JUUL Labs, Inc. v. Andrew McManus / Juul Vapor Mexico
Claim Number: FA1807001798800
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Alyssa M. Worsham of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Andrew McManus / Juul Vapor Mexico (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulvapormexico.com>, registered with Network Solutions, 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 A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 26, 2018; the Forum received payment on July 26, 2018.
On July 27, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <juulvapormexico.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 August 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 2018 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@juulvapormexico.com. Also on August 7, 2018, 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 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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, JUUL Labs, Inc., is a global leader in the electronic vaporizer industry. Complainant has rights in the JUUL mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,818,664, registered Sep. 22, 2015). Respondent’s <juulvapormexico.com> is confusingly similar to Complainant’s mark as Respondent merely adds the descriptive term “vapor”, the geographic term “mexico” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent does not have any rights or legitimate interests <juulvapormexico.com> domain name. Respondent is not permitted or licensed to use Complainant’s JUUL mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain names for any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <juulvapormexico.com> domain name to sell Complainant’s counterfeit products. In addition, Respondent uses the <juulvapormexico.com> website to phish for Internet users’ personal information.
Respondent has registered and is using the domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, Internet users by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Specifically, Respondent is using the disputed domain name to sell counterfeit goods. Finally, Respondent must have had knowledge of Complainant’s JUUL mark prior to registering the <juulvapormexico.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the domain name was registered on February 11, 2018.
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 Mgmt., 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.”).
Complainant claims rights in the JUUL mark based upon its registration with the USPTO (e.g., Reg. No. 4,818,664, registered Sep. 22, 2015). Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the JUUL mark per Policy ¶ 4(a)(i).
Complainant asserts that the <juulvapormexico.com> domain name is confusingly similar to the JUUL mark as it contains the mark in its entirety, merely adding the descriptive term “vapor”, and the geographic term “mexico”. Panels have consistently found that slight differences between domain names and registered marks, such as the addition of descriptive or geographic terms in connection with the mark, do not distinguish the domain name from the mark incorporated therein under Policy ¶ 4(a)(i). See Traditional Medicinals, Inc. v. Flippa Chick, FA1328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”); see also Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity). The Panel agrees with Complainant and finds that the <juulvapormexico.com> domain name does not contain changes that would sufficiently distinguish it from the JUUL mark.
Complainant argues that Respondent has no rights or legitimate interests in the <juulvapormexico.com> domain name as Respondent is not authorized to use Complainant’s JUUL mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Additionally, lack of evidence in the record to indicate that a respondent has been authorized to register a domain name or use a complainant’s mark may support a finding that the respondent lacks rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1620789 (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 identifies Respondent as “Andrew McManus / Juul Vapor Mexico”. The Panel notes that while Respondent appears from the WHOIS information to be commonly known by the disputed domain name, it fails to provide affirmative evidence to support the WHOIS information. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Additionally, Complainant argues that Respondent fails to make a bona fide offering or goods or services or legitimate noncommercial or fair use. Specifically, Complainant argues Respondent uses the <juulvapormexico.com> domain name to sell counterfeit products. Sale of counterfeit products may be evidence that a respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) & (iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Here, Complainant contends that Respondent's website prominently displays the JUUL trademark along with photographs of Complainant’s products. The Panel agrees with Complainant that such use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).
Alternatively, Complainant contends that Respondent is using the <juulvapormexico.com> domain name to phish for Internet users’ personal information. Using a disputed domain name to phish for users’ personal information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) & (iii). See Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004) (defining “phishing” as “the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit card numbers, passwords, social security numbers and other personal information that may be used for fraudulent purposes”). Here, Complainant contends that Respondent’s disputed domain name hosts a scam website intended to collect personal information from Complainant’s customers attempting to buy counterfeit goods. The Panel agrees with Complainant that such use would not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).
Thus, Complainant has also satisfied Policy ¶4(a)(ii).
Complainant argues that Respondent registered and is using the <juulvapormexico.com> domain name in bad faith by disrupting Complainant’s business and diverting users to the disputed domain name which sells counterfeit products. Disrupting a complainant’s business and diverting users to a disputed domain name which sells counterfeit goods may evince bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products.) Here, Complainant contends, and Respondent does not dispute, that Respondent is using Complainant’s JUUL mark on its webpage to sell counterfeit products. Furthermore, by using the <juulvapormexico.com> domain along with photographs of Complainant’s counterfeit products, Respondent attempts to profit by creating a likelihood of confusion with the Complainant mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site and products offered through the disputed domain name’s resolving website. Therefore, the Panel finds that Respondent attempted to disrupt Complainant’s business and commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Further, Complainant argues that Respondent registered the disputed domain name with knowledge of Complainant’s mark. Complainant asserts, given the global reach of the Internet and the fact that Respondent's website displays the JUUL mark alongside counterfeit products, that Respondent must have been aware of Complainant and its JUUL mark prior to registering the disputed domain name. The Panel infers that Respondent had knowledge of Complainant’s rights in the JUUL mark prior to registering the <juulvapormexico.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied 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 <juulvapormexico.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: September 7, 2018
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