JUUL Labs, Inc. v. Private Contact / WHOISSHELTER.COM
Claim Number: FA2012001925176
Complainant is JUUL Labs, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Private Contact / WHOISSHELTER.COM (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <e-juul.com>, registered with Nics Telekomunikasyon A.S..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 15, 2020; the Forum received payment on December 15, 2020.
On December 17, 2020, Nics Telekomunikasyon A.S. confirmed by e-mail to the Forum that the <e-juul.com> 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 December 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2021 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@e-juul.com. Also on December 18, 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 January 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
PRELIMINARY ISSUE: SUPPORTED LANGUAGE REQUEST
The Panel notes that the relevant Registration Agreement present by Complainant is written in Turkish making the favored language of the proceedings also in Turkish. However, pursuant to UDRP Rule 11(a), the Panel finds that there is a likely possibility that the Respondent is conversant and proficient in the English language and further that conducting the proceeding in Turkish would unfairly burden Complainant. Notably, the website addressed by that at-issue domain name contains some amount of content in the English language. To wit, Respondent’s domain name comprises an English top-level, Respondents domain name is confusingly similar to a trademark of a US company, and the domain name’s website displays English packaging, English flavor names such as “Alpine”, “Berry”, “Crčme”, “Mango”, “Menthol”, “Mint”, and “Tobacco”, and other English text such as “JUUL USA Pods” “JUUL UK Pods”, “Limited Edition”, “Model”, and “You have reached the end of the list”. Moreover Respondent, although having been given appropriate notice of the instant complaint, has failed to offer any objection to going forward in English. Therefore, the Panel finds that the proceeding should be in English.
A. Complainant
Complainant contends as follows:
Complainant has used the JUUL mark to promote its vaporizer business since as early as April 2015.
JUUL is an alternative for adult smokers, and as of 2019, Complainant controls approximately 75% of the US e-cigarette market share.
Complainant has rights in the JUUL mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <e-juul.com> domain name is identical or confusingly similar to Complainant’s JUUL mark as it merely adds the letter “e”, a hyphen, and the generic TLD “.com” to Complainant’s mark.
Respondent lacks rights or legitimate interests in the <e-juul.com> domain name. Respondent is not commonly known by the JUUL mark, nor has Respondent been authorized by Complainant to use the JUUL mark. Respondent has not used the at-issue domain name in connection with a bona fide offering of goods or services as Respondent uses it to pass off as Complainant and promotes products that compete with Complainant.
Respondent registered and uses the <e-juul.com> domain name in bad faith. Respondent passes off as Complainant and promotes competing products. Respondent had actual knowledge of Complainant’s rights to the JUUL mark prior to registering the at-issue domain name as Respondent’s resolving website references Complainant while displaying images of Complainant’s products and packaging. Finally, Respondent registered the domain name using a WHOIS privacy shield.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the JUUL trademark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the JUUL trademark.
Respondent uses the at-issue domain name to pass itself off as Complainant and offer products for sale that compete with products offered by Complainant.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its JUUL trademark. Such registration is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <e-juul.com> domain name contains Complainant’s JUUL trademark, preceded by the letter “e” and a hyphen, with all followed by a domain name-necessary top-level name, here “.com”. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <e-juul.com> domain name from Complainant’s JUUL trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <e-juul.com> domain name is confusingly similar to Complainant’s trademark. See Morgan Stanley v. Khodor Dimassi, FA 1672287 (Forum June 6, 2016) (finding that the added letter ‘e’ in <emorganstanleybank.com> insufficient to distinguish the domain name from complainant’s MORGAN STANLEY mark); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Private Contact / WHOISSHELTER.COM” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <e-juul.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <e-juul.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Respondent uses the confusingly similar <e-juul.com> domain name to pass itself off as Complainant and offer competing products for sale. The at-issue domain name addresses a website that prominently displays Complainant’s trademark on each page as well as images of products associated with Complainant. Respondent’s use of the confusingly similar domain name in this manner falsely implies that there is a relationship between Complainant and Respondent when there is none. Furthermore, Respondent uses the <e-juul.com> website to promote competing vapor brands such as HEETS and CUTTWOOD; displays no disclaimers; makes no other efforts to distinguish itself from Complainant; and does not disclose that there is no relationship between Respondent and Complainant. Respondent’s use of the confusingly similar domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”); see also 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).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <e-juul.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and legitimate interests, Respondent’s confusingly similar domain is used to address a website prominently displaying Complainant’s JUUL mark so that Respondent may pass the website off as being sponsored by or affiliated with Complainant when there is no such sponsorship or affiliation. Respondent’s <e-juul.com> website offers products for sale that compete with products that Complainant offers under its JUUL mark. Respondent thereby capitalizes on the confusion that it intentionally created between the at-issue domain name and Complainant’s JUUL trademark. Using the <e-juul.com> domain name to give a false impression of affiliation with Complainant that disrupts Complainant’s business and furthers unfair competition with Complainant shows Respondent’s bad faith registration and use of the <e-juul.com> domain name per Policy ¶¶ 4(b)(iii) and (iv). See Kipling Apparel Corp. v. Yan Feng Geng, FA 1703296 (Forum Dec. 20, 2016) (finding the respondent registered and used the <kiplingstores.com> domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the domain name to sell the complainant’s products that were either counterfeit or genuine products resold without authorization); see also, G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products).
Finally, Respondent registered <e-juul.com> knowing that Complainant had trademark rights in the JUUL mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s use of Complainant’s trademark on Respondent’s <e-juul.com> website, and from Respondent’s offering of products that compete with JUUL for sale on such website. It is clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <e-juul.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also, iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”); see also Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <e-juul.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 13, 2021
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