DECISION
JUUL Labs, Inc. v. Faruk Pazarlama
Claim Number: FA2401002078694
PARTIES
Complainant is JUUL Labs, Inc. ("Complainant"), represented by Hillary Schroeder of Pranger Law PC, California, USA. Respondent is Faruk Pazarlama ("Respondent"), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <juulturkiye1.com> and <jullturkiye2.com>, registered with Name.com, Inc.
PANEL
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.
The Honorable Neil Anthony Brown KC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on January 11, 2024; Forum received payment on January 11, 2024.
On January 11, 2024, Name.com, Inc. confirmed by e-mail to Forum that the <juulturkiye1.com> and <jullturkiye2.com> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 January 12, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2024 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@juulturkiye1.com and postmaster@jullturkiye2.com. Also on January 12, 2024, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On February 7, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant made the following contentions.
1. Complainant is a United States company that is a leading provider of products that deliver nicotine satisfaction akin to a cigarette in a format known as a vaporizer and widely known as JUUL and related goods and services and has been so engaged since 2015.
2. Complainant has registered trademark rights in the JUUL trademark by virtue of its registration of the trademark with the United States Patent and Trademark Office ("USPTO"), registration Number 4,818, 664, registered on September 22, 2015 and other national and international registrations for JUUL and derivatives including its distinctive JUULpod Icon (collectively "the JUUL trademark").
3. The JUUL trademark has become prominent, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.
4. Complainant has registered numerous domain names such as <juul.com>,<juul.co.uk> and <juul.ca> which it uses in its business and in particular for websites on which it advertises and markets legitimate JUUL products and services internationally.
5. Respondent registered the <jullturkiye2.com> domain name on December 8, 2022 and the <juulturkiye1.com> domain name on March 9, 2023 ( "the disputed domain names").
6. In so doing, Respondent has in effect incorporated in the disputed domain name <jullturkiye2.com> the entirety of Complainant's JUUL trademark with a minor spelling alteration from "JUUL" to "JULL", that does not detract from the dominant meaning of the domain name, which is that it is invoking the JUUL trademark, together with the word "turkiye", meaning Turkey and the numeral "2" and it has added the generic top-level domain ("gTLD") ".com." The Respondent has also incorporated in the disputed domain name <juulturkiye1.com>, the entirety of Complainant's JUUL trademark, together with the word "turkiye", meaning Turkey and the numeral "1". None of those minor additions negates a finding of confusing similarity that is otherwise present, as it is in the case of the two domain names at issue. The disputed domain names are confusingly similar to the Complainant's JUUL trademark.
7. Respondent has caused the disputed domain names to resolve to websites where it purports to advertise and sell JUUL products and competing products without any authorization or licence to do so.
8. By that means, the Respondent:
(a) is not commonly known by the domain names;
(b) displays and offers for sale unauthorized products without authority;
(c) has created domain names that are in breach of the Complainant's JUUL trademark that it has owned and used in business since at least 2017 as Respondent well knew;
(d) has advertised purported JUUL products and competing products;
(e) has competed with the online store in which the Complainant sells its authorized products;
(f) engaged in conduct that is not a fair, nominative or otherwise legitimate use;
(g) impersonates, imitates and passes itself off as the Complainant; and
(h) infringes the Complainant's JUUL trademark.
9. By reason of the matters aforesaid, the Respondent has no rights or legitimate interests in the disputed domain names.
10. The Respondent has registered and used the disputed domain names in bad faith. That is so because the Respondent:
(a) registered the confusingly similar domain names with actual knowledge of the Complainant and its JUUL trademark;
(b) clearly had actual knowledge of the Complainant and its JUUL trademark when Respondent registered the domain names and used them to purport to sell JUUL products without any authorization or licence to do so;
(c) has intentionally attempted to attract, for commercial gain, internet users to the resolving websites by creating confusion with the JUUL trademark within the meaning of Policy ¶4(b) (iv);
(d) has sought to divert internet users away from the Complainant and its authorized products and to the Respondent and its competing and unauthorized products;
(e) has engaged in conduct showing that it intended to disrupt the Complainant's business within the meaning of Policy¶4(b) (iii);
(f) has shown by its past conduct that it is a repeat offender and will continue to pass itself off as the Complainant.
(g) has, by virtue of all of the facts, shown that it registered and used the disputed domain names in bad faith.
11. The Complainant has cited numerous prior UDRP decisions to support its contentions.
12. It is therefore submitted by the Complainant that it has shown all of the elements that it must establish and that the domain names should be transferred from the Respondent to the Complainant.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
FINDINGS
1.Complainant is a United States company that is a leading provider of products that deliver nicotine satisfaction akin to a cigarette in a format known as a vaporizer and widely known as JUUL and related goods and services and has been so engaged since 2015.
2. Complainant has established by the evidence that it has registered trademark rights in the JUUL trademark by virtue of its registration of the trademark with the United States Patent and Trademark Office ("USPTO"), registration Number 4,818,664, registered on September 22, 2015 and other national and international registrations for JUUL and derivatives including its distinctive JUULpod Icon (collectively "the JUUL trademark").
