JUUL Labs, Inc. v. mertin gulmez
Claim Number: FA1912001874193
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Chelsea E. Carbone of Wilson Sonsini Goodrich & Rosati, California. Respondent is mertin gulmez (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulelektroniksigara.com>, registered with Hosting Concepts B.V. d/b/a Openprovider.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 6, 2019; the Forum received payment on December 6, 2019.
On December 10, 2019, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <juulelektroniksigara.com> domain name is registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider 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 December 12, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2020 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@juulelektroniksigara.com. Also on December 12, 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 January 6, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 submits that it is a producer of e-cigarettes and claims to have used the JUUL trademark on its products and website since 2015. Complainant states that in 2018, it sold 16.2 million devices and posted more than $1 billion in revenue. As of the end of 2018, its sales using the JUUL trademark represented approximately 75% of the US e-cigarette market share. Complainant launched its vaporiser products in an additional eight countries in 2018.
Complainant submits that the disputed domain name is confusingly similar to its JUUL trademark. The disputed domain name is nearly identical to Complainant’s JUUL mark and is likely to cause consumer confusion. The addition of the generic and descriptive terms “elektronik,” which is Turkish for “electronic,” and “sigara,” which is Turkish for “cigarette,” does not limit the risk of confusion between Complainant’s trademark and the disputed domain name. See, e.g., JUUL Labs, Inc. v. Zekeriya Deniz / FBS INC / Whoisprotection.biz, Case No. FA1907001852295 (Forum Aug. 28, 2019) (“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)”).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent is not known by the name JUUL and has not acquired any trademark rights or legitimate interests in the term JUUL. Citing Gallup Inc. v. Amish Country Store, Case No. FA 96209 (Forum Jan. 23, 2001) (respondent does not have rights in domain name incorporating another’s mark when respondent is not known by that mark).
Complainant asserts that Respondent has no affiliation with Complainant and has developed no rights in the JUUL mark. Complainant has not licensed or otherwise permitted Respondent to use the JUUL mark, or any confusingly similar mark, or to apply for or use any domain name incorporating the mark or a term confusingly similar to the JUUL mark. See Telstra Corp. Ltd. v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 13, 2000) (respondent had no rights or legitimate interests to use domain name because respondent was not licensed or otherwise permitted to use complainant’s trademark).
Complainant submits that Respondent’s use of the JUUL mark in the disputed domain name is not nominative and can easily be avoided—Respondent does not need to make use of the JUUL mark in its own domain name in order to identify his website. See Six Continents Hotels, Inc. v. Hotel Partners of Richmond, Case No. D2003-0222 (WIPO May 14, 2003) (finding that the use of the complainant’s HOLIDAY INN mark in the domain name <holidayinnhotelreservations.com> was not nominative fair use because it was not an unavoidable and necessary use of a mark to identify respondent’s services).
Respondent has used the disputed domain name to divert Internet users to a misleading website that is designed to capitalize on confusion between the respective parties’ domain names and the JUUL mark in order to advertise Complainant products for sale—on an unauthorized basis—as well as competitor products. Complainant submits that such use is not legitimate, non-commercial or fair use.
Complainant submits that the disputed domain name was registered and is being used in bad faith. Respondent registered the disputed domain name after Complainant first adopted and began using the JUUL mark. Furthermore, Respondent clearly had actual knowledge of Complainant’s rights in its name when Respondent registered the disputed domain name because: Respondent uses the disputed domain name to promise and/or sell unauthorized JUUL products or competing products; Respondent’s site clearly displays not just the JUUL word mark, but in fact even the identical, or very nearly identical, stylized version of the JUUL mark that Complainant itself uses; and Respondent had no other reason to register the disputed domain name than to exploit the JUUL brand.
Complainant submits that Respondent’s knowledge of Complainant and its JUUL offerings is also apparent from the content currently available on its site.
Given Respondent’s actual knowledge of Complainant’s rights, it follows that the disputed domain name was therefore registered to take advantage of the value and goodwill associated with the JUUL marks.
Complainant alleges that Respondent uses the disputed domain name therefore to lure Internet users to Respondent’s own website that promises unauthorized JUUL products. Internet users who are directed to this site are likely to believe that they have successfully accessed a website originating from or approved by Complainant.
Complainant furthermore argues that Respondent’s use of the disputed domain name to divert Internet traffic and disrupt its business constitutes bad faith under Policy ¶ 4(b)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer and merchant of e-cigarettes and uses the JUUL trade mark to distinguish its products..
Complainant is the owner of
• United States registered trademark JUUL, registration number 4,818,664, registered on September 22, 2015 for goods in international classes 1, 30, and 34; and
• United States registered trademark JUUL, registration number 4,898,257 registered on February 9, 2016 for goods in international classes 34.
