JUUL Labs, Inc. v. alexia gomez
Claim Number: FA2109001964239
Complainant is JUUL Labs, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is alexia gomez (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <premiumjuulpodstore.com>, registered with NameCheap, Inc.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 18, 2021; the Forum received payment on September 18, 2021.
On September 20, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <premiumjuulpodstore.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 September 21, 2021, the Forum served the Complaint and all annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 2021 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@premiumjuulpodstore.com. Also on September 21, 2021, 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 October 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant, JUUL Labs, Inc., operates makes, manufactures, and sells vaporizers as an alternative for adult smokers. Complainant has rights in the JUUL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 4,818,664, registered Sep. 22, 2015). The disputed domain name is identical or confusingly similar to Complainant’s mark, only differing by the addition of the generic terms “premium” and “pod store” along with appending the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the JUUL mark. Additionally, Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off and confuse Internet users into believing Respondent is Complainant or is somehow affiliated with Complainant, and to display products from Complainant and its competitors.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to display products from Complainant and its competitors, which may demonstrate bad faith disruption and attraction for commercial gain. Additionally, Respondent attempts to pass itself off as Complainant using the disputed domain name. Complainant also points to Respondent’s use of a privacy service when registering the disputed domain name as evidence of bad faith. Finally, Complainant contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the JUUL mark.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The disputed domain name was registered on September 13, 2021.
2. Complainant has established rights in the JUUL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 4,818,664, registered Sep. 22, 2015).
3. Respondent attempts to pass itself off as Complainant by using Complainant’s JUUL mark, logo, and product images on the disputed domain name’s resolving website.
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 asserts rights in the JUUL mark through its registration with the USPTO. Registration of a mark with a trademark agency, such as the USPTO, is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 4,818,664, registered Sep. 22, 2015). Therefore, the Panel finds Complainant has rights in the JUUL mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <premiumjuulpodstore.com> is identical or confusingly similar to Complainant’s JUUL mark, merely adding the generic terms “premium” and “pod store” along with adding the “.com” gTLD. Such changes may not sufficiently negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore, the Panel finds the disputed domain name is identical or confusingly similar to Complainant’s JUUL mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the JUUL mark. When response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies “alexia gomez” as the registrant of the disputed domain name. Additionally, nothing in the record rebuts Complainant’s contention that it never authorized Respondent’s use of the JUUL mark. As such, the Panel finds Respondent is not commonly known by the disputed domain name, and therefore lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent fails to use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use, but rather to pass off as Complainant and display products from both Complainant and its competitors. Previous Panels have held that such use of an infringing domain name does not qualify as either a bona fide offer or as a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See 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).”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the disputed domain name as evidence of Respondent’s illegitimate use of the disputed domain name. Therefore, the Panel finds that Respondent fails to use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent uses the disputed domain name to sell products from Complainant and its competitors. Such use may demonstrate bad faith disruption of Complainant’s business and attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As previously noted, Complainant provides screenshots of the disputed domain name as evidence that Respondent displays products from Complainant and its competitors. Therefore, the Panel finds bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant also contends that Respondent uses the disputed domain name to pass itself off as Complainant. Such use of an infringing domain name may also demonstrate bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Screenshots suggest that Respondent may attempt to pass itself off as Complainant by using Complainant’s JUUL mark, logo, and product images on the resolving website. The Panel agrees that Respondent attempts to pass itself off as Complainant, and it finds bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the JUUL mark. Per Policy ¶ 4(a)(iii), registration of an infringing domain name with actual knowledge of another’s trademark rights is sufficient to establish bad faith, and may be shown by the notoriety of a mark and the use Respondent makes of the disputed domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant sells vaporizers and other nicotine products, and Respondent offers the same products, even offering some of Complainant’s products directly on its website. The Panel infers, due to the manner of use of the disputed domain name and the notoriety of Complainant’s mark that Respondent’s actual knowledge was present at the time of registering the disputed domain name, and thus it finds bad faith registration of the disputed domain name under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <premiumjuulpodstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: October 22, 2021
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