JUUL Labs, Inc. v. kittens / Dolly Lama
Claim Number: FA2004001891545
Complainant is JUUL Labs, Inc. ("Complainant"), represented by Susanna P. Lichter of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is kittens / Dolly Lama ("Respondent"), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vapesandjuulpods.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 9, 2020; the Forum received payment on April 9, 2020.
On April 10, 2020, NameSilo, LLC confirmed by email to the Forum that the <vapesandjuulpods.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 April 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 2020 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to email@example.com. Also on April 13, 2020, the Written Notice of the Complaint, notifying Respondent of the email 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 May 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
Complainant manufactures and sells nicotine vaporizer products that serve as an alternative to cigarettes. Complainant has used JUUL and related marks in connection with these products since at least as early as April 2015. Complainant's annual revenue exceeded $1 billion in 2018, representing approximately 75% of the U.S. e-cigarette market; as of September 2019, Complainant's website attracted more than 2 million unique visitors each month. Complainant owns trademark registrations for JUUL and related marks in the United States and other jurisdictions.
The disputed domain name <vapesandjuulpods.com> was registered via a privacy registration service in March 2020. The domain name is being used for a website that displays and offers for sale what appear to be Complainant's products alongside products from competitors of Complainant. The website also offers marijuana for sale. Complainant states that the products offered for sale on Respondent's website are unauthorized, and suggests that they may not be safe or authentic. Complainant states further that it has not licensed or otherwise permitted Respondent to use its marks.
Complainant contends on the above grounds that the disputed domain name <vapesandjuulpods.com> is confusingly similar to its JUUL mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <vapesandjuulpods.com> incorporates Complainant's registered JUUL trademark, adding the generic terms "vapes," "and," and "pods" (two of which relate to Complainant's products) and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., JUUL Labs, Inc. v. April Owen, FA 1888499 (Forum Apr. 9, 2020) (finding <juulvapepods.com> confusingly similar to JUUL). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used to promote unauthorized and possibly counterfeit versions of Complainant's products and also products of competitors, in a manner that falsely suggests an association with Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., JUUL Labs, Inc. v. April Owen, supra (finding lack of rights or interests where similar domain name was used to offer unauthorized versions of Complainant's products, while falsely implying a relationship between the parties); Brooks Sports, Inc. v. Brandon Gibson / Brooks Running Shoes, FA 1748607 (Forum Oct. 5, 2017) (rejecting possibility of nominative fair use in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name that incorporates Complainant's trademark and is using the domain name for a misleading website that displays Complainant's mark and promotes unauthorized versions of Complainant's products alongside those of competitors. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., JUUL Labs, Inc. v. April Owen, supra (finding bad faith in similar circumstances); Brooks Sports, Inc. v. Brandon Gibson / Brooks Running Shoes, FA 1748607 (Forum Oct. 5, 2017) (same). Respondent's use of a privacy registration service to conceal its identity, along with its provision of what appears to be false underlying registration data, lends further support to this conclusion. See, e.g., JUUL Labs, Inc. v. T K, FA 1847855 (Forum July 11, 2019) (taking false or misleading contact information into account in finding bad faith). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vapesandjuulpods.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 7, 2020
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