3.The JUUL trademark has become prominent, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.
4. Respondent registered the <jullturkiye2.com> domain name on December 8, 2022 and the <juulturkiye1.com> domain name on March 9, 2023 ( "the disputed domain names").
5. Respondent has caused the disputed domain names to resolve to websites where it purports to advertise and sell JUUL products and competing products without any authorization or licence to do so.
6. By reason of the matters aforesaid and as demonstrated by the evidence, the disputed domain names are confusingly similar to the Complainant's JUUL trademark, the Respondent has no rights or legitimate interests in the domain names and the domain names have been registered and used by the Respondent in bad faith.
7. Accordingly, the disputed domain names should be transferred to the Complainant.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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: 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").
Identical and/or Confusingly Similar
The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. Complainant has established by evidence that Complainant has registered trademark rights in the JUUL trademark by virtue of its registration of the trademark with the United States Patent and Trademark Office ( "USPTO"), registration Number 4,818,664, registered on September 22, 2015 and other national and international registrations for JUUL and derivatives including its distinctive JUULpod Icon (collectively "the JUUL trademark").
The next question that arises is whether the disputed <jullturkiye2.com> and <juulturkiye1.com domain names are identical or confusingly similar to the Complainant's JUUL trademark. The Panel finds that the disputed domain names are confusingly similar to the JULL trademark. In formulating the domain names, the Respondent has incorporated in the disputed domain name <jullturkiye2.com> the entirety of Complainant's JUUL trademark with a minor spelling alteration for "JUUL" to "JULL" that does not detract from the dominant meaning of the domain name, which is that it is invoking the JUUL trademark, together with the word "turkiye", meaning Turkey and the numeral "2" and it has added the generic top-level domain ("gTLD") ".com." The Respondent has also incorporated in the disputed domain name <juulturkiye1.com>, the entirety of Complainant's JUUL trademark, together with the word "turkiye", meaning Turkey and the numeral "1" and the same Top Level Domain. None of those minor additions negates a finding of confusing similarity that is otherwise present, as it is in the case of the two domain names at issue. The Generic Top Level Doman ".com" is ignored for the purposes of the comparison being made, as all domain names have that requirement.
Taken as a whole, the domain names mean and would be interpreted by internet users to mean that it is copying the JUUL trademark and invoking the Complainant and its JUUL trademark and its use by the Respondent in Turkey with the implied approval of the Complainant, which was not the case. It is therefore clear that the domain names are similar to the trademark and confusingly so.
The disputed domain names are therefore confusingly similar to the Complainant's JUUL trademark under Policy ¶ 4(a)(i).
The Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations:
(a) the Respondent has chosen to take the Complainant's JUUL trademark and to use it in its domain names, making only the additions referred to above that do not negate a finding that the domain names are confusingly similar to the trademark, generating the clear impression that the domain names are referring to and invoking the Complainant's JUUL trademark and the sale of merchandise sold under that name and that the Respondent is authorized to do so. The Respondent had no right to do any of this, meaning that there is no foundation at all for finding that it had the right to do so or that it gave the Respondent any legitimate interest in the domain names so created;
(d) having registered the disputed domain names, the Respondent set about causing them to resolve to websites which purport to advertise and sell JUUL products without any authorization or licence to do so and to advertise and sell competing products under the guise of the Complainant's trademark.
(e) this conduct was a clear infringement of the Complainant's JUUL trademark;
(f) the evidence of these matters is contained in the Complainant's Exhibits E and F. The Complainant in those exhibits shows products purporting to be legitimate and official JUUL products, frequent use of the JUUL trademark, a shipping cart, prices, a privacy policy, a log-in for accounts, reviews of the products, registration of devices, facilities for buying the products and all of the other accoutrements that a buyer would expect to see on a website of this nature designed to give it an air of authenticity. All of this evidence shows an intention to use the Complainant's trademark to pretend that the Respondent is the Complainant or is conducting business with the permission of the Complainant and of course the intention to sell goods under the imprimatur of the Complainant's name and trademark;
(g) in all, the only conclusion that can be reached on the evidence is that the Respondent is brazenly using the Complainant's trademark and name to make money by offering the same, counterfeit or competing products to those of the Complainant. It is clearly deceptive because the whole thrust of the offer is that they are legitimate JUUL products that are being offered either by the Complainant or with its approval, which is an entirely false assertion;
(h) the evidence also shows that the Respondent is not commonly known by the domain names;
(i) the evidence also shows that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Indeed, the opposite is the case, as the evidence shows that the Respondent is not using them for a bona fide offering of goods or services but to resolve to websites and thus falsely assert that it can offer and sell legitimate JUUL goods and services promoted on those websites. This conduct cannot give rise to a right or legitimate interest in the domain names;
(j) the evidence also shows that the domain names are not being used for a legitimate non-commercial or fair use; the use of the domain names has been demonstrated to be illegitimate; it also cannot be said to be non-commercial in any sense as the domain names are clearly intended to be used by the Respondent for a financial purpose, namely to make money; nor is it fair, as it is clearly unfair to use a trademark without permission of the trademark owner and to pretend that it is being used with the approval of the Complainant as trademark owner;
(k) the evidence shows that there is no relationship between the Complainant and the Respondent and that the Complainant has not authorized or licensed the Respondent to register the domain names or to use its JUUL trademark in any way;
(l) the Complainant and the Respondent are not affiliated, connected, or associated with each other;
(m) all of the other grounds relied on by the Complainant and set out above have been made out on the evidence;
(n) all of the above considerations disprove any suggestion that the Respondent has a right or legitimate interest in the disputed domain names.
