JUUL Labs, Inc. v. Victor Madsen / JuulKov
Claim Number: FA2003001886572
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Chelsea E. Carbone of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Victor Madsen / JuulKov (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulkov.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 2, 2020; the Forum received payment on March 2, 2020.
On March 3, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <juulkov.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 March 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 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@juulkov.com. Also on March 6, 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.
On March 19, 2020, Respondent sent an email to the Forum stating: “I am here to try and settle this case, i (sic) just want to inform that i (sic) was only the sites (sic) graphic designer, but i (sic) can shut the site down if wanted. I just want to settle this case down. My offer is to shut the site and domain down.”
On March 24, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
On March 24, 2020, the Panel issued a Procedural Order requesting Complainant to provide on or before March 31, 2020, a translation of the content of the website to which the disputed domain name resolved and allowing Respondent, upon receipt thereof a period of seven (7) days an opportunity to make submissions thereon.
On March 24, 2020, Complainant provided the requested translations and the Forum advised Respondent that it was permitted to make a submission thereon on or before March 31, 2020.
On April 1, 2020 the Forum confirmed to the Panel that no further communications had been received from Respondent.
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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant requests that these proceedings be conducted in English, given that Complainant is a U.S. Company and the registrar’s agreement is in English. See also JUUL Labs, Inc. v. Chris Robin / Register Pilot, Case FA1908001858523 (Forum Sept. 18, 2019) (conducting the proceedings in English where the registrar’s agreement was in English, irrespective of the language of the content of the website at issue). Complainant further argues that requiring the proceedings to be conducted in Portuguese, the language of some of the content on the website found at the disputed domain name <juulkov.com>, would unduly burden the Complainant. Complainant states that requiring Complainant to translate the complaint into Portuguese would be costly for Complainant and delay the proceedings unnecessarily. See Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Guo Xiaobao / Guoxiaobao, Case No. D2014-1456 (WIPO Oct. 31, 2014) (finding that the proceedings should be conducted in English where Complainant, a U.S. company, indicated that they would suffer an unnecessary burden if required to translate the Complaint into Chinese and to conduct the proceeding in Chinese). Moreover, Complainant submits that there is content on the website that appears in English, which suggests that the Respondent is capable of understanding English.
Addressing the substantive issues in dispute, Complainant claims rights in the JUUL mark which it submits it has used to promote its electronic cigarette business since as early as April 2015 and claims that its business since grown to having more than $1 million in monthly retail sales in January 2016 through retail outlets and its websites to which its domain names <juulvapor.com> and <juullabs.com> resolve. By 2019 (for the calendar year 2018), JLI posted more than $1 billion in annual revenue. As of the beginning of 2019, JLI controlled approximately 75% of the US e-cigarette market share.
Complainant submits that the disputed domain name is nearly identical to Complainant’s JUUL mark and is likely to cause consumer confusion, arguing that the addition of the term “kov” does not limit the risk of confusion between Complainant’s trademark and the disputed domain name. See, e.g., JUUL Labs, Inc. v. Zekeriya Deniz / FBS INC / Whoisprotection.biz, Case No. FA1907001852295 (Forum Aug. 28, 2019) (“Respondent merely adds the term “sigara”, and the gTLD “.com” to the JUUL mark. The Panel agrees with Complainant and finds the <juulsigara.com> domain name does not contain changes that would sufficiently distinguish it from the JUUL mark per Policy ¶ 4(a)(i)”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not known by the name JUUL and has not acquired any trademark rights or legitimate interests in the term JUUL.
Complainant adds that Respondent’s use of the JUUL mark in the disputed domain name is not nominative and can easily be avoided, so Respondent does not need to make use of the JUUL mark in order to identify its website. Six Continents Hotels, Inc. v. Hotel Partners of Richmond, Case No. D2003-0222 (WIPO May 14, 2003) (finding that the use of the complainant’s HOLIDAY INN mark in the domain name <holidayinnhotelreservations.com> was not nominative fair use because it was not an unavoidable and necessary use of a mark to identify respondent’s services).
Complainant further argues that Respondent has used the disputed domain name to divert Internet users to a misleading website, a website that prominently incorporates the JUUL mark in the disputed domain name, and is designed to capitalize on confusion created, in order to advertise Complainant’s products for sale, on an unauthorized basis, as well as competitor products. Complainant submits that diverting Internet traffic to a misleading website is not a legitimate, noncommercial or fair use of the disputed domain name and is, in fact, further evidence of bad faith use of the disputed domain name. See JUUL Labs, Inc. v. jeong jongseok, Case No. FA1909001862622 (Forum Oct. 16, 2019) (ordering transfer of the disputed domain to the complainant and finding the respondent had no rights or legitimate interests in the domain where the respondent was using the domain to “pass itself off as Complainant in furtherance of diverting internet users to Respondent’s website…[which] prominently displays the JUUL mark, along with pictures of products that are purportedly compatible with JUUL for sale through the website. Respondent’s use of the domain name in this manner is neither a bona fide offerings of goods or services…, nor a non-commercial or fair use…”).
