JUUL Labs, Inc. v. Biosdesign / Alexander Oben
Claim Number: FA2003001889415
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Susanna P. Lichter of Wilson Sonsini Goodrich & Rosati, California, United States. Respondent is Biosdesign / Alexander Oben (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <officialjuulpods.com>, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 23, 2020; the Forum received payment on March 23, 2020.
On March 23, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <officialjuulpods.com> 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 March 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 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@officialjuulpods.com. Also on March 24, 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 April 18, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in its trademark registrations described below and its use of the JUUL mark to promote its electronic cigarette business and submits that it has an established a goodwill in the JUUL mark and other similar marks since first use as early as April 2015.
Complainant asserts that in the calendar year 2018 it posted sales of more than USD $1 billion and as of the beginning of 2019, it controlled approximately 75% of the US e-cigarette market share. In addition to convenience stores, and other retail outlets, Complainant also sells its products via its websites including those hosted at <juul.com>. <juulvapor.com> and <juullabs.com> which enjoy significant web traffic, with over 2 million unique monthly visitors as of September 2019.
In addition to the JUUL and JUULSALTS trademarks, Respondent claims ownership of the JUULPODS mark.
Complainant submits that the disputed domain name is confusingly similar and nearly identical to the JUUL and JUULPODS marks and is likely to cause consumer confusion. Complainant argues that the addition of generic term “official” 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 argues that Respondent’s use of the JUUL and JUULPODS marks in the disputed domain name is not nominative and can easily be avoided submitting that Respondent does not need to make use of the JUUL or JUULPODS marks in its domain name in order to identify his 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 refers to a print-out of the website to which the disputed domain name resolves which is annexed as evidence to the Complaint which purports to offer Complainant’s products for sale, extensively uses Complainant’s JUUL mark including with its distinctive stylized lettering and some content that is identical to that posted on Complainant’s own official website.
Complainant submits that Respondent has therefore used the disputed domain name to divert Internet users to a misleading website that prominently incorporates the JUUL and JUULPODS marks in its address, and is designed to capitalize on confusion between the respective Parties’ domain names and marks. Complainant argues that such diversion to a misleading website is not a legitimate, noncommercial or fair use, 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 submits that the disputed domain name was registered and is being used in bad faith because Respondent uses the disputed domain name to promise and/or sell unauthorized JUUL products and competitor’s products; Respondent’s site clearly displays the JUUL word mark; Respondent had no other reason to register the disputed domain name other than to exploit the JUUL brand; Respondent’s knowledge of Complainant and its JUUL offerings is also apparent from the content currently available on its site; and Respondent registered the disputed domain name long after Respondent developed rights in its JUUL marks, including JUULPODS.
Complainant submits that the disputed domain name to resolves to a website that clearly attempts to exploit the goodwill associated with RESPONDENT and its JUUL and JUULPODS marks. The website prominently displays JUUL products, as well as competitor’s products, which are purportedly for sale through Respondent’s web site.
Moreover, Respondent’s website prominently displays the stylized JUUL mark at the top of each page, an area customarily reserved for the brand name of the website source. Furthermore, the JUUL mark appears in the same stylized design as that employed by Complainant, namely, where the “J” and “L” appear as mirror images of each other and both appear as half of a “U”. Complainant claims that in addition to the JUUL name itself, this particular stylized design is becoming iconic of Complainant’s business and Respondent’s use of this stylization, furthers the implied association.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer and supplier of electronic cigarettes and related products. Its legal name was changed from Pax Labs, Inc. to Juul Labs, Inc. on June 13, 2017.
Complainant is the owner of a trademark registrations for the JUUL mark and the JUUL mark in combination with other elements. Complainant has adduced in evidence copies of the registration certificates showing that it the registered owner of
· United States registered trademark JUUL registration number 4,818,664, registered on September 22, 2015 on the Principal Register for goods in international classes 1, 30, and 34;
· United States registered trademark JUUL (stylized) , registration number 4,898,257, registered on February 09, 2016 on the Principal Register for goods in international class 34; and
· United States registered trademark JUULSALTS, registration number 5,667,074 registered on January 29, 2019 on the Principal Register for goods in international class 34.