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 does not have a right or legitimate interest in the disputed domain names.
The Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain names were registered and used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) are not exclusive but that UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
The Complainant has submitted that the Respondent has registered and used the disputed domain names in bad faith on several grounds, namely that the Respondent:
(a) registered the confusingly similar domain names with actual knowledge of the Complainant and its JUUL trademark;
(b) clearly had actual knowledge of the Complainant and its JUUL trademark when Respondent registered the domain names and used them to purport to sell JUUL and competing products without any authorization or licence to do so;
(c) has intentionally attempted to attract, for commercial gain, internet users to the resolving websites by creating confusion with the JUUL trademark within the meaning of Policy ¶4(b) (iv);
(d) has sought to divert internet users away from the Complainant and its authorized products and to the Respondent and its competing and unauthorized products;
(e) has engaged in conduct showing that it intended to disrupt the Complainant's business within the meaning of Policy¶4(b) (iii);
(f) has shown by its past conduct that it is a repeat offender and will continue to pass itself off as the Complainant; and
(g) has, by virtue of all of the facts, shown that it registered and used the disputed domains names in bad faith.
The Panel finds that each of the grounds relied on by the Complainant has been made out by the detailed case presented by the Complainant and it is not necessary to repeat all of the evidence that points unequivocally to that conclusion.
The Panel will add, however, that the Respondent has registered and used the domain names in bad faith because the evidence shows that the Respondent:
(a) clearly had actual knowledge of the Complainant and its JUUL trademark when it registered and used the domain names; that is because the JUUL trade mark is obviously well known and the Respondent must have had actual knowledge of it, because of its fame and because the Respondent took the mark, made specific additions to it to attract potential buyers of merchandise in Turkey and used it in its domain names and websites to pass itself off as the Complainant and mislead internet users, none of which could have been perpetrated without actual knowledge of the trademark;
(b) created websites that claimed to be an online store where buyers could legitimately purchase the Complainant's JUUL branded products or competing products, which was calculated to give the appearance of an association with the Complainant but which in reality was a fraud on potential customers;
(c) used the offending website to display and offer for sale what purport to be the Complainant's trademarked products without authority;
(d) intentionally attempted to attract, for commercial gain, internet users to the resolving websites by creating confusion with the JUUL trademark within the meaning of Policy ¶4(b) (iv), again to make money; the Respondent obviously tried to pretend that it was the Complainant or was authorized by it and set about confusing and misleading internet users; in particular, the Respondent has used the domain names and their resolving website to display and offer for sale what purport to be the Complainant's trademarked products without authority;
(e) moreover, it set about engaging in conduct that showed it was intending to disrupt the Complainant's business within the Policy ¶4(b) (iii);
(f) has shown by its past conduct that it is a repeat offender and will continue to pass itself off as the Complainant. This is verified by the Complainant's evidence that the Respondent has been involved in several UDRP cases as Respondent with a remarkable lack of success, notably JUUL Labs, Inc. v. Faruk Pazarlama, FA 2015840 (Forum Nov. 13, 2022) (transfer); JUUL Labs, Inc. v. Faruk Pazarlama, FA 1940178 (Forum Apr., 28, 2021) (transfer); JUUL Labs, Inc. v. Faruk Pazarlama, FA 1913817 (Forum Oct. 28, 2020) (transfer); JUUL Labs, Inc. v. Faruk Pazarlama, FA 1908002 (Forum Sept. 14, 2020) (transfer); JUUL Labs, Inc. v. Faruk Pazarlama, FA 1884222 (Forum March 18, 2020) (transfer); JUUL Labs, Inc. v. Faruk Pazarlama, FA 1869241 (Forum Dec. 9, 2019) (transfer). Despite these adverse findings, the Respondent does not seem to have learnt its lesson, and they show its disposition to register and use domain names in bad faith in breach of the UDRP, as has been shown again in the present case; and
(g) all of the other grounds relied on by the Complainant have been well and truly proven by the evidence.
Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain names using the JUUL trademark and in view of the conduct that the Respondent has engaged in when using them, the Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
The Complainant has thus made out the third of the three elements that it must establish.
The Complainant has correctly cited several prior UDRP decisions that support its contentions on all of the elements required to be proved.
The Complainant has established all of the elements that it must show under the Policy and is therefore entitled to the relief it seeks.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juulturkiye1.com> and <jullturkiye2.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC, Panelist
Dated: February 11, 2024
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