DECISION

JJ206, LLC v. Erin Hackney

Claim Number: FA1507001629288

PARTIES

Complainant is JJ206, LLC (“Complainant”), represented by Shreya Biswas Ley of LayRoots, LLC, Washington, USA. Respondent is Erin Hackney (“Respondent”), represented by Lucas S. Michels of Ironmark Law Group, PLLC, Washington, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <jujuroyal.com>, registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Anne M. Wallace, QC, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 16, 2015; the Forum received payment on July 16, 2015.

On July 17, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <jujuroyal.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 2015 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@jujuroyal.com. Also on July 22, 2015, 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.

A timely Response was received and determined to be complete on August 11, 2015.

Complainant made additional submissions on August 14, 2015. Respondent made additional submissions on August 21, 2015.

On August 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant

Complainant submits:

Complainant is involved in the business of marketing, manufacturing, and distributing oral vaporizers. Complainant has rights in the JUJU ROYAL mark pursuant to its common law rights in the mark. Complainant holds a pending trademark application with the United States Patent and Trademark Office (“USPTO”) (Serial No. 86,532,274, filed Feb. 11, 2015).
Respondent’s <jujuroyal.com> infringes on Complainant’s Policy ¶ 4(a)(i) rights in the JUJU ROYAL mark as it is confusingly similar through its elimination of spacing in the mark and the addition of the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests with respect to the <jujuroyal.com> domain name. Respondent is not commonly known by the <jujuroyal.com> domain name. Instead of utilizing the disputed domain name with any bona fide offering of goods or services or for any legitimate noncommercial or fair use, the <jujuroyal.com> domain name is being used by Respondent to create a website which directly competes with Complainant and its business.
Respondent has registered and used the <jujuroyal.com> domain name in bad faith. Respondent intends on disrupting Complainant’s business and attracting Internet users to its web site or location in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). Further, Respondent had actual knowledge of Complainant and its rights in the JUJU ROYAL mark, indicating registration and use in bad faith per Policy ¶ 4(a)(iii).

B. Respondent

Respondent submits:

Complainant has not obtained trademark rights under U.S. trademark law and fails Policy ¶ 4(a)(i) as a result. Complainant’s marks have yet to be used in commerce to sufficiently establish common law rights as evidenced by its “intent to use” designation of its filing with the USPTO for the JUJU ROYAL mark.
Respondent registered the <jujuroyal.com> domain name on October 13, 2014 in order to pursue its client’s legitimate business. As a result of the domain registration, Respondent has priority rights in the domain name.
Respondent has a business relationship with Julian Marley who is commonly known as JUJU ROYAL.
Respondent has not participated in bad faith disruption as Complainant has no rights to the <jujuroyal.com> domain name. Respondent has used the name to make a bona fide offering of goods and services, and Respondent registered the name prior to the February 2015 correspondence and Complainant’s “intent to use” trademark applications. Further, Respondent’s <jujuroyal.com> domain consists of descriptive elements and Respondent has priority rights in the mark comprising the name.

C. Additional Submissions

In its additional submission, Complainant submits:

The disputed domain name infringes the whole JUJU Joints brand including but not limited to JUJU Royal.
Complainant has established trademark rights throughout the United States and internationally, through Federal and State trademark applications, through consistent and continuous use through the United States and internationally and through acquiring distinctiveness through marketing, advertising and sales. Complainant had already established said rights before Respondent ever attempted to seek trademark rights or ever registered the disputed domain name or before Respondent began operating its online storefront on April 20, 2015. By April 20, 2015:

Complainant had already launched and had significant sales of the JUJU Royal product.
Complainant’s JUJU Joints brand had already been mentioned in several national and international publications.
Complainant had already invested in advertising campaigns in Oregon and California and experienced significant product sales throughout the United States and Canada.
The Respondent did not yet have a product when he communicated with Complainant on February 15, 2015.

Respondent’s federal trademark had not been granted, is an intent to use application and has been rejected by the USPTO citing Complainant’s prior-filed applications, among numerous problems.

In its additional submission, Respondent submits:

Complainant’s additional submission should not be considered because it includes statements and documents that constitute an amendment to the Amended Complaint. Complainant has included new claims of trademark infringement and corrected facts both of which are not permitted by Supp. Rule 7.
Even if the material is considered, evidence of state trademark registrations does not establish Complainant has exclusive rights in the mark because state trademark reservations do not require any substantive reservation or judgment. The state trademark application examination cannot verify whether a trademark is merely descriptive, has acquired distinctiveness or has been used in state commerce.
Complainant’s additional submission provides no additional evidence to establish bad faith use by Respondent.

