JUUL Labs, Inc. v. Kimi Assy / WebsConcept
Claim Number: FA2001001878559
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Aaron D. Hendelman of Wilson Sonsini Goodrich & Rosati, California. Respondent is Kimi Assy / WebsConcept (“Respondent”), Lebanon.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <juullebanonbest.com> and <juulvapelebanon.com>, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 10, 2020; the Forum received payment on January 10, 2020.
On January 15, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <juullebanonbest.com> and <juulvapelebanon.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 January 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 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@juullebanonbest.com, postmaster@juulvapelebanon.com. Also on January 17, 2020, 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 February 7, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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. JUUL delivers nicotine satisfaction akin to a cigarette in a format that’s simple and easy to use. Complainant has rights in the trademark JUUL mark based upon its extensive use of the mark since April of 2015 and through its registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <juullebanonbest.com> and <juulvapelebanon.com> domain names, registered on September 27, 2019 and October 10, 2019, respectively, are identical or confusingly similar to Complainant’s mark as each name wholly incorporates the mark and merely adds the geographic term “lebanon,” and the terms “vape” or “best.”
Respondent has no rights or legitimate interests in the <juullebanonbest.com> and <juulvapelebanon.com> domain names. Respondent is not known by the disputed domain names, nor has Complainant licensed or otherwise permitted Respondent to use the mark. Respondent does not use the disputed 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 names to divert Internet users to the Respondent’s websites which sell unauthorized versions of Complainant’s products or competing products.
Respondent registered and uses the <juullebanonbest.com> and <juulvapelebanon.com> domain names in bad faith. Respondent uses the disputed domain names to divert Internet traffic and disrupt Complainant’s business. Respondent uses the disputed domain names to pass itself off as Complainant by displaying the JUUL mark and branding and offering for sale unauthorized or competitive products. Finally, Respondent had actual knowledge of Complainant’s rights in the JUUL mark at the time it registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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.”) Complainant provides copies of some of its registrations with the USPTO. Therefore, the Panel finds that Complainant has rights in the JUUL mark under Policy ¶ 4(a)(i).
Complainant next argues that the <juullebanonbest.com> and <juulvapelebanon.com> domain names are identical or confusingly similar to Complainant’s JUUL mark as each name wholly incorporates the mark and merely adds the geographic term “lebanon,” and either the term “vape” or “best.” While not argued by Complainant, the Panel notes that the disputed domain names also add the “.com” generic top-level domain (“gTLD”). The addition of a geographic or generic term and a gTLD 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 [sic] similarity under a Policy ¶4(a)(i) analysis.”); see also Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”); 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)). Therefore, the Panel finds that each of the disputed domain names is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to demonstrate that it does have rights or legitimate interests in the domain name. 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 argues that Respondent lacks rights or legitimate interests in the <juullebanonbest.com> and <juulvapelebanon.com> domain names as Respondent is not known by the disputed domain names 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 “Kimi Assy / WebsConcept,” and there is no other evidence to suggest that Respondent is known otherwise or that it is authorized to use the JUUL mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant also argues that Respondent also does not use the <juullebanonbest.com> and <juulvapelebanon.com> domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent uses the disputed domain names to divert Internet users to the Respondent’s websites which sell unauthorized versions of Complainant’s products and competing products. Using a disputed domain name to sell either 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 webpages of the disputed domain names which display the JUUL mark and photos of JUUL products, and which purportedly offer for sale Complainant’s products which Complainant contends are unauthorized and competing products. Regardless of whether the products offered at Respondent’s websites are authentic JUUL products, the Panel notes that at least one page of these websites offer products from other companies and so the use of the JUUL mark in connection with such offers violates the Policy, even under the standards set out in the seminal case of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001). Therefore, the Panel finds that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶ 4(c)(i) or (iii).
In light of the evidence presented in this case, and in the absence of any Response or other submission by the Respondent, the Panel determines that Respondent does not have any rights or legitimate interests in the disputed domain names under ¶ 4(a)(ii).
It is asserted that the Respondent had actual knowledge of the Complainant’s rights in the JUUL trademark prior to Respondent’s registration of the disputed domain names based on the Complainant’s extensive and multi-national use of the mark and on the content of Respondent’s websites. Actual knowledge of a complainant’s rights in a mark may support a finding of bad faith under 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).”) Here, Complainant provides screenshots of the websites that resolve from the disputed domain names showing that Respondent displays the JUUL mark and logo, photos of JUUL branded e-cigarette products, as well as sales listings for JUUL branded products. Therefore, the Panel concludes that the Respondent had actual knowledge of Complainant’s rights in the JUUL mark prior to registration of the disputed domain names. This lays a foundation for a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent uses the <juullebanonbest.com> and <juulvapelebanon.com> domain names to pass itself off as Complainant by displaying the JUUL mark and branding and offering for sale unauthorized or competing products. Use of a disputed domain name to pass off as a complainant and goods or services competitive to those offered by a complainant can demonstrate bad faith registration and use per Policy ¶¶ 4(b)(iii) and (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 itself 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).”) As noted above, the Complainant provides screenshots of the resolving webpages of the disputed domain names which Complainant argues mimic Complainant’s website and sell unauthorized versions of Complainant’s products and competing products. Complainant also provides a screenshot of Complainant’s own website for comparison. It is apparent that Respondent uses the JUUL logo and photographs of Complainant’s branded products. In addition, the Panel notes that these websites promote the sale of competing products that, even if legitimate, do not originate with Complainant. With no input into this case from Respondent, the Panel finds that the evidence presented leads to the conclusion that Respondent diverts customers from, and has sought to pass itself off as Complainant. It has thus registered and used the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juullebanonbest.com> and <juulvapelebanon.com> domain names be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: February 10, 2020
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