JUUL Labs, Inc. v. Hakan Hamzaoglu
Claim Number: FA2003001890140
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Susanna P. Lichter of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Hakan Hamzaoglu (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulturkeyshop.com> (the “disputed domain name”), registered with Nics Telekomunikasyon A.S..
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.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 27, 2020; the Forum received payment on March 27, 2020.
On March 31, 2020, Nics Telekomunikasyon A.S. confirmed by e-mail to the Forum that the <juulturkeyshop.com> disputed domain name is registered with Nics Telekomunikasyon A.S. and that Respondent is the current registrant of the name. Nics Telekomunikasyon A.S. has verified that Respondent is bound by the Nics Telekomunikasyon 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 April 1, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 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@juulturkeyshop.com. Also on April 1, 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 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 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, JUUL Labs, Inc., is an electronic cigarette company that is considered an alternative to cigarettes for adult smokers. Complainant has used the JUUL trademarks to promote its vaporizer device and accessories since as early as April 2015. Complainant uses the JUUL trademark to provide and market its products and services. Complainant has rights in the JUUL trademark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,818,664, registered on Sep. 22, 2015) (the “JUUL Mark”). In addition, Complainant promotes and sells its products bearing the JUUL Mark on its official website at “www.juul.com”.
Respondent registered the disputed domain name on September 9, 2018. Respondent’s <juulturkeyshop.com> disputed domain name is confusingly similar to Complainant’s JUUL Mark as it incorporates the mark in its entirety, merely adding the terms “turkey shop”, followed by the generic Top-Level Domain (“gTLD”) “.com”. The disputed domain name resolves to a website that prominently displays Complainant’s and products of its competitors, all of which are allegedly for sale through the site.
Respondent does not have rights or legitimate interests in the <juulturkeyshop.com> disputed domain name. Respondent is not authorized or licensed to use the 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 unauthorized (or counterfeit) products.
Respondent registered and is using the <juulturkeyshop.com> disputed domain name in bad faith. Respondent attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the JUUL Mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Moreover, Respondent had actual knowledge of Complainant’s JUUL Mark prior to registering the <juulturkeyshop.com> disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds valid trademark rights in the JUUL Mark. The disputed domain name is confusingly similar to Complainant’s JUUL Mark. Further, Complainant has established that Respondent lacks rights or legitimate interests in the use of the disputed domain name and that Respondent registered and is using the disputed domain name 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 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”).
Preliminary Issue: Language of the Proceedings
Complainant requests that the language of this administrative proceeding proceed in English pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Registration Agreement, which states that the language of the proceeding is to be Turkish in accordance with UDRP Rule 11(a).
The
Panel has the authority to determine a different language for the proceedings, however,
giving regard to the circumstances of this case. It is established practice to
take UDRP Rules 10(b) and (c) into consideration for the purpose of determining
the language of the proceeding to ensure fairness and justice to both parties.
Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present
its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and
expense in enforcing the Turkish language agreement, which would result in
prejudice toward either party. See JUUL
Labs, Inc. v. Mertin Gulmez, Case No.
FA1912001874193 (Forum Jan. 6, 2020) (conducting the proceedings in English where
the registrar’s agreement was in English, irrespective of the language of the
content of the website at issue). Having the proceedings conducted in
Turkish would not prejudice Respondent, but it would burden the Complainant, a
U.S. company, in having to translate the Complaint and annexes into Turkish and
would also delay the proceedings. See Costco
WholesaleMembership Inc., Costco Wholesale Corporation v. Guo Xiaobao /
Guoxiaobao, WIPO Case No. D2014-1456 (Oct.
31, 2014) (finding that the proceedings should be conducted in English where Complainant,
a U.S. company, indicated that they would suffer an unnecessary burden if
required to
translate the Complaint into Chinese and to conduct the proceeding in Chinese);
Further, Complaint argued that there is a significant amount of English on the Respondent’s
website, implying that the Respondent can understand English.
Thus, 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 circumstances of the present case, the Panel decides that the proceeding should be in English.
The Panel concludes that Complainant has rights in the JUUL Mark based upon the registration of the JUUL Mark with the USPTO. Registration of a mark with the USPTO may be sufficient to establish rights in that mark pursuant to Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides a copy of its several USPTO registrations for the JUUL Mark (e.g., Reg. No. 1,616,571, registered Oct. 9, 1990). The Panel may therefore find that Complainant’s registration of the JUUL Mark with the USPTO is sufficient to establish rights in the JUUL Mark under Policy ¶ 4(a)(i).
The Panel also concludes that the disputed domain name is confusingly similar to the JUUL Mark under the Policy ¶ 4(a)(i). The disputed domain name incorporates Complainant’s JUUL Mark in its entirety, followed by the terms “turkey shop” (“turkey” being a geographic term and “shop”, a descriptive or generic term), and then followed by the gTLD “.com”. The addition of a geographic term, and a gTLD to a protected mark may not be sufficient to distinguish a disputed domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Ushio Inc. v. Domain Admin / Whois Privacy Corp., FA 1863888 (Forum Nov. 4, 2019) (finding that the addition of a geographic designation, and a gTLD are not sufficient to distinguish the disputed domain name from Complainant’s mark); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Moreover, an addition of a generic and/or descriptive term to a 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 exists where a disputed domain name contains a complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
As Respondent did not respond to the Complaint, Respondent cannot have carried its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name. The Panel notes that, given the facts here, Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond:
To wit, Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the JULL Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Complainant has not authorized Respondent to use the JULL Mark in any way.
Complainant also argues that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain name resolves to a webpage that attempts to pass off as Complainant and offer products and services of Complainant as well as those in direct competition with Complainant. Use of a disputed domain name to resolve to a webpage selling goods or services in direct competition with a complainant’s business supports a finding that a respondent has not used a domain for a bona fide offering or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
First, Respondent registered and is using the <juulturkeyshop.com> disputed domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iii) can be found where a respondent uses a confusingly similar domain name to disrupt the Complainant’s business by diverting users to a disputed domain name that resolves to a website selling counterfeit and/or competing goods. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Furthermore, bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with the Complainant. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Here, Respondent created a likelihood of confusion with Complainant and its JUUL Mark by registering a disputed domain name that incorporates in its entirety Complainant’s JUUL Mark, followed by a geographic and a descriptive term. Respondent’s use of the disputed domain name resolves to a website that displays products similar to those the Complainant offers (as well as products from competitors.
Second, the fame of the JUUL Mark, which was adopted by Complainant in advance of the Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with such a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. The Panel concludes that Respondent had actual knowledge of Complainant’s rights in the JUUL Mark, especially since Respondent’s website displayed and purportedly sold Complainant’s goods. Such use constitutes bad faith under Policy ¶ 4(a)(iii). The JUUL Mark is widely known and since Respondent registered the disputed domain name after the JUUL Mark was used in commerce, it strains credulity to believe that Respondent had not known of the Complainant or its JUUL Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademarks before registering a domain name is sufficient to find bad faith under Policy ¶4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juulturkeyshop.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: April 24, 2020
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