FINDINGS

The Panel finds:

1. Complainant has not established rights in the JUJU ROYAL mark.

2. Even if Complainant did have rights in the mark, Respondent has established rights and legitimate interests in the disputed domain name.

3. In view of the findings on the first two elements, the Panel need not deal with the third element.

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant asserts it has rights in the JUJU ROYAL mark. Complainant’s support for its contention includes several USPTO intent to use trademark applications for JUJU marks including application for the JUJU ROYAL mark filed on February 11, 2015. Compliant, however, has not obtained trademark rights in any of the marks. Complainant also asserts it has common law rights in the JUJU ROYAL mark. In support of this assertion, Complainant asserts it is using JUJU ROYAL for the sale of products and provides a photograph of packages bearing the JUJU ROYAL mark and a spreadsheet with “JJ Joints” at the top of it which purports to be a budget. There is no cogent evidence Complainant has established use of the JUJU ROYAL mark in commerce, media recognition, sales, or in any other way. Complainant’s other information shows Complainant’s use of the JUJU JOINTS mark and there is nothing before me to show the term JUJU has acquired secondary meaning.

Respondent argues that because Complainant has not obtained trademark rights under U.S. trademark law, Complainant fails to establish Policy ¶ 4(a)(i). Further, Respondent argues Complainant’s marks have yet to be used in commerce to sufficiently garner common law rights as evidenced by its “intent to use” designation of its filing with the USPTO for the JUJU ROYAL mark. While the burden for a complainant to establish Policy ¶ 4(a)(i) rights is relatively low, failure to provide a valid governmental registration in a mark and/or evidence of secondary meaning may lead to dismissal of a complainant’s claim. The Panel finds Complainant has failed to provide sufficient evidence to support its rights in the JUJU ROYAL mark per Policy ¶ 4(a)(i).

See Wave Indus., Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum Sept. 20, 2004) (finding that the complainant’s pending trademark applications did not establish rights because “an application for [a] mark is not per se sufficient to establish rights [in] a trademark for the purposes of the [Policy]”); see also Mega Shoes, Inc. v. Ostrick, FA 1362894 (Nat. Arb. Forum Feb. 1, 2011) (finding the complainant’s unsworn assertion that it has been using the MEGA SHOES mark since 1994 failed to establish that complainant had acquired secondary meaning in the MEGA SHOES mark where there was very minimal evidence in the record to support this claim).

Rights or Legitimate Interests

If a Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel may decline to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)). In this case, however, I will examine the second element because even if Complainant had been successful in establishing it has rights in the JUJU ROYAL mark, Complainant would in any event fail on the second element.

The Panel finds Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

While Complainant asserts Respondent has not established any rights or legitimate interests in the disputed domain name, Respondent has established otherwise. The information Respondent has provided establishes, prima facie, that Respondent has an interest in the disputed domain name. Respondent registered the <jujuroyal.com> domain name on October 13, 2014 in order to pursue its client’s legitimate business. Respondent has shown it has a business relationship with Julian Marley in which it has agreed to promote Marley’s products. Respondent produced documents to show Marley is commonly known as “JUJU Royal” and Respondent’s interest in promoting Marley’s products was known to Complainant at least by February 4, 2015 which is before Complainant filed its trademark application for the JUJU ROYAL mark on February 11, 2015. Respondent filed its trademark application for JUJU ROYAL on March 12, 2015. Respondent has a web site on which is promotes Marley’s products using the JUJU ROYAL mark. This Complaint was commenced July 15, 2015.

In these circumstances, Respondent has shown that before notice of the dispute, Respondent had made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Respondent has also shown that Marley who they represent is commonly known by the domain name. Respondent, therefore, has established rights and legitimate interests in the disputed domain name.

See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (“As the domain name was registered well before the trademarks and as it was clearly used for a legitimate purpose before the registration of the trademarks and a fortiori, before notification of the dispute, it is clear that Respondent has rights and legitimate interests in the domain name.”); see also Downstream Exch. Co. v. Downstream Energy, FA 96304 (Nat. Arb. Forum Feb. 2, 2001) (finding that the respondent established rights in the <downstreamexchange.com> domain name pursuant to Policy ¶ 4(c)(i) by obtaining “the domain name in contemplation of creating and operating an Internet auction exchange” and showing demonstrable preparations for such use). Respondent has been operating its website with the intent to pursue its own legitimate interests irrespective of Complainant. Therefore, Respondent has established rights under Policy ¶ 4(c)(i).

Registration and Use in Bad Faith

In light of the Panel’s findings above, there is no need to discuss the third element.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <jujuroyal.com> domain name REMAIN WITH Respondent.

Anne M. Wallace, QC., Panelist

Dated: August 25, 2015