JUUL Labs, Inc. v. oleg spiridonov
Claim Number: FA2008001908489
Complainant is JUUL Labs, Inc. (ďComplainantĒ), represented by Susanna P. Lichter of Wilson Sonsini Goodrich & Rosati, California, United States.† Respondent is oleg spiridonov (ďRespondentĒ), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulcompatible.com> (Ďthe Domain Nameí), registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 14, 2020; the Forum received payment on August 14, 2020.
On August 17, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <juulcompatible.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.† GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the ďPolicyĒ).
On August 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondentís registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org.† Also on August 18, 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 Respondentís 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 September 10, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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.
The Complainantís contentions can be summarised as follows:
The Complainant is the owner of the mark JUUL registered in the USA for e-cigarettes since 2015.
The Domain Name registered in 2017 is confusingly similar to the Complainantís trade mark adding only a descriptive term "compatible" which does not prevent such confusing similarity.
The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.
The Domain Name has been used for a web site offering competing products which are in no way compatible with the Complainantís products and also rolled "joint" cannabis cigarettes, also not compatible with the Complainantís products. This is not a bona fide offering of goods or services or a non commercial or legitimate fair use. Even the offering of compatible products would not justify the use of the Complainantís brand in the Domain Name in a confusing way.
This use by the Respondent is registration and use in bad faith misleading Internet users for commercial gain and disrupting the Complainantís business. The contents of the Respondentís site taking advantage of the Complainantís mark to sell competing vape products shows the Respondent is aware of the Complainant and its rights. There is an e mail address for the contact us part of the site and a copyright notice that uses the JUUL mark.
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark JUUL registered in the USA for e-cigarettes since 2015.
The Domain Name registered in 2017 has been used for a site selling competing products which are not compatible with the Complainantís products.
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) (ďBecause Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the ComplaintĒ).
The Domain Name consists of the Complainant's JUUL mark (which is registered in USA for e-cigarettes with first use recorded as 2015), the generic term "compatible" and the gTLD ".com".
Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic term "compatible" to the Complainant's mark does not prevent confusing similarity between the Domain Name and the Complainant's registered trade mark for the purposes of the Policy.
The gTLD ".com" does not serve to prevent confusing similarity between the Domain Name and the Complainantís mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainantís JUUL registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
The Complainant has not authorised the Respondent to use its mark. The Respondent is recorded as "oleg spiridonov" on the WhoIs database and accordingly does not appear to be commonly known by the Domain Name.† See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The web site attached to the Domain Name uses the Complainant's JUUL mark to offer competing e cigarette goods which are not, in fact, compatible with the Complainantís goods.† The site does not make it clear that there is no commercial connection with the Complainant and aspects of the site like the copyright notice and the contact us e mail address use the Complainantís JUUL mark and give the impression the site is associated with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services.)
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
In the opinion of the panelist the use made of the Domain Name in relation to the Respondentís site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers competing e-cigarette products under the Complainantís mark using a contact e-mail address and copyright notice using the Complainantís mark giving the impression that the site attached to the Domain Name is official or authorised.
The reference to the Complainantís mark on the site attached to the Domain Name in the context of e-cigarette products and the, albeit, false description "Juulcompatible" referring to the Complainantís e-cigarette products shows that the Respondent has actual knowledge of the Complainant and its business, products and rights.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site or products on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4(b)(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 <juulcompatible.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated:† September 10, 2020
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