JUUL Labs, Inc. v. MOHAMED ALI RADI / 1991
Claim Number: FA2002001884228
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Aaron D. Hendelman of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is MOHAMED ALI RADI / 1991 (“Respondent”), Morocco.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulshop.us>, registered with NameCheap, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 21, 2020; the Forum received payment on February 21, 2020.
On February 24, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <juulshop.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 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@juulshop.us. Also on March 4, 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 Respondents registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 10, 2020.
On March 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, 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 usTLD 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 name <juulshop.us> 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). See Compl. Ex. D. Respondent’s <juulshop.us> domain name is identical or confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the generic term “shop.”
Respondent has no rights or legitimate interests in the <juulshop.us> 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 a misleading website that prominently incorporates the JUUL mark, designed to capitalize on confusion between the parties and to promote competing products.
Respondent registered and uses the <juulshop.us> domain name in bad faith. Respondent uses the disputed domain name to divert Internet traffic 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 competing products. Finally, Respondent had actual knowledge of Complainant’s rights in the JUUL mark at the time of registration of the disputed domain name.
B. Respondent
Respondent purchased the <juulshop.us> domain name and thus owns the property rights. Respondent sells some JUUL products via the disputed domain name originally purchased from an official seller. This type of sale is legal on the internet.
The Panel notes that Respondent registered the <juulshop.us> domain name on October 20, 2019. See Compl. Ex. A.
The domain name <juulshop.us> registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
Respondent has no rights or legitimate interests in respect of the domain name <juulshop.us> ; and
The domain name <juulshop.us> has been registered or is being used 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 its registrations with the USPTO (e.g. Reg. No. 4,818,664, registered Sep. 22, 2015). See Compl Ex. D. Therefore, the Panel finds Complainant has rights in the JUUL mark under Policy ¶ 4(a)(i).
The <juulshop.us> domain name is identical or confusingly similar to Complainant’s JUUL mark as it wholly incorporates the mark and adds the generic term “shop.” The Panel notes that the disputed domain name also adds the “.us” country-code top-level domain (“ccTLD”) to Complainant’s mark. The addition of a generic term and a TLD does not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See 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 find the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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”).
Complainant asserts that Respondent lacks rights or legitimate interest in the <juulshop.us> 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 is persuasive information to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). 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 indicates 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 “MOHAMED ALI RADI/1991,” and there is no other evidence to suggest that Respondent was authorized to use the JUUL mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(iii).
Panel has reviewed Complainant provided screenshots of the resolving webpage of the disputed domain name which displays Complainant’s JUUL mark and products as well of products of a competitor of Complainant, EON SMOKE. See Compl. Ex. G. Here, Respondent uses the disputed domain name to divert Internet users to a misleading website that prominently incorporates the JUUL mark, designed to capitalize on confusion between the parties and promote competing products. Using a disputed domain name to pass off as a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Therefore, the Panel 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)(ii) or (iv).
Respondent has offered no evidence of common law usage or relevant filed trademarks, to indicate that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
The totality of Complainant’s adduced evidence cited above, constitutes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Respondent, rather, merely concludes ownership via his Response which simply states that, Respondent “Purchased and owns Juulshop.us”.
Concomitantly, Respondent has not shouldered its shifted burden to show that Respondent does indeed have rights or legitimate interests so as to satisfy Policy ¶ 4(c)(i).
Complainant offers convincing evidence that Respondent registered the <juulshop.us> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights in the JUUL mark at the time of registration of the disputed domain name.
Complainant received a federal trademark filing on September 22, 2015 for the Mark JUUL, for e-cigarettes. This registration cites date of first use in commerce as June, 2015. See Compl. Ex. D. Since that time, Juul has received extensive press coverage, citing both its innovative product and its sleek IPhone-like design, in major business press, such as Forbes and Wired. See Comp. Ex. F. By 2018, JUUL had become a billion dollar corporation, and produced 75% of United States’ e cigs.
Respondent did not register the <juulshop.us> domain name until October 25, 2019. See WHOIS Record Compl. Ex. A. Respondent’s appropriation of the name “juulshop” as the central part of its domain name, is not nominative. That is, its use is not necessary in order to identify its services, which also included competing services to the Juul brand. These facts lead Panel to the inevitable conclusion that Respondent had actual knowledge of Complainant’s Mark at time of registration and therefore registered the <juulshop.us> domain name in bad faith, in accordance with Policy ¶ 4(a)(iii).
Complainant convincingly cites its Ex. G as evidence that Respondent uses the <juulshop.us> domain name to pass off as Complainant by displaying the JUUL mark and branding and by offering unauthorized and competing products for sale. Complainant also provides a screenshot of Complainant’s own website for comparison. See Compl. Ex. E. Use of a disputed domain name to pass off as a Complainant and offering competitive goods or services is persuasive evidence of bad faith registration and use, in accordance with 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 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).”).
Therefore, the Panel finds Respondent registered and used the disputed domain in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juulshop.us> domain name be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: March 27, 2020
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