JUUL Labs, Inc. v. diy / qiu shiwei
Claim Number: FA1809001808918
Complainant is JUUL Labs, Inc. ("Complainant"), represented by Alyssa M. Worsham of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is diy / qiu shiwei ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kitjuul.com>, registered with NameSilo, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 25, 2018; the Forum received payment on September 25, 2018.
On September 26, 2018, NameSilo, LLC confirmed by email to the Forum that the <kitjuul.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC 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 September 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 2018 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@kitjuul.com. Also on September 27, 2018, the Written Notice of the Complaint, notifying Respondent of the email 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 19, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
A. Complainant
Complainant manufactures and sells nicotine vaporizer products that serve as an alternative to cigarettes. Complainant and a predecessor in interest have used the JUUL mark in connection with these products since at least as early as April 2015; by February 2018, Complainant's monthly sales had reached 3.5 million units. Complainant owns various trademark registrations for JUUL, in both standard character and stylized form, in the United States and other jurisdictions.
Respondent registered the disputed domain name <kitjuul.com> in 2018. The domain name is being used for a website with content that mimics Complainant's own marketing content, prominently displaying images of Complainant's products and offering them for sale using the stylized version of Complainant's JUUL logo. The site instructs users to enter personal and payment information in order to make a purchase. Complainant states that the site is either selling unauthorized or counterfeit JUUL products, or is collecting personal and payment information as part of a fraudulent phishing scheme. Complainant states that it has not authorized or licensed Respondent to sell its products or use its mark.
Complainant contends on the above grounds that the disputed domain name <kitjuul.com> is confusingly similar to its JUUL mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management, Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.").
The disputed domain name <kitjuul.com> incorporates Complainant's registered JUUL trademark, adding the generic term "kit" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., JUUL Labs, Inc. v. Prasert Iamsaengsawang, FA 1798801 (Forum Sept. 3, 2018) (finding <juulasia.com> confusingly similar to JUUL); JUUL Labs, Inc. v. Panama Juul, FA 1791555 (Forum July 10, 2018) (finding <panamajuul.com> confusingly similar to JUUL); Beachbody, LLC v. Zhang Sanfeng, D2015-0940 (WIPO July 22, 2015) (finding <t25kit.com> confusingly similar to FOCUS T25); Merial v. Nollinger Group, Inc., FA 1433797 (Forum May 3, 2012) (finding <frontlinekit.com> confusingly similar to FRONTLINE). Accordingly, the Panel considers the disputed domain name to be confusingly similar to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used to promote the sale of what the Panel considers likely to be counterfeit products, or to deceive Internet users into disclosing personal and financial information to Respondent, or both. Neither of these uses would give rise to rights or legitimate interests. See, e.g., Disney Enterprises, Inc. v. Chao Hu, FA 1805316 (Forum Oct. 4, 2018) (finding lack of rights or interests in similar circumstances); JUUL Labs, Inc. v. Prasert Iamsaengsawang, supra (same); JUUL Labs, Inc. v. Panama Juul, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered and is using a domain name that incorporates Complainant's registered mark for the purpose of either promoting the sale of unauthorized and probably counterfeit products, conducting a fraudulent phishing scheme, or both. Such conduct is indicative of bad faith under both of these provisions of the Policy. See, e.g., JUUL Labs, Inc. v. Prasert Iamsaengsawang, supra (finding bad faith in similar circumstances); JUUL Labs, Inc. v. Panama Juul, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kitjuul.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: October 22, 2018
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