JUUL Labs, Inc. v. Jake Ades / Internet Development Company
Claim Number: FA1906001846643
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Chelsea E. Carbone of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Jake Ades / Internet Development Company (“Respondent”), represented by Zachary Rich of Press Start Legal, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buyjuul.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
M. Kelly Tillery, Chair and Panelist
William F. Hamilton, Panelist
Charles Kuechenmeister, Panelist
Complainant submitted a Complaint to the Forum electronically on June 5, 2019; the Forum received payment on June 5, 2019.
On June 6, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <buyjuul.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 June 12, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2019 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@buyjuul.com. Also on June 12, 2019, 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 July 1, 2019.
On July 8, 2019, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed
M. Kelly Tillery, Chair and Panelist
William F. Hamilton, Panelist
Charles Kuechenmeister, Panelist
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates in the vaporizer and smoking-alternative industry. Complainant has rights in the JUUL® mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,818,664, registered September 22, 2015). Respondent’s <buyjuul.com> domain name is identical or confusingly similar to Complainant’s JUUL mark because it wholly incorporates Complainant’s JUUL mark, and merely adds the generic term “buy.”
Respondent lacks rights or legitimate interests in the <buyjuul.com> domain name. Respondent is not licensed or otherwise permitted to use Complainant’s JUUL mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the disputed domain name to sell unauthorized, competing and/or counterfeit goods.
Respondent registered and uses the <buyjuul.com> domain name in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent sells unauthorized, competing and/or counterfeit goods, disrupting Complainant’s business. Finally, Respondent had actual knowledge of Complainant’s JUUL mark prior to registering the disputed domain name.
B. Respondent
Respondent registered the disputed domain name on March 24, 2016.
Respondent operates in the vaporizer e-liquid industry. Respondent claims that despite similarity between its disputed domain name and Complainant’s JUUL mark, no confusion occurs. Respondent claims that it makes a fair use of the JUUL mark and has not acted in bad faith because Respondent offers only Complainant’s goods for sale legitimately on its site and has posted a disclaimer that Respondent has no relationship with Complainant. Finally, Respondent argues that Complainant is attempting to engage in Reverse Domain Name Hijacking.
1) Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent’s Domain Name is confusingly similar to a Trademark in which Complainant has rights.
2) Complainant has not met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent has no rights or legitimate interests in respect of the Domain Name.
3) Complainant has not met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent's domain name has been 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.
Complainant asserts rights in the JUUL mark based upon registration with the USPTO (Reg. No. 4,818,664, registered September 22, 2015). Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). 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).”) Therefore, the Panel finds Complainant has rights in the JUUL mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <buyjuul.com> domain name is identical or confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s JUUL mark, and merely adds the generic term “buy.” The disputed domain name also adds the “.com” generic top-level domain (“gTLD”). The addition of generic or descriptive terms and a gTLD to a complainant’s mark is insufficient to withstand a test of confusing similarity pursuant to Policy ¶ 4(a)(i). Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Respondent makes no specific contentions with regards to Policy ¶ 4(a)(i). The Panel finds Respondent’s disputed domain name is not identical to, but is confusingly similar to Complainant’s JUUL mark.
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. Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <buyjuul.com> domain name as Respondent 1) is not commonly known by the disputed domain name and 2) is not authorized by Complainant to use the JUUL mark. Respondent does not dispute either point.
WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”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 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 disputed domain name indicates that the Registrant is known as “Jake Ades” and no evidence of record indicates that Respondent is or was authorized to use the Complainant’s JUUL mark.
Complainant argues Respondent fails to use the <buyjuul.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent allegedly uses the disputed domain name to sell unauthorized, competing and/or counterfeit goods, citing only to Compl. Ex. G. If there were credible, unopposed evidence of use of a disputed domain to sell competing or counterfeit goods, that would not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. Gumwand Inc. v. jared brading, FA 1794058 (Forum Aug. 6, 2018) (use of a confusingly similar domain name to resolve to a website which purported to sell chewing gum-removal equipment which was either counterfeit versions of Complainant’s goods, or goods which competed directly with Complainant’s chewing gum-removal equipment business, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use within Policy ¶¶ 4(c)(i) or (iii)).
Complainant provides only screenshots of the resolving webpage of the disputed domain name which Complainant claims displays counterfeit or “unauthorized” versions of Complainant’s products, but without any evidence to support that claim.
