DECISION
JUUL Labs, Inc. v. Zekeriya Deniz / FBS INC / Whoisprotection.biz
Claim Number: FA1907001852295
PARTIES
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Chelsea E. Carbone of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Zekeriya Deniz / FBS INC / Whoisprotection.biz (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulsigara.com>, registered with Isimtescil Bilisim A.S..
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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on July 16, 2019; the Forum received payment on July 16, 2019.
On July 18, 2019, Isimtescil Bilisim A.S. confirmed by e-mail to the Forum that the <juulsigara.com> domain name is registered with Isimtescil Bilisim A.S. and that Respondent is the current registrant of the name. Isimtescil Bilisim A.S. has verified that Respondent is bound by the Isimtescil Bilisim A.S. 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 July 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 2019 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@juulsigara.com. Also on July 23, 2019, 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 response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
PARTIES' CONTENTIONS
A. Complainant:
1. Complainant, JUUL Labs, Inc., is an electronic cigarette company. Complainant uses the JUUL mark to provide and market its products and services. Complainant has rights in the JUUL mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,818,664, registered on Sep. 22, 2015). See Compl. Ex. D. Respondent’s <juulsigara.com> domain name is confusingly similar to Complainant’s JUUL mark as it incorporates the mark in its entirety, merely adding the generic term “sigara”.
2. Respondent does not have rights or legitimate interests in the <juulsigara.com> domain name. Respondent is not permitted or licensed to use Complainant’s JUUL mark and is not commonly known by the disputed domain name. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent disrupts Complainant’s business by attempting to sell Complainant’s counterfeit products. Further, Respondent attempts to phish for Internet users’ personal information through its webpage.
3. Respondent registered and uses the <juulsigara.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Specifically, Respondent uses the disputed domain name to divert users to its scam website and sell counterfeit goods. Finally, Respondent had actual knowledge of Complainant’s JUUL mark prior to registering the <juulsigara.com> domain name.
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Respondent’s <juulsigara.com> domain name is confusingly similar to Complainant’s JUUL mark.
2. Respondent does not have any rights or legitimate interests in the <juulsigara.com> domain name.
3. Respondent registered or used the <juulsigara.com> domain name in bad faith.
DISCUSSION
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) (“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
Complainant claims rights in the JUUL mark based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i). Complainant provides copies of its’ USPTO registrations for the JUUL mark (e.g., Reg. No. 4,818,664, registered on Sep. 22, 2015). See Compl. Ex. D. Therefore, the Panel finds that Complainant has rights in the JUUL mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <juulsigara.com> domain name is confusingly similar to Complainant’s JUUL mark as Respondent merely adds a generic term to the mark. The addition of a generic term to complainant’s mark does not negate any confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Additionally, the Panel notes while Complainant does not argue this, however, the addition of a gTLD is irrelevant in determining whether or not a disputed domain name is confusingly similar to a mark. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Respondent merely adds the term “sigara”, and the gTLD “.com” to the JUUL mark. The Panel agrees with Complainant and finds the <juulsigara.com> domain name does not contain changes that would sufficiently distinguish it from the JUUL mark per Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <juulsigara.com> domain name as Respondent is not authorized to use Complainant’s JUUL mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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.). Additionally, lack of evidence in the record to indicate the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel notes the Registrar identifies the registrant of the disputed domain name as “Zekeriya Deniz / FBS INC / Whoisprotection.biz” and nothing of the record indicates Respondent is authorized by Complainant to use the JUUL mark. See Amend. Compl. Ex. A. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name.
Additionally, Complainant alleges Respondent fails to make a bona fide offering or goods or services or legitimate noncommercial or fair use because Respondent attempts to disrupt Complainant’s business by diverting internet users to a scam website where it sells counterfeit products. Use of a domain name to disrupt complainant’s business in order to sell faulty products may be evidence that a respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Here, Complainant contends Respondent's website prominently displays the JUUL trademark along with photographs of Complainant’s related products in an attempt to sell counterfeit products. See Compl. Ex. G. The Panel agrees that an attempt to sell Complainant’s counterfeit goods does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Furthermore, Complainant contends Respondent attempts to phish for internet users’ personal information at the website associated with the <juulsigara.com> domain name. Use of a domain name to collect internet users’ personal and/or financial information may evidence a respondent lacks right and legitimate interests in a disputed domain name per Policy ¶ 4(a)(iii). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent lacked rights and legitimate interests in the domain name because it used the name to resolve to a website virtually identical to the complainant’s to prompt users to enter their login information so that the respondent may gain access to that customer’s cryptocurrency account). Complainant provides screenshots of the webpages associated with the disputed domain name which shows a page which prompts internet users’ to enter their personal information under the mistaken belief that they are providing this information to Complainant. See Compl. Ex. G. Accordingly, the Panel concludes under a Policy ¶ 4(a)(iii) analysis that Respondent uses the disputed domain name to phish for internet users’ personal information.
Registration and Use in Bad Faith
Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. A respondent who registers an infringing domain name with knowledge of complainant’s mark may be acting in bad faith under Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Complainant asserts given the global reach of the Internet and the fact that Respondent's website displays the JUUL mark alongside counterfeit electronic cigarette products, Respondent must have been aware of Complainant and its JUUL mark prior to registering the disputed domain name. See Compl. Ex. G. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the JUUL mark prior to registering the <juulsigara.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
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 <juulsigara.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
August 28, 2019
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