JUUL Labs, Inc. v. Lucas Norberg / JUULHIT
Claim Number: FA2009001913489
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Susanna P. Lichter of Wilson Sonsini Goodrich & Rosati, California, United States. Respondent is Lucas Norberg / JUULHIT (“Respondent”), Sweden.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulhit.com>, registered with Wix.com Ltd..
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 September 23, 2020; the Forum received payment on September 23, 2020.
On September 29, 2020, Wix.com Ltd. confirmed by e-mail to the Forum that the <juulhit.com> domain name is registered with Wix.com Ltd. and that Respondent is the current registrant of the name. Wix.com Ltd. has verified that Respondent is bound by the Wix.com Ltd. 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 October 1, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 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@juulhit.com. Also on October 1, 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. Respondent did however send an email to the Forum, see below.
On October 27, 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 has used the JUUL mark to promote its vaporizer business since as early as April 2015. As background, JUUL is an alternative for adult smokers. JUUL delivers nicotine satisfaction akin to a cigarette in a format that’s simple and easy to use. JUUL’s proprietary nicotine salt formula, design and temperature regulation result in an experience that it believes created the first viable alternative to cigarettes for adult smokers. Since the company’s launch in mid-2015, Complainant’s 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 products 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 through registration of the mark in the United States in 2015.
Complainant alleges that the disputed domain name is identical or confusingly similar to its JUUL mark as it contains the JUUL mark in its entirety and merely adds the generic term “hit” with the generic top-level domain (gTLD) “.com.”
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the JUUL mark, nor has Respondent been authorized by Complainant to use the JUUL mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent’s website causes Internet users to mistakenly believe Respondent’s website is affiliated with Complainant by advertising Complainant’s products for sale on an unauthorized basis.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent’s website disrupts Complainant’s business as Respondent registered the disputed domain name primarily for the purpose of deceiving consumers as to the affiliation of Respondent’s website by claiming to be Respondent and selling unauthorized products. Respondent had actual knowledge of Complainant’s rights to the JUUL mark prior to registering the disputed domain name as evidenced by: (1) Respondent using the disputed domain name to promise and/or sell unauthorized products of Complainant, (2) Respondent holding itself out as JUULHIT, and (3) Respondent having no other reason to register the disputed domain name than to exploit Complainant’s brand. Respondent’s knowledge of Complainant and its JUUL offerings is also apparent from the content currently available on its site
B. Respondent
Respondent failed to submit a Response in this proceeding. It its email to the Forum, Respondent states, in pertinent part: “I took down my website and if [JUUL] want the domain they can have it”.
For the reasons set forth below, the Panel will not make any findings of fact.
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.
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."
In the present case, the parties have both asked for the domain name to be transferred to the Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.
See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
Given the common request of the Parties, it is Ordered that the <juulhit.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: October 27, 2020
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