Complainant alleges that the disputed domain name was registered in bad faith, arguing that given Respondent’s actual knowledge of Complainant’s rights, the disputed domain name was therefore registered to take advantage of the value and goodwill associated with the JUUL marks. Complainant submits that registering a domain name for such a purpose constitutes bad faith. See Ticketmaster Corp. v. Spider Web Design, Inc., Case No. D2000-1551 (WIPO Feb. 4, 2001) (“actual or constructive knowledge of [c]omplainant’s rights in [t]rademark is a factor supporting bad faith”).
Complainant asserts that Respondent is using the disputed domain name in bad faith to lure Internet users to Respondent’s own website that promises unauthorized JUUL products, and argues that Internet users who are directed to Respondent’s website are likely to believe that they have successfully accessed a website originating from or approved by Complainant. Complainant submits that this type of use of a domain name has been recognized as bad faith use in violation of ICANN Policy ¶ 4(b)(iv). See Fossil, Inc. v. wwwfossil-watch.org c/o Hostmaster, Case No. FA 335513 (Forum Nov. 9, 2004) (finding bad faith where respondent attempted to profit from the fame of complainant’s trademark by attracting Internet traffic to his website)).
Complainant further argues that even if Respondent’s website were not engaged in the sale of unauthorized JUUL products, which it is, Respondent’s use of a domain name to divert Internet traffic and disrupt a third-party business, as is the case here, constitutes bad faith under Policy ¶ 4(b)(iii). See Twitter, Case No. FA1503001607451(“Respondent’s use of the domain name disrupted Complainant’s business and misappropriated the trademark value of Complainant’s mark to wrangle visitors to its website thereby demonstrating Respondent’s bad faith registration and use of the name pursuant to Policy ¶ 4(b)(iii).”).
Complainant submits that the goods purported to be sold by Respondent are materially different from legitimately sold products as they are not covered by the terms of Complainant’s warranty which expressly excludes “[d]evices or charging cases purchased outside of the United States or from unauthorized retailers”. Complainant argues that therefore, as Respondent is an unauthorized retailer, any products sold on Respondent’s site are excluded from coverage under Complainant’s warranty, and such an exclusion constitutes a material difference likely to result in a likelihood of confusion. and those sold on an unauthorized basis has been found as an exception to the first sale doctrine sufficient to support a finding of consumer confusion. Grateful Palate, Inc. v. Joshua Tree Imports, LLC, 220 F. App’x 635, 637 (9th Cir. 2007) (“After that first sale…the trademark holder may establish infringement only if he demonstrates that the goods are materially different).
Finally, Complainant submits that Respondent’s website prominently displays products that are advertised as produced by Complainant, along with competitor products, and offers these products for sale through the website, misleading Internet users to believe that Respondent is an authorized seller of JUUL products, or indeed Complainant itself, which it is not.
B. Respondent
On March 19, 2020, the Forum received an email from Respondent stating: “I am here to try and settle this case, i (sic) just want to inform that i (sic) was only the sites (sic) graphic designer, but i (sic) can shut the site down if wanted. I just want to settle this case down. My offer is to shut the site and domain down.”
Complainant manufactures electronic cigarettes and related products which it sells under the JUUL trademark for which it has a portfolio of trademark registrations including:
United States registered trademark JUUL, registration number 4,818,664, registered September 22, 2015 for goods in international classes 1, 20 and 34; and
United States registered trademark JUUL (figurative), registration number 4,898,257 registered on February 09, 2016 for goods in international class 34.
The disputed domain name <juulkov.com> was registered on approximately September 18, 2019 and resolves to a website purporting to offer electronic cigarettes and related products for sale.
There is no information available about Respondent, who has used a privacy service to conceal his identity, except for that provided in the Complainant, the Registrar’s WhoIs, the Registrar’s response to the Forum’s request for details of the registration of the disputed domain name in the course of this proceeding, and his unsupported bare statement in his brief response to the Complaint that he is merely the designer of the website to which the disputed domain name resolves.
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”).
Preliminary Issue – Language of Proceedings
Having considered Complainant’s application that these proceedings be conducted in English, in the circumstances of this case, where the Registrar’s agreement is in the English language and the website to which the disputed domain name resolves contains almost identical content in both English and Portuguese languages, and Respondent has communicated his Response, albeit brief and informal, in English, this Panel finds that English is the most appropriate and convenient language for this proceeding and that Respondent, having demonstrated a fluency in the English language is not prejudiced by this decision.
