JUUL Labs, Inc. v. Welch / Brandon Welch
Claim Number: FA2010001916391
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Susanna P. Lichter of Wilson Sonsini Goodrich & Rosati, United States. Respondent is Welch / Brandon Welch (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulpodsvape.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 October 9, 2020; the Forum received payment on October 9, 2020.
On October 12, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <juulpodsvape.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 October 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 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@juulpodsvape.com. Also on October 13, 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 November 4, 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 claims rights in the JUUL mark established though its ownership of the trademark registrations described below and extensive use of the mark on its vaporizers and accessories since Complainant was established in 2015. By of the end of 2018, Complainant had captured approximately 75% of the US e-cigarette market share. It launched in an additional eight country markets in 2018. By 2019, for the calendar year 2018, Complainant posted more than $1 billion in annual revenue. Complainant also claims rights in the JUULPODS mark but while this term appears on its website, Complainant has not adduced any evidence of trademark registrations in relation to JUULPODS.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s JUUL and JUULPODS trademarks mark arguing that the addition of generic term “vape” 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 submits that Respondent has no rights or legitimate interests in the infringing 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. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration)).
Complainant asserts that it has not licensed or otherwise permitted Respondent to use the JUUL marks, or any confusingly similar mark, or to apply for or use any domain name incorporating the mark or a term confusingly similar to the JUUL marks. See Telstra Corp. Ltd. v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 13, 2000) (respondent had no rights or legitimate interests to use domain name because respondent was not licensed or otherwise permitted to use complainant’s trademark).
Complainant further asserts that Respondent has no affiliation with JLI and has developed no rights in the JUUL marks.
Respondent’s use of the JUUL and JUULPODS marks in the infringing domain name is not nominative and can easily be avoided—Respondent does not need to make use of the JUUL or JUULPODS marks in its own domain name 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).
Referring to the website to which the disputed domain name resolves which purports to offer for sale JUUL branded vaporizer products as well as “JUUL Compatible Products”, Complainant argues that Respondent is not making a bona fide use of the disputed domain name because it resolves to a misleading website that is designed to capitalize on confusion between the disputed domain name and Complainant’s mark in order to promote and sell products from Complainant’s competitors under a banner that says “JUUL.” 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 Respondent had actual knowledge of Complainant’s prior rights in, and the fame of, the JUUL marks when the disputed domain name was registered and argues that Respondent is using the disputed domain name in an attempt to take advantage of the goodwill in the JUUL mark by registering a domain name that incorporates the JUUL mark and is confusingly similar to the JUUL mark. Complainant adds that Respondent is using the disputed domain name to exploit, to compete with, and to disrupt Complainant’s business by promoting its own website with the JUUL mark in an effort to mislead consumers and/or promote the sale of unauthorized JUUL products.
Complainant alleges that Respondent registered the disputed domain name in bad faith after Complainant first adopted and began using the JUUL mark, arguing that Respondent clearly had actual knowledge of Complainant’s rights in its name when the disputed domain name was registered and that it was registered in order to take advantage of the value and goodwill associated with the JUUL marks under ICANN Policy ¶ 4(a)(iii). 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”).
Referring to a screenshot of the website to which the disputed domain name resolves, Complainant submits that Respondent uses the disputed domain name to lure Internet users to Respondent’s own website that promises unauthorized JUUL products and products from Complainant’s competitors. Internet users who are directed to this site are likely to believe that they have successfully accessed a website originating from or approved by Complainant. Complainant argues that such 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 adds that even if Respondent’s website were not engaged in the sale of unauthorized JUUL products and products from Complainant’s competitors, Respondent’s use of the disputed domain name as the address of a website to divert Internet traffic and disrupt a third-party business—as is the case here—constitutes bad faith under Policy ¶ 4(b)(iii).
Complainant further argues that Respondent’s use of the disputed domain name is likely to cause consumer confusion given that the unauthorized JUUL branded products sold by Respondent are materially different than Complainant’s JUUL branded products. A material difference between legitimately sold products 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).