Complainant has an established Internet presence and markets its products both online through its websites to which its domain names including <juul.com>. <juulvapor.com> and <juullabs.com> resolves as well as through other retail outlets.
The disputed domain was first registered on approximately March 14, 2020 and resolves to a website that purports to offer Complainant’s JUUL branded products for sale and contains advertising links to unrelated services provided by third parties.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name.
Respondent availed of a privacy service to conceal his identity on the published WhoIs and he was identified by the Registrar in its response to the FORUM’s said verification request.
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 has adduced uncontested evidence of its rights in the JUUL trademark acquired through its abovementioned trademark registrations. While it also asserts ownership of the JUUPODS mark it has not adduced any evidence of registered rights but there appears to be trademark use of this term on its website.
The disputed domain name consists of a combination of the elements “official”, “juul”, “pods” and the generic Top Level domain (“gTLD”) extension <.com>. Complainant’s JUUL trademark is the dominant and only distinctive element of the disputed domain name. Taken on their own or in combination the words “official” and “pods” lack any distinguishing character and for the purposes of comparison the gTLD <.com> extension may be ignored in the circumstances of this Complaint because a domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is confusingly similar to the JUUL mark in which Complainant has rights.
Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an uncontested 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; that Respondent has not acquired any trademark rights or legitimate interests in the term JUUL; that Complainant has not licensed or otherwise permitted Respondent to use the JUUL mark, or any confusingly similar mark, or to apply for or use any domain name incorporating the mark or a term confusingly similar to its JUUL mark; that Respondent’s use of the JUUL and JUULPODS marks in the disputed domain name is not nominative and could easily be avoided; that Respondent does not need to make use of the JUUL or JUULPODS marks in its domain name in order to identify his website; that the website to which the disputed domain name resolves extensively uses Complainant’s JUUL mark including with its distinctive stylized lettering and some content that is identical to that posted on Complainant’s own official website; and that Respondent has therefore used the disputed domain name to divert Internet users to a misleading website that prominently incorporates the JUUL and JUULPODS marks in its address, and is designed to capitalize on confusion between the respective parties’ domain names and marks.
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 these 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).
The disputed domain name was registered long after Complainant acquired its rights in the JUUL mark, at a time when Complainant had already acquired a substantial international reputation for its JUUL branded products. The word JUUL has no obvious meaning other than as Complainant’s trademark. Given that JUUL mark is the dominant and only distinctive element of the disputed domain name and that the element “pods” in the domain name refer to the type of products which Respondent markets it is improbable that the disputed domain name was registered for any reason other than to target and take predatory advantage of Complainant’s name, mark, reputation and goodwill. The subsequent use of the disputed domain name by Respondent supports this finding.
While Respondent has asserted that the disputed domain name has been used as the address of a website that purports to offer competing products for sale. Complainant has not adduced any evidence or pointed to any particular content on the website to support this assertion. The printout of the website which has been submitted in evidence does however illustrate that Respondent’s website generates links to third parties’ websites and services unrelated to Complainant’s business. Such use of Complainant’s mark in the disputed domain name to lure Internet users to third party websites constitutes bad faith use.
This Panel finds therefore that, on the balance of probabilities, Respondent is using the disputed domain name in an intentional attempt 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 finding is supported by the fact that the disputed domain name incorporates the work “official” which purports to indicate a status connected with Complainant and there is nothing on the website to which it resolves indicating otherwise.
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)(ii) it is entitled to the relief sought in the Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <officialjuulpods.com> domain name be TRANSFERRED from Respondent to Complainant.
________________________________________
James Bridgeman SC
Panelist
Dated: April 18, 2020
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