JUUL Labs, Inc. v. Ultimate / Jonathan Littlewood
Claim Number: FA2002001882873
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Susanna P. Lichter of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Ultimate / Jonathan Littlewood (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulpods.org>, registered with NameSilo, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2020; the Forum received payment on February 11, 2020.
On February 12, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <juulpods.org> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 February 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 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@juulpods.org. Also on February 14, 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 March 10, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is in the business of selling vaporizer devices and accessories. Since the company’s launch in mid-2015, its vaporizers have been growing in popularity. Based on Nielsen retail monthly sales data of vapor devices, Complainant sold 51,454 units in January 2016, with sales increasing to 3.5 million units sold in February 2018 alone. Perhaps even more impressive, Complainant’s retail sales generated more than $77 million in revenue from retail sales (Nielsen retail sales data) in February 2018. Complainant posted more than $1 billion in revenue in 2018. In 2018, Complainant sold 16.2 million devices. As of the end of 2018, Complainant’s JUUL brand represented approximately 75% of the US e-cigarette market share and Complainant launched in an additional eight country markets in 2018. As a result of the tremendous success of Complainant’s JUUL-branded vaporizer devices and related accessories, people around the world have come to associate the JUUL Marks exclusively with Complainant and therefore Complainant maintains trademark registrations and applications all over the world for its JUUL-related marks. Complainant has rights in the JUUL mark based upon registration in the United States in 2015. Complainant also claims common law rights in the JUULPODS mark.
Complainant alleges that the disputed domain name domain name is identical to its JUULPODS mark because it wholly incorporates the mark, simply adding the “.org” generic top-level domain (“gTLD”) to create the disputed domain name.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or permitted to use Complainant’s JUUL or JUULPODS mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to divert users to a misleading website that promotes unauthorized or counterfeit and competing products.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to attract Internet users to its competing website for commercial gain through the sale of unauthorized or counterfeit products. Additionally, Respondent disrupts Complainant’s business through promotion of competing products. Finally, Respondent has actual knowledge of Complainant’s rights in the JUUL and JUULPODS mark as shown through use of Complainant’s logo and information on Respondent’s own website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has registered trademarks for the mark JUUL and uses it to market vaporizer devices and accessories. The mark was registered in 2915.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name was registered in 2019.
The resolving website offers unauthorized or counterfeit versions of Complainant’s products and competing products; it displays Complainant’s mark and logo.
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 alleges that it has common law trademark rights for the mark JUULPODS. Since Complainant undoubtedly has registered trademark rights for the mark JUUL, the Panel will not analyze the question of whether it also has common law trademark rights for the mark JUULPODS.
The disputed domain name incorporates Complainant’s JUUL mark in its entirety and merely adds the descriptive, generic term “pods” and the gTLD “.org”. Addition of a generic term and a gTLD does not distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). Thus, the Panel finds that the <juulpods.org> domain name is confusingly similar to Complainant’s JUUL mark under Policy ¶ 4(a)(i).
Respondent is not licensed or permitted to use Complainant’s JUUL marks and is not commonly known by the disputed domain name: when no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Here, the WHOIS information of record shows “Ultimate / Jonathan Littlewood” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent uses the disputed domain bane to divert users to a misleading website that promotes unauthorized or counterfeit and competing products. Specifically, Complainant provides screenshots of Respondent’s website which displays Complainant’s mark and logo, and offers for sale unauthorized or counterfeit versions of Complainant’s products, and competing products that are purportedly compatible with Complainant’s goods. Use of a confusingly similar domain name to sell counterfeit or competing products is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name); see also Florists’ Transworld Delivery v. Malek, FA 676433 (Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). Thus, the Panel finds that Respondent does not use the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). And the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent disrupts Complainant’s business by using the disputed domain name to sell unauthorized and competing products. Disrupting a complainant’s business and diverting users to a disputed domain name which sells unauthorized or competing goods may evince bad faith per Policy ¶¶ 4(b)(iii) and (iv). See O Fossil Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products). Therefore, the Panel find that Respondent registered and used the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark and logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith 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 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.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes 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 <juulpods.org> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: March 10, 2020
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