Complainant has adduced uncontested evidence of its rights in the JUUL mark established through its abovementioned trademark registrations and the goodwill that it has acquired in the mark through its substantial use in connection with the sale of its electronic cigarettes and related products since 2015.
The disputed domain name consists of Complainant’s trademark in its entirety together with the term “kov” and the generic Top Level Domain <.com> extension.
Complainant’s trademark is the initial and dominant element of the disputed domain name. The element “juul” has no obvious significance other than as Complainant’s trademark and there is no obvious significance to the letters “kov” either. In the circumstances of this Complaint the gTLD <.com> extension may be ignored as it would be considered as a technical element by Internet users as it serves no other purpose or meaning in context.
This Panel finds therefore that the disputed domain name is confusingly similar to the JUUL mark in which Complainant has rights. Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(i).
Respondent, who is the registrant of the disputed domain name as has been confirmed by the Registrar, claimed in his brief informal response on March 19 that he is “only the sites (sic) graphic designer”, but at the same time demonstrating that he has control over the disputed domain name and the website to which it resolves by further stating that his “ offer is to shut the site and domain down”.
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name alleging that Respondent is not known by the name JUUL and has not acquired any trademark rights or legitimate interests in the term JUUL; that Respondent’s unauthorized use of the JUUL mark in the disputed domain name is not nominative and can easily be avoided, so Respondent does not need to make use of the JUUL mark in order to identify its website; that Respondent has used the disputed domain name to divert Internet users to a misleading website that prominently incorporates the JUUL mark in its address; and that the disputed domain name is designed to capitalize on confusion created, in order to advertise Complainant’s products for sale, on an unauthorized basis, as well as competitor products.
Notwithstanding the brevity of Respondent’s informal response and his failure to address any of the substantive issues raised in the Complaint, the onus rests on Complainant to make out a prima facie case and it could be argued that the goods presented on Respondent’s website appear to be Complainant’s genuine trademarked goods and the question as to whether Respondent is a bona fide reseller remains open.
Since 2001, the decision in Oki Data Americas, Inc. v. ASD, Inc. Case No. D2001-0903 has provided accepted guidance to panelists as to whether a reseller has rights or legitimate interests in a disputed domain name. In Oki Data the panel decided that to be “bona fide,” the offering must meet several requirement including that a respondent must actually be offering the goods or services at issue and must use the website to which the disputed domain name resolves to sell only the trademarked goods; that the site must accurately disclose the registrant's relationship with the trademark owner; and that the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In this proceeding, the website to which the disputed domain name resolves purports to offer genuine JUUL branded goods and prominently displays Complainant’s mark without license or authority. This Panel has requested a full translation of the Portuguese language content of the website to which the disputed domain name resolves, which confirms that the text and other content however misrepresent to the public that the website is owned by, has a connection with, or is endorsed by Complainant. There is nothing on the website to indicate otherwise. Respondent’s website therefore does not accurately disclose Respondent’s relationship with Complainant. Additionally, Respondent’s brief response described above, does not address any of the substantive allegations, arguments or evidence adduced by Complainant. In these circumstances Respondent therefore could not avail of a defense based on the Oki Data principles and this Panel finds that Complainant has made out a prima facie case that Respondent has no right to use its name and mark in the disputed domain name.
Additionally for completeness on this issue it is noteworthy that Complainant has alleged that Respondent is purporting to sell competing goods but the Complaint does not identify which goods it alleges are third party goods and the images of the packaging and with perhaps one exception the names of products on Respondent’s website expressly bear Complainant’s JUUL mark. Furthermore, Complainant has raised arguments relating to a warranty, but it is not clear as to whether Brazilian law or United States law applies to this argument and it is unnecessary to resolve these issues for the purposes of the present Complaint.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any response to the Complaint and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant’s JUUL mark is the dominant and only distinctive element of the disputed domain name. The word and letters “juul” have no obvious meaning. In the absence of any explanation to the contrary and it is clear that the disputed domain name was chosen and registered without license or permission to reference Complainant and its products and to take predatory advantage of its reputation.
The website to which the disputed domain name resolves purports to offer Complainant’s goods and this is also indicative that the registrant of the disputed domain name was aware of Complainant and its products and mark when the disputed domain name was registered.
This Panel finds also that on the balance of probabilities Respondent is using Complainant’s mark to lure Internet traffic to his website. The use of Complainant’s mark is not necessary and goes beyond nominative use as alleged by Complainant.
On the evidence adduced it is clear that Respondent is using the disputed domain name in bad faith to lure Internet users to Respondent’s own website creating the impression that Respondent’s website is authorized or licensed by Complainant or is in some way associated with Complainant.
This Panel finds therefore that on the balance of probabilities, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of his web site and is therefore using the disputed domain name in bad faith.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. As Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) it is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juulkov.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________
James Bridgeman SC
Panelist
Dated: April 1, 2020
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