Complainant by displaying the JUUL mark and branding and offering unauthorized or competing products for sale. Use of a disputed domain name to pass off as a complainant and offering goods or services competitive to those offered by a complainant can demonstrate bad faith registration and use per Policy ¶ 4(b)(iii) and/or (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The Panel here again notes that Complainant provides screenshots of the resolving webpage of the disputed domain name which Complainant argues mimics Complainant’s website and sells unauthorized versions of Complainant’s products and competing products. Complainant also provides a screenshot of Complainant’s own website for comparison. The Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii) and (iv).
Complainant further asserts Respondent registered the <juulburada.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. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Using a disputed domain name as a clear attempt to trade upon the goodwill of a complainant can show actual knowledge of a complainant’s rights in a mark and provides 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 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).”). 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 here 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).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <juulburada.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 16, 2020
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