Respondent does not claim either in its domain name, on its site, or in this proceeding that it is an “authorized” reseller of Complainant’s products, but only that the products it sells are not unauthorized as they are legitimate products made and sold by Complainant itself. Nothing in the UDRP or U.S. law requires Respondent or any other to be “authorized” by the Trademark Owner to resell legitimate goods bearing that Trademark Owner’s mark. Further, Complainant has produced no evidence whatsoever that any product sold by Respondent via this site is counterfeit.
The “first sale” or “exhaustion” doctrine is well-established in trademark law. Once a trademark owner releases its goods into the marketplace, it relinquishes control over their distribution, and resale, even if “not authorized,” it does not constitute trademark infringement and is permissible under law. Polymer Technology Corp. v. Mimran, 975 F.2d 58, 61-62 (2d Cir. 1992; Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93, 103 (2d Cir. 2010); Original Appalachian Artworks, Inc. v. Granada Electronics, Inc., 816 F.2d 68, 73 (2d Cir. 1987). “Trademark Exhaustion” appears to be the rule in most other jurisdictions. See, e.g., I. Caboli, “Trademark Exhaustion in The European Union,” (2002) Marquette Intellectual Property Law Review, 6.(1), 47-90, Research Collection School of Law.
Thus, the fact that Complainant has not “authorized” Respondent to resell JUUL products (a fact Respondent confirms) does not establish lack of rights or legitimate interests under the Policy.
Respondent argues that it uses the <buyjuul.com> domain name for a fair use and bona fide offering of goods or services because Respondent offers Complainant’s own goods for sale and has posted a disclaimer that Respondent has no relationship with Complainant. Respondent’s site displays images of Complainant’s products created by Respondent to sell legitimate JUUL products purchased from a JUUL authorized distributor, Midwest Distribution. Complainant does not dispute these points, at least not with any clarity or evidence. Respondent’s site has some similarities to that of Complainant, but only to the extent necessary to honestly exhibit the product for sale. Respondent’s site requests certain consumer information because it is required by law in some states and is necessary and prudent for verifying credit card transactions. Complainant’s website actually does the same (See, JUUL.com).
A respondent’s use of a Complainant’s trademark in a disputed domain name in the resale of a complainant’s products constitutes a bona fide offering of goods or services in accord with Policy ¶ 4(c)(i) where the respondent actually offers the goods or services at issue, the respondent uses the site to sell only the legitimate trademarked goods, the site accurately discloses the registrant’s relationship with the trademark owner, and the respondent does not try to corner the market in all domain names. Inter-Tel, Inc. v. Marcus, FA 727697 (Forum July 27, 2006) (respondent’s use of the disputed domain name in the resale of complainant’s products constitutes a bona fide offering of goods or services in accord with Policy ¶ 4(c)(i) where the respondent actually offered the goods or services at issue, the respondent used the site to sell only the trademarked goods, the site accurately disclosed the registrant’s relationship with the trademark owner, and the respondent did not try to corner the market in all domain names, (which would have thus deprived the trademark owner of reflecting its own mark in a domain name)). OkiData Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095; Project Mgt. Institute v. CMN.com, WIPO Case No. D2013-2035; WIPO Overview 2.0, ¶2.4, ¶2.3, New Kids On The Block v. News American Publg., Inc., 971 F.2d 302 (1992); Toyota Motor Sales, U.S.A., Inc. v. Tabani, 610 F.3d 1171 (2010); General Motors, LLC v. Flashcraft, WIPO Case No. D2011-2117. Respondent argues that it purchases the products offered for sale on the site to which disputed domain name resolves from a legitimate, authorized distributor of Complainant and identifies same as Midwest Distribution.
Thus, the Panel finds that Respondent makes a bona fide offering of goods or services under Policy ¶ 4(c)(i) and thus has legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the <buyjuul.com> domain name in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent sells “unauthorized,” competing and/or counterfeit goods. Use of a disputed domain name to reference a complainant’s products and offer competitive or counterfeit products would be bad faith registration and use. Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (disputed domain name registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s products and offer competitive and/or counterfeit products). However, Complainant provides only screenshots of the resolving webpage of the disputed domain name which Complainant claims, without any evidence, displays counterfeit or “unauthorized” versions of Complainant’s products.
Thus, the Panel finds that Respondent has not engaged in bad faith registration and use under Policy ¶ 4(b)(iii) and (iv).
