JUUL Labs, Inc. v. hasan domalan
Claim Number: FA2109001964438
Complainant is JUUL Labs, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., United States. Respondent is hasan domalan (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulpodstr.com>, registered with Wix.com Ltd..
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 20, 2021; the Forum received payment on September 20, 2021.
On September 22, 2021, Wix.com Ltd. confirmed by e-mail to the Forum that the <juulpodstr.com> domain name is registered with Wix.com Ltd. and that Respondent is the current registrant of the name. Wix.com Ltd. has verified that Respondent is bound by the Wix.com Ltd. 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 September 28, 2021, the Forum served the Complaint and all Annexes, including a Turkish and English language Written Notice of the Complaint, setting a deadline of October 18, 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@juulpodstr.com. Also on September 28, 2021, the Turkish and English language 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 October 25, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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: LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement is written in the Turkish language, thereby making the language of the proceedings Turkish. Complainant has submitted that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has a discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant argues that Respondent is capable of understanding English because the <juulpodstr.com> domain name targets a US company and the resolving website displays English test and a blog page entirely in English. See Compl. Ex. E. Therefore, Complainant contends the proceedings should be conducted in English.
Having regard to all the circumstances, the Panel determines that the language of the proceeding should be English and the proceeding may therefore go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant, JUUL Labs Inc., offers an alternative for adult smokers. Complainant has rights in the JUULPODS mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,918,490, registered Nov. 26, 2019). See Compl. Ex. B. Respondent’s <juulpodstr.com> domain name is confusingly similar to Complainant’s JUULPODS mark because it comprises the mark in its entirety, simply adding the geographic abbreviation “TR” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <juulpodstr.com> domain name. Respondent is not licensed or authorized to use Complainant’s JUULPODS mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to pass off as Complainant at a competing webpage.
Respondent registered and uses the <juulpodstr.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by passing off as Complainant at a competing webpage. Additionally, Respondent had actual knowledge of Complainant’s rights in the JUULPODS mark when the disputed domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
2. Complainant has rights in the JUULPODS mark based upon the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,918,490, registered Nov. 26, 2019).
3. Respondent registered the disputed domain name on September 14, 2021.
4. Respondent has used the domain name to pass itself off as Complainant at a competing webpage.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the JUULPODS mark based upon the registration with the USPTO (e.g., Reg. No. 5,918,490, registered Nov. 26, 2019). See Compl. Ex. B. Registration of a mark with the USPTO is generally sufficient to establish rights in the mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the JUULPODS mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s JUULPODS mark. Complainant argues that Respondent’s <juulpodstr.com> domain name is confusingly similar to Complainant’s JUULPODS mark because it comprises the mark in its entirety, simply adding the geographic abbreviation “TR” and the “.com” gTLD. Addition of a geographic term and a gTLD is generally insufficient to negate confusing similarity between a domain name and the mark it incorporates per Policy ¶ 4(a)(i). See Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark). Complainant submits that the term “TR” is the country code abbreviation for Turkey. Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the JUULPODS mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s JUULPODS trademark and to use it in its domain name adding the term “TR” which is the country code abbreviation for Turkey;
(b) Respondent registered the disputed domain name on September 14, 2021;
(c) Respondent has used the domain name to pass itself off as Complainant at a competing webpage;
(d) Respondent has engaged in this activity without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <juulpodstr.com> domain name because Respondent is not licensed or authorized to use Complainant’s JUULPODS mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. 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 WHOIS information of record notes “Hasan Domalan” as the registrant and no information suggests that Complainant has authorized Respondent to use the JUULPODS mark in any way. See Amend. Compl. Ex. A1. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant also argues that Respondent does not use the <juulpodstr.com> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead passes itself off as Complainant at a competing webpage. Passing off as a complainant at a disputed domain name to promote products that compete with a complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Complainant provides screenshots of Respondent’s webpage at the disputed domain, which displays Complainant’s marks and offers products for sale that compete with Complainant’s business. See Compl. Ex. E. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <juulpodstr.com> domain name in bad faith, specifically arguing that Respondent disrupts Complainant’s business for commercial gain by passing itself off as Complainant at a competing webpage. Use of a disputed domain name to pass off as a complainant and offer competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See 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 Hewlett-Packard Co. v. Ali, FA 353151 (Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel notes that Complainant provides screenshots of Respondent’s webpage at the disputed domain name, which displays Complainant’s marks and offers products for sale that compete with Complainant’s business. See Compl. Ex. E. Therefore, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv).
Secondly, Complainant submits that Respondent had actual knowledge of Complainant’s rights in the JUULPODS mark when the <juulpodstr.com> domain name was registered. Actual knowledge of a complainant’s rights in a mark evidences bad faith per Policy ¶ 4(a)(iii) and may be shown by the use a respondent makes of a disputed domain name. See 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 Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Complainant argues that Respondent’s knowledge is evident from its use of a domain name that incorporates the JUULPODS mark to sell competing products. As the Panel agrees that actual knowledge is evident, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juulpodstr.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: October 26, 2021
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