JUUL Labs, Inc. v. raymond Junior
Claim Number: FA2012001924267
Complainant is JUUL Labs, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is raymond Junior (“Respondent”), Unknown.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ejuulpod.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 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 <ejuulpod.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@ejuulpod.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 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 right in the JUUL and JUULPODS trademarks established through its ownership of the portfolio of trademark registrations described below and its extensive use of the marks and other related marks incorporating the element JUUL. Based on the Nielsen retail monthly sales data for vapor devices, Complainant sold 16.2 million devices and posted more than $1 billion in revenue in 2018. As of 2020, Complainant represented more than 50% of the US e-cigarette market share and had a market presence in more than a dozen countries.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s JUUL and JUULPODS trademarks as it contains the former in its entirety and merely omits the letter “s” while adding the letter “e” to the latter.
Complainant submits that the omission of the letter “s” and in addition of the letter “e” do not sufficiently distinguish the disputed domain name for the purpose of the Policy. Citing Bloomberg L.P. v. Baltic Consultants Ltd., FA0010000095834 (Forum Nov. 20, 2000) ("[t]he variation or addition of a single letter or generic word in Complainant's mark is precisely what the "Identical or Confusingly Similar" language of the [UDRP] envisions").
Complainant adds that the addition of the letter “e” signifies a reference to the word “electronic” which has direct relevance to the e-cigarette market.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name as he is not commonly known by the disputed domain name or by Complainant’s JUUL marks as has been shown when his identity was disclosed in the course of this proceeding.
Complainant asserts that Respondent is not affiliated with Complainant in any way and Respondent is not licensed by Complainant to use Complainant’s trademarks. Complainant adds that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA0411000361190 (Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name).
Complainant further alleges that Respondent is using the disputed domain name to divert Internet users to a misleading website that adopts Complainant’s JUUL and JUULPODS marks for its own brand identity which is designed to capitalize on confusion among Internet users to promote competing third-party vaporizer products at Respondent’s competing online store.
In this regard Complainant refers to a screenshot of the website to which the disputed domain name resolves on which Respondent purports to offer for sale wide-ranging products bearing the JUUL mark as well as competing products in a manner calculated and likely to confuse and mislead the public as to the source of Respondent’s website and services. Complainant submits that this constitutes passing off and therefore is not a fair, nominative, or otherwise legitimate use. See Mulberry Co. (Design) Ltd. v. Chen, D2010-1718 (WIPO Nov. 26, 2010) (“[The] disputed domain names are being used by the Respondent for websites which falsely appear to be affiliated, connected or associated with the Complainant. In this Panel’s view, such use and purpose of the disputed domain names without the authorization of the trade mark owner shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names or a bona fide offering of goods and services”).
Complainant submits that the disputed domain name was registered and is being used in bad faith alleging that the registrant had actual knowledge of Complainant and its rights when registration took place. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (“[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse”).
Complainant further alleges that by adopting a confusingly similar name as its sole brand and identity, failing to accurately disclose the absence of any relationship with Complainant, making confusing references to Complainant and displaying unduly prominent images of Complainant’s products and packaging at the online store to which the disputed domain name resolves, Respondent creates the false impression that its website originates with or is endorsed or certified by Complainant. “This is precisely the sort of conduct that falls under Policy ¶ 4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names.” MetroPCS, Inc. v. Robertson, FA0609000809749 (Forum Nov. 13, 2006) (finding bad faith where the respondent’s web site gave the false impression of being affiliated with the complainant).
Complainant adds that by promoting Respondent’s online store and competing vaporizer brands using a domain name and trade name confusingly similar to Complainant’s JUUL and JUUL PODS marks, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s marks. Complainant submits that such use of the disputed domain name by Respondent potentially diverts and disrupts Complainant’s business which illustrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See V Secret Catalogue, Inc. v. Bryant Little, FA0407000301728 (Forum Sept. 2, 2004) (“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”).
Complainant further submits that the promotion of competing products constitutes bad faith even if those products are compatible with JUUL devices even if actual JUUL products are also available. See e.g., Intex Recreation Corp. v. RBT, Inc., Weinstein, D2010-0119 (WIPO March 3, 2010) (ordering transfer where the respondent was offering both the complainant’s goods as well as those of competitors and stating “The Respondent argues that there was no intent to mislead consumers, because the content of the website associated with the Domain Name clearly identified products by manufacturer. But this does not change the fact that the Domain Name itself misleadingly suggests an affiliation with the Complainant and then leads the consumer to competing products sold by or through the Respondent. This abuse of the Complainant’s trademark for commercial gain fits the illustration of bad faith...”).