Complainant asserts that its warranty expressly excludes “Devices or charging cases purchased outside of the United States or from unauthorized retailers” and in this regard refers to the statement in its terms and conditions. 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.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a producer of vaporizer devices, otherwise called e-cigarettes and accessories using the JUUL trademark, and owns the following trade mark registrations:
· United States registered trademark JUUL, registration number 4,818,664, registered on the Principal Register on September 22, 2015 for goods in international classes 1, 30, and 34.
· United States registered trademark JUUL, registration number 4,898,257, registered on the Principal Register on February 9, 2016 for goods in international class 34.
The disputed domain name was registered on April 10, 2020 and resolves to a website offering JUUL branded products for sale at discounted prices as well as “JUUL Compatible Pods”.
There is no information available about Complainant except for the information provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for details of the registration of the disputed domain name.
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 provided clear, convincing and uncontested evidence of its rights in the JUUL trademark established though its ownership of the trademark registrations described above and its use in its vaporizer and accessories business reaching an annual revenue of $1 billion since its establishment in 2015.
Complainant also claims rights in the JUULPODS mark and while it uses the term on its website, arguably as a trademark, it has not adduced any evidence of ownership of any trademark registration for the term.
The disputed domain name <juulpodsvape.com> consists of Complainant’s JUUL mark in combination with the terms “pods” and “vape” and the generic Top-Level Domain extension <.com>.
Complainant’s JUUL mark is the initial, dominant and only distinctive element in the disputed domain name. The elements “pods” and “vape” are descriptive of vaporizers and adds no distinctive character to the disputed domain name.
For the purposes of evaluating confusing similarity the gTLD <.com> extension may be ignored in the circumstances of this Complaint because as a top level domain extension, it would be 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 trademark JUUL in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name submitting:
· that Respondent is not known by the name JUUL and has not acquired any trademark rights or legitimate interests in the term JUUL;
· that it has not licensed or otherwise permitted Respondent to use the JUUL marks, or any confusingly similar mark, or to apply for or use any domain name incorporating the mark or a term confusingly similar to the JUUL marks;
· that Respondent has no affiliation with Complainant and has developed no rights in the JUUL marks;
· that Respondent’s use of the JUUL and JUULPODS marks in the disputed domain name is not nominative and can easily be avoided, which is to say that Respondent does not need to make use of the JUUL or JUULPODS mark in its own domain name in order to identify its website;
· that the website to which the disputed domain name resolves which purports to offer for sale JUUL branded vaporizer products as well as “JUUL Compatible Products” proving that Respondent is not making a bona fide use of the disputed domain name because it is a misleading Internet users and is designed to capitalize on confusion between the disputed domain name and Complainant’s mark.
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.
The screenshot of the website to which the disputed domain name resolves purports to offer “JUUL Compatible” products as well as JUUL products, so Respondent could not avail of an Oki Data defense.
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 or provide any defense to Complainant’s allegations 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).
The disputed domain name was registered on April 10, 2020, long after Complainant first adopted and began using the JUUL mark and had built is business with an annual revenue of more than $1 billion by the end of 2018. The disputed domain name is a combination of Complainant’s JUUL mark and the descriptive elements “pods” and “vape” that reference Complainant’s vaporizer business.
This Panel finds that on the balance of probabilities the disputed domain name was registered with Complainant’s mark in mind in order to target and take predatory advantage of Complainant’s goodwill and reputation.
As stated above the screenshot of the website to which the disputed domain name resolves shows that Respondent is purporting to offer not only JUUL branded products but also competing “JUUL Compatible” products. This is sufficient to establish that the disputed domain name is being used in bad faith as the address of a website to lure Internet traffic away from Complainant’s website and thereby use Complainant’s reputation and goodwill to offer competing products.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, this Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juulpodsvape.com> domain name be TRANSFERRED from Respondent to Complainant.
___________________________________
James Bridgeman SC
Panelist
Dated: November 5, 2020
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