JUUL Labs, Inc. v. Mary Ghandir
Claim Number: FA2012001924246
Complainant is JUUL Labs, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Mary Ghandir (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulpodshop.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 8, 2020; the Forum received payment on December 8, 2020.
On December 9, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <juulpodshop.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 December 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@juulpodshop.com. Also on December 10, 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 January 4, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Juul Labs, Inc., operates a nicotine vaporizer company that offers adult smokers an alternative method of nicotine satisfaction to cigarettes.
Complainant has rights in the JUUL and JUULPODS marks through registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <juulpodshop.com> domain name is confusingly similar to Complainant’s JUUL and JUULPODS marks, only differing by the addition of the generic term “shop” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <juulpodshop.com> domain name as it is not commonly known by the at-issue domain name and is neither an authorized user nor licensee of the JUUL or JUULPODS marks. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the at-issue domain name to divert internet users to a website made out to appear as if it is sponsored by Complainant where Respondent passes off as Complainant. The website purports to offer products for sale that compete with Complainant’s products. Further, Respondent may be engaged in a phishing scheme to obtain internet user’s login information.
Respondent registered and uses the <juulpodshop.com> domain name in bad faith. Respondent has been involved in a previous UDRP decision where Respondent was found to have acted in bad faith. Additionally, Respondent diverts internet users from Complainant’s website, disrupting Complainant’s business interests for commercial gain. Respondent also may be using the disputed domain name to conduct a phishing scheme, which further evinces bad faith. Further, Respondent registered and uses the disputed domain name with actual knowledge of Complainant’s rights in the JUUL and JUULPODS marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the JUUL and JUULPODS trademarks.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the JUUL and JUULPODS trademarks.
Respondent uses the <juulpodshop.com> domain name to pretend it is associated with Complainant in furtherance of purporting to offer merchandise that directly competes with or is identical to Complainant’s products, as well as to facilitate a phishing scheme.
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”).
The at-issue domain name is confusingly similar or identical to a trademark in which Complainant has rights.
Complainant’s USPTO registration for either JUUL or JUULPODS is sufficient to show it has rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <juulpodshop.com> domain name contains both Complainant’s JUUL and JUULPODS trademarks. In the at-issue domain name Complainant’s JUULPODS mark is followed is the term “hop” (sounding as “shop” when read adjacent to the last letter of the trademark) with the resulting string followed by the top-level name “.com.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish <juulpodshop.com> from Complainant’s JUULPODS trademark or for that matter Complainant’s JUUL trademark under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s domain name is confusingly similar to each of Complainant’s JUUL and JUULPODS trademarks. See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Mary Ghandir” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <juulpodshop.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <juulpodshop.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Respondent uses the confusingly similar domain name to address a website displaying Complainant’s trademarks and dressed to appear as if it is sponsored by Complainant. Respondent uses the website to purport to sell products that compete with, or maybe identical to, Complainant’s products. Respondent’s use of the confusingly similar domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Fadal Engineering, LLC v. DANIEL STRIZICH, INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Likewise, using the domain name to facilitate a phishing scheme, as discussed elsewhere herein, is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <juulpodshop.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent attempts to divert internet users from Complainant’s official website(s) by using the confusingly similar <juulpodshop.com> domain name and a website appearing to be sponsored by Complainant to offer competing products and Complainant’s own products for sale. Doing so is disruptive to Complainant’s business and demonstrates Respondent’s bad faith registration and use of the <juulpodshop.com> domain name pursuant to Policy ¶¶ 4(b)(iii) and (iv). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Hewlett-Packard Co. v. Ali, FA 353151 (Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Additionally, the Panel finds that Respondent uses the at-issue domain name to phish for the personal information of <juulpodshop.com> website visitors. Complainant shows that, at least in some instances, Respondent was not actually fulfilling orders from website visitors. However the website nevertheless facilitated visitors entering their username and password into a web form controlled by Respondent. Respondent’s phishing endeavor is further indicative of Respondent’s bad faith per Policy ¶ 4(a)(iii). See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”); see also, Morgan Stanley v. Xu, FA1600534 (Forum Feb 16, 2015) (“Respondent’s use of the disputed domain name in furtherance of a phishing scheme constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii)”);
Finally, Respondent registered <juulpodshop.com> knowing that Complainant had trademark rights in the JUUL and JUULPODS marks. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademarks and from Respondent’s use of the domain name as discussed elsewhere herein. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <juulpodshop.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering 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 <juulpodshop.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 5, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page