Complainant has an established Internet presence and its domain name <juul.com> resolves to its official website.
The disputed domain name was registered on May 16, 2019, using a proxy service to conceal Respondents identity and resolves to a website that offers JUUL branded products for sale. The content of the website is in the English language and what appears to be Turkish. Complainant’s trademark appears throughout the pages of the website and the English language elements include a link to its “shopping cart”, a request for Internet users to enter their email to “Subscribe to our newsletter. It provides the following contact detail: “Juul Electronic Cigarette Perpa Istanbul” and a telephone number and “25 comments” that include “October 14, 2019 I receied my order 1 day later”, “honest seller”, “trusted site”, “a meticulous company doing its job properly”.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs, and the Registrar’s response to the Forum’s request for clarification of the registration details of the disputed domain name which disclosed the identity of the Respondent.
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 based on 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”).
Complainant has provided copies of its abovementioned U.S. trademark registrations as evidence of its rights in the JUUL mark.
The disputed domain name contains Complainant’s distinctive JUUL mark in its entirety.
Complainant asserts, but has provided no formal translator evidence, that the additional elements “elektronik” and “sigara” are Turkish words for “electronic” and “cigarettes respectively. Even if this argument were not accepted because of the lack of formal translation evidence, this Panel finds that each of those elements are almost identical to the generic English language words “electronic” and “cigars”.
Complainant’s trademark is the first and dominant element of the disputed domain name. The other elements “elektronik” and “cigara” have no distinctive character and create no distinguishing difference between the disputed domain name and Complainant’s mark. Additionally, the gTLD <.com> extension may be ignored in the circumstances of the Complaint as presented.
Having compared both, this Panel finds that the disputed domain name <juulelektroniksigara.com> is confusingly similar to the JUUL trademark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not known by the name JUUL; that Respondent has not acquired any trademark rights or legitimate interests in the term JUUL; that Respondent has no affiliation with Complainant which is the owner of the JUUL trademark; that Respondent has no rights in the JUUL mark; that Complainant has not licensed or otherwise permitted Respondent to use the JUUL mark, or any confusingly similar mark, or to apply for or use any domain name incorporating the mark or a term confusingly similar to the JUUL mark; that Respondent’s use of the JUUL mark in the disputed domain name is not nominative fair use and can easily be avoided; that Respondent has used the disputed domain name to divert Internet users to a misleading website that is designed to capitalize on confusion between the respective Parties’ domain names and the JUUL mark in order to advertise Complainant’s and competitor’s products for sale that such use cannot be considered legitimate, non-commercial or fair use .
In such circumstances the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to respond to this Complaint and has therefore failed to discharge the burden of production.
In such circumstances this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name and Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant submits that the disputed domain name was registered and is being used in bad faith. The registrant of the disputed domain name must have had knowledge of Complainant and its reputation when the disputed domain name was registered. Respondent registered the disputed domain name after Complainant first adopted and began using the JUUL mark. The disputed domain name was created by intentionally adding the descriptive elements, referencing Complainant and its products in combination with Complainant’s distinctive JUUL mark. On the evidence this Panel finds that the disputed domain name was created and registered to target Complainant’s reputation and brand name.
Since its registration, the disputed domain name has been used by Respondent to attract and divert Internet users to Respondent’s own website on which Respondent purports to offer for sale not only Complainant’s products but also competing products. Respondent liberally uses Complainant’s trademark across his website; there is nothing on Respondent’s website that indicates that Respondent is not associated with Complainant, and furthermore Respondent is using the disputed domain name, which contains Complainant’s trademark in its entirety to attract Internet users to his website where he offers not only products purporting to be Complainant’s products but also products of its competitors. The registration and use of the disputed domain name therefore do not pass the well-known test for permitted use of a mark by a reseller as set out in the well-established Oki Data Americas, Inc. v. ASD, Inc. WIPO D2001-0903 decision.
Complainant’s trademark appears throughout the pages of the website and the English language elements include a link to its “shopping cart”, a request for Internet users to enter their email to “Subscribe to our newsletter. It provides the following contact detail: “Juul Electronic Cigarette Perpa Istanbul” and a telephone number and “25 comments” that include “October 14, 2019 I received my order 1 day later”, “ honest seller”, “trusted site”, “a meticulous company doing its job properly”. These statements imply that Respondent’s website is connected with or endorsed by Complainant and is supplying Complainant’s products to consumers.
This Panel finds therefore that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of his web site and a product or service on your web site.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith as Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) it is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juulelektroniksigara.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________
James Bridgeman SC
Panelist
Dated: January 6, 2020
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