JUUL Labs, Inc. v. Nikolay Pahkov
Claim Number: FA1903001836456
Complainant is JUUL Labs, Inc. ("Complainant"), represented by Alyssa M. Worsham of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Nikolay Pahkov ("Respondent"), Bulgaria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulbg.com>, registered with eNom, 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 March 28, 2019; the Forum received payment on March 28, 2019.
On March 29, 2019, eNom, LLC confirmed by email to the Forum that the <juulbg.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 March 29, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 2019 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 postmaster@juulbg.com. Also on March 29, 2019, 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 April 19, 2019, 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.
A. Complainant
Complainant manufactures and sells nicotine vaporizer products that serve as an alternative to cigarettes. Complainant has used the JUUL mark in connection with these products since at least as early as April 2015. By February 2018, Complainant's monthly sales had reached 3.5 million units; Complainant posted more than US $1 billion in revenue in 2018. Complainant owns various trademark registrations for JUUL, in both standard character and stylized form, in the United States and other jurisdictions.
Respondent registered the disputed domain name <juulbg.com> in October 2018. In November 2018, the domain name was being used for a website that mimicked Complainant's own marketing content, prominently displaying images of Complainant's products and offering them for sale. Visitors seeking to place an order were prompted to enter personal information. The website identified itself only as "JUUL," with "JUUL Bulgaria" in the footer. Complainant states that the site was designed to mislead visitors into believing that Respondent is an authorized seller of Complainant's products, and asserts that it was likely being used to sell counterfeit or unauthorized products or to operate a fraudulent phishing scheme. Complainant states that its products are sold online only through its own website, that Respondent is not an authorized reseller, and that Respondent has never been commonly known by the JUUL name. In response to a demand letter from Complainant's agent, Respondent agreed to remove the content from its website, but declined to relinquish the domain name; the domain name no longer resolves to a website. Complainant speculates that Respondent may intend to relaunch the site or transfer the domain name to another entity with similar intentions.
Complainant contends on the above grounds that the disputed domain name <juulbg.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.
B. Respondent
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 <juulbg.com> incorporates Complainant's registered JUUL trademark, adding the geographic abbreviation "bg" 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. Law Pui Lam Henry, FA 1804440 (Forum Sept. 28, 2018) (finding <juulhk.com> confusingly similar to JUUL); Rexair LLC v Rexair Bul / Stiliyan Grigorov, FA 1350485 (Forum Nov. 19, 2010) (finding <rainbowbg.com> confusingly similar to RAINBOW). Accordingly, the Panel considers the disputed domain name to be confusingly similar to Complainant's registered mark.
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 its only apparent use has been to promote the sale of what the Panel considers likely to be counterfeit products, or to deceive Internet users into disclosing personal and financial information to Respondent, or both. Neither of these uses would give rise to rights or legitimate interests. See, e.g., JUUL Labs, Inc. v. Law Pui Lam Henry, supra (finding lack of rights or interests in similar circumstances); JUUL Labs, Inc. v. Prasert Iamsaengsawang, FA 1798801 (Forum Sept. 3, 2018) (same); JUUL Labs, Inc. v. Panama Juul, FA 1791555 (Forum July 10, 2018) (same).
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 and has used a domain name that incorporates Complainant's registered mark for the purpose of either promoting the sale of unauthorized and probably counterfeit products, conducting a fraudulent phishing scheme, or both; and is retaining the domain name with what the Panel believes is an intent to resume such use in the future. Such conduct is indicative of bad faith under both of these provisions of the Policy. See, e.g., JUUL Labs, Inc. v. Law Pui Lam Henry, supra (finding bad faith in similar circumstances); JUUL Labs, Inc. v. Prasert Iamsaengsawang, supra (same); JUUL Labs, Inc. v. Panama Juul, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juulbg.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 22, 2019
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