JUUL Labs, Inc. v. Oleksandr Polyulyak
Claim Number: FA1905001845432
Complainant is JUUL Labs, Inc. ("Complainant"), represented by Alyssa M. Worsham of Wilson Sonsini Goodrich & Rosati, California, US. Respondent is Oleksandr Polyulyak ("Respondent"), Illinois, US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulstock.com>, registered with GoDaddy.com, 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 May 29, 2019; the Forum received payment on May 29, 2019.
On May 30, 2019, GoDaddy.com, LLC confirmed by email to the Forum that the <juulstock.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 ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 31, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 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@juulstock.com. Also on May 31, 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.
A timely Response was received and determined to be complete on June 18, 2019.
On June 20, 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 sold 16.2 million devices and 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 <juulstock.com> in September 2018. The domain name is being used for a website that displays Complainant's mark in the same stylized form used by Complainant, along with pictures of Complainant's products. The site offers various items for sale, including "Juul pods," "Juul devices," and "authentic compatible pods."
Complainant states that Respondent is not an authorized seller of its products, has not been licensed or otherwise permitted to use Complainant's mark, and is not commonly known by the disputed domain name. Complainant asserts that Respondent's website is selling counterfeit or unauthorized (and possibly nonexistent) products, and that it may be part of an illegal phishing scheme attempting to collect users' personal information.
Complainant contends on the above grounds that the disputed domain name <juulstock.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 states that he "will cooperate in any way possible with this complaint and comply with the decision of the forum," but does not otherwise address the allegations in the Complaint.
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 <juulstock.com> incorporates Complainant's registered JUUL trademark, adding the generic term "stock" and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., JUUL Labs, Inc. v. Diy / Qiu Shiwei, FA 1808918 (Forum Oct. 22, 2018) (finding <kitjuul.com> confusingly similar to JUUL); J Brand, Inc. v. Youchao Wang / Wang You Chao, FA 1480894 (Forum Feb. 28, 2013) (finding <jbrandstock.com> confusingly similar to J BRAND); J. Choo Ltd. v. Kailong Wen, D2012-1770 (WIPO Oct. 30, 2012) (finding <jimmychoostock.com> confusingly similar to JIMMY CHOO). Accordingly, 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 the sale of products that compete with those sold by Complainant as well as unauthorized or counterfeit versions of Complainant's products, and possibly also as part of a fraudulent scheme to obtain personal information from users. None of these activities is likely to give rise to rights or legitimate interest under the Policy. See, e.g., JUUL Labs, Inc. v. Diy / Qiu Shiwei, supra (finding lack of rights or interests based upon sale of apparently counterfeit products or attempt to collect users' personal information); H-D U.S.A., LLC v. Ridwan Katob, FA 1747798 (Forum Oct. 4, 2017) (finding lack of rights or interests based upon website promoting competing products and services, attempting to pass off as associated with or authorized by complainant).
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 is using a domain name that incorporates Complainant's registered mark for the purpose of promoting the sale of competing products and unauthorized and probably counterfeit versions of Complainant's products, and possibly as part of a fraudulent scheme to obtain personal information from users. Such conduct is indicative of bad faith under both of these provisions of the Policy. See, e.g., JUUL Labs, Inc. v. Diy / Qiu Shiwei, supra; H-D U.S.A., LLC v. Ridwan Katob, supra. 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 <juulstock.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 24, 2019
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