Complainant concludes that Respondent’s use of a WhoIs privacy shield for this commercial web site also evidences bad faith, citing Microsoft Corp. and Skype v. Contact Privacy Inc. Customer 0126766269, FA1303001491615 (Forum May 6, 2013) (“Respondent registered the disputed domain name using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. That alone justifies a finding of bad faith”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant produces of electronic smoking vaporizer devices and accessories which are distinguished by the JUUL trademark for which Complainant owns a large portfolio of registrations including the following:
· United States registered trademark JUUL, registration number 4,818,664, registered 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 October 2, 2018, for goods in international class 34;
· United State registered trademark JUULPODS registration number 5,918,490 registered on November 26, 2019 for goods in international class 34.
Complainant has an online presence and markets its products inter alia on its primary website at <juul.com> as well as <juulvapor.com> and <juullabs.com>.
The disputed domain name was registered on January 22, 2020 and resolves to an online shopping website.
There is no information about Respondent except for that which is provided in the Complaint, the Registrars WhoIs at the information provided by the Registrar to the Forum in response to the request for verification of the registration details of the heated domain name. Respondent availed of a privacy protection service to conceal his identity on the published WhoIs.
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 clear, convincing and uncontested evidence that it has rights in the JUUL and JUULPODS trademarks established through its ownership of the portfolio of trademark registrations described above and its extensive use of the marks and other related marks incorporating the element JUUL having sold 16.2 million devices and posted more than $1 billion in revenue in 2018, a market share of 50% of the US e-cigarette market in 2020, share and a market presence in more than a dozen countries.
The disputed domain name consists of Complainant’s JUUL trademark in its entirety and its JUULPODS trademark, merely omitting the letter “s” while adding the letter “e” to the JUULPODS mark.
Complaints JUUL mark is the initial, dominant and distinctive element of the disputed domain name; and the disputed domain name is almost identical to Complainant’s JULPODS mark. This Panel finds that neither the omission of the letter “s” nor the addition of the letter “e” distinguishes the disputed domain name for the purpose of the Policy.
In the circumstances of this case, the generic Top Level Domain extension <.com> may be ignored for the purposes of comparison because Internet users are likely to regard this as a necessary technical element for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the JUUL and JUULPODS trademarks in which complainant has rights and Complainant has therefore first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie that Respondent has no rights or legitimate interests in the disputed domain name submitting that;
· Respondent is not commonly known by the disputed domain name or by Complainant’s JUUL marks as has been shown when his identity was disclosed in the course of this proceeding;
· Respondent is not affiliated with Complainant in any way and Respondent is not licensed by Complainant to use Complainant’s trademarks;
· Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services;
· Respondent is using the disputed domain name to divert Internet users to a misleading website that adopts Complainant’s JUUL and JUULPODS marks for its own brand identity which is designed to capitalize on confusion among Internet users to promote competing third-party vaporizer products and Respondent’s competing online store;
· the screenshot of the website to which the disputed domain name resolves on which Respondent purports to offer for sale wide-ranging products bearing the JUUL mark as well as competing products in a manner calculated and likely to confuse and mislead the public as to the source of Respondent’s website and services which cannot be considered a fair, nominative, or otherwise legitimate use.
Notwithstanding Respondent’s failure to file a Response or provide any defense in this proceeding, it could be argued that Complainant has alleged but has not adduced evidence that Respondent is not a bona fide reseller of Complainant’s goods and that the goods presented on Respondent’s website appear not to be Complainant’s genuine trademarked goods.
Since 2001, the decision in Oki Data Americas, Inc. v. ASD, Inc. WIPO 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. 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 and therefore it does not accurately disclose Respondent’s relationship with Complainant. Also significantly, Respondent purports to offer the third-party competing products for sale in its online store. Additionally, Respondent has not responded to this Complaint. In these circumstances Respondent therefore could not avail of a defense based on the Oki Data principles.
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).
It is implausible that the disputed domain name was registered without knowledge of Complainant, its rights and its mark. The disputed domain name itself, and the purposes to which it has been put, as shown in the screenshot of Respondent’s website adduced in evidence by Complainant, show that on the balance of probabilities disputed domain name was chosen and registered in order to target the goodwill of Complainant in the JUUL and JUULPODS trademarks.
The evidence shows that Respondent is using the disputed domain name that is intentionally confusingly similar to Complainant’s JUUL and JUULPODS trademarks to attract Internet traffic to his online store by taking predatory advantage of Complainant’s goodwill and reputation in order to profit from sales, not only of JUUL branded products but also purporting to offer competing third-party “JUUL Compatible pods for sale”.
This Panel finds therefore that on the balance of probabilities by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site or location and of the products that Respondent purports to offer for sale on his online shop.
As this Panel has found that the disputed domain name was registered and has been used in bad faith Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy sought in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ejuulpod.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: January 5, 2021
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