JUUL Labs, Inc. v. Kor / Sungmin Bailey
Claim Number: FA2007001904600
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Susanna P. Lichter of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Kor / Sungmin Bailey (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <juulbulk.com>, <krjuul.com>, <juulca.com>, and <juulau.com> (the “disputed domain names”), registered with Namesilo, Llc (the “Registrar”).
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 July 16, 2020; the Forum received payment on July 16, 2020.
On July 17, 2020, the Registrar confirmed by e-mail to the Forum that the <juulbulk.com>, <krjuul.com>, <juulca.com>, and <juulau.com> disputed domain names are registered with Namesilo, Llc; and that Respondent is the current registrant of the disputed domain names. The Registrar has verified that Respondent is bound by the Namesilo, 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 July 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 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@juulbulk.com, postmaster@krjuul.com, postmaster@juulca.com, postmaster@juulau.com. Also on July 22, 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 August 13, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the JUUL trademark in connection with vaporizer devices and accessories as a smoking alternative for adults. Complainant has rights in the JUUL trademark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,818,664, registered Sep. 22, 2015) (hereinafter the “JUUL Mark”). Respondent’s <juulbulk.com>, <krjuul.com>, <juulca.com>, and <juulau.com> disputed domain names are confusingly similar to the JUUL Mark. Each disputed domain name incorporates the JUUL Mark in its entirety. The <krjuul.com>, <juulca.com>, and <juulau.com> disputed domain names add the geographic terms "kr," "ca," or "au." The <juulbulk.com> domain name adds the descriptive term "bulk." Each disputed domain name adds the ".com" generic top-level domain ("gTLD").
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant licensed or otherwise permitted Respondent to use the JUUL Mark. Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent uses the disputed domain names to divert Internet users to websites that purportedly sell JUUL-compatible products from Complainant's competitors and unauthorized products from Complainant.
Respondent registered and is using the disputed domain names in bad faith. Respondent uses the <juulca.com>, <juulau.com> and <juulbulk.com> disputed domain names to divert Internet traffic to the websites to which the disputed domain names resolve and allegedly sell JUUL-compatible products and unauthorized accessories in disruption of Complainant's business. The <krjuul.com> disputed domain name did not resolve to an active webpage. Finally, Respondent had actual knowledge of Complainant’s rights in the JUUL mark at the time of registration of the disputed domain names given the use of the JUUL Mark on the webpages.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has registered trademark rights in the JUUL Mark. The disputed domain names are confusingly similar to Complainant’s JUUL Mark. Further, Complainant has established that Respondent lacks rights or legitimate interests in respect of the disputed domain names and that Respondent registered and is using the disputed domain names 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”).
Complainant asserts rights in the JUUL Mark based on registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish a complainant’s rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides copies of its registrations with the USPTO (e.g., Reg. No. 4,818,664, registered Sep. 22, 2015). Therefore, the Panel finds that Complainant has rights in the JUUL Mark under Policy ¶ 4(a)(i).
Respondent’s <juulbulk.com>, <krjuul.com>, <juulca.com>, and <juulau.com> disputed domain names are confusingly similar to Complainant’s JUUL Mark as they add geographic or descriptive terms and a gTLD to Complainant's JUUL Mark. The addition of a geographic or descriptive term and a gTLD does not distinguish a disputed domain name from a trademark 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 Complainant’s entire mark and differs only by the addition of a descriptive term 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); see also Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sept. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶ 4(a)(i) analysis.”). Each disputed domain name incorporates the JUUL Mark in its entirety. The <krjuul.com>, <juulca.com>, and <juulau.com> disputed domain names add the geographic terms "kr," "ca," or "au." The <juulbulk.com> disputed domain name adds the descriptive term "bulk." Each disputed domain name adds the ".com" gTLD. The Panel therefore concludes that the disputed domain names are confusingly similar to the JUUL Mark under Policy ¶ 4(a)(i).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain names. 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”). In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain names as it did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard-pressed to furnish availing arguments had it chosen to respond:
Specifically, Respondent is not commonly known by any of the disputed domain names, Complainant has not authorized, licensed, or otherwise permitted Respondent to use the JUUL Mark and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Furthermore, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use because Respondent uses the disputed domain names <juulca.com>, <juulau.com> and <juulbulk.com> to divert Internet users to websites that purportedly sell JUUL-compatible products from Complainant's competitors and unauthorized products from Complainant. To the extent Respondent passively held the <krjuul.com> disputed domain name, Respondent does not have rights or legitimate interests in the disputed domain name. The failure to make active use of a disputed domain name can demonstrate a lack of rights or legitimate interests per Policy ¶ 4(a)(ii). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain names in bad faith.
Respondent registered and is using the disputed domain names in bad faith since the disputed domain names are being used to divert Internet traffic to the websites to which the disputed domain names resolve to purportedly sell JUUL-compatible products and unauthorized accessories in disruption of Complainant's business. Such conduct demonstrates Respondent’s bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also CWC Direct LLC v. Ju Yu, FA1501001599464 (Forum Feb. 16, 2015) (“As Respondent is using the disputed domain name to sell counterfeit or unauthorized goods bearing the COLDWATERCREEK mark, the Panel finds evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).”).
Finally, the use of disputed domain names to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
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 <juulbulk.com>, <krjuul.com>, <juulca.com> and <juulau.com> disputed domain names be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: August 26, 2020
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