The Panel finds that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
The Panel thus concludes both that Respondent has rights or legitimate interests in the <buyjuul.com> domain name pursuant to Policy ¶ 4(a)(ii) and that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
The Panel further finds that Respondent has not registered or used the <buyjuul.com> domain name in bad faith since Respondent has not engaged in conduct that fits within the circumstances articulated by Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC, FA 1685263 (Forum Aug. 30, 2016) (where a respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith, lack of rights or legitimate interests on its own is insufficient to establish bad faith); Uhrenholt A/S v. FILLIP NIELSEN, FA 1646444 (Forum Dec. 21, 2015) (mere assertions of bad faith, without evidence, are insufficient for a complainant to establish bad faith under Policy ¶ 4(a)(iii)).
A UDRP Panel is not a court of equity or an enforcer of any nation’s trademark infringement causes of action. While a different result herein might obtain, even on this limited record, in another forum, under different law, such is immaterial to our decision-making process and decision.
In addition, Complainant’s suggestion that even if Respondent sells “actual JUUL vaporizers,” “such goods are counterfeit and/or are obtained in violation of JLI’s rights, which is not a legitimate use of the JUUL mark” is based on no valid authority known to this Panel or cited by Complainant. If Complainant’s Authorized Distributor breached some agreement with Complainant, Complainant surely has remedies against it elsewhere. Should they wish, the parties may seek similar and/or additional relief on other causes of action in other fora against each other and/or perhaps Complainant’s Authorized Distributor.
Disclaimers are always troublesome and never seem really to satisfy anyone. There is some evidence that they can actually be counterproductive. Here, Respondent’s domain name does not use the JUUL mark as the first, most prominent word, unlike some others in cases cited by Complainant. In addition, nowhere on the Respondent’s site does it say or imply that the site is operated by Complainant, authorized by Complainant, or is associated/affiliated with or sponsored by Complainant. And finally, it includes a simple, clear Disclaimer:
“JUUL and associated product logos are registered trademarks of JUUL Labs, Inc.
Direct ELiquid, Inc. is not associated with JUUL Labs, Inc., or its affiliates, in any way.”
Yes, the disclaimer is at the bottom of the site, but so are most such disclaimers, site terms and conditions, purchasing info, etc. Few, if any sites, place such disclaimers at the top in bold, large print as it would likely be bad marketing and not expected or welcome by consumers.
For example, just a few days ago on page A5 of the New York Times (July 15, 2019) ran a full page ad about “Investing in New Technologies” regarding youth vaping. Only at the very bottom two lines of the 20 line ad appeared the identity of the legal entity responsible for the ad, in the smallest of the 6 sizes of types used – “JUUL Labs, Inc.” A similar ad appeared just today (N.Y.T., July 22, 2019, p. A5).
Of course, those who seek absolute certainty would desire that it be more prominent and conspicuous, but there is no legal requirement or authority to support same.
The Disclaimer and full legal name of Respondent are easily located on Respondent’s site and as legible as any other text on the site. The Panel is unaware of any authority, and Complainant has cited none, for the proposition that a disclaimer must be placed in any particular location or be of any particular color or font size.
Further, there is no evidence of record for the idea that this Disclaimer is somehow not read by a significant number of consumers or is somehow ineffective. In fact, the end of a webpage is precisely where consumers expect and do find all legal notices, warnings, terms and conditions, disclaimers, privacy policy, copyright and trademark notices, representations and warranties, legal owner/operator names, etc. Complainant’s website does just this at the bottom of last of many pages with click-on sections for Terms & Conditions, Privacy Policy, Cookie Policy, Trademark Guide, etc. A cursory perusal of websites of almost any major retailer/seller will confirm that this is standard fare and the only exceptions are where something else is required by law or private agreement, neither involved herein.
Comparison to the Nicotine Addiction Warning location and font size is inapposite as those are required by Federal law and have been so since 2018. See, 21 C.F.R. §1143.3 Complainant uses an identical warning. juul.com. It is highly doubtful that either party would put such a warning anywhere near their products unless required by law to do so.
Our dissenting colleague’s concern for the health of the consumers of the Complainant’s products is shared by the Majority. However, at this time, such products are legal to be sold anywhere in the U.S. (except San Francisco[i] and Livermore, CA, so far) and the parties’ sites appear to comply with current FDA rules regarding nicotine addiction warnings. A UDRP Panel is not empowered to make moral, medical, scientific, political judgments regarding legal goods or services.
The concerns of our Panelist colleague in Dissent about the Disclaimer are not concerning to the Majority. However, that Respondent may have colored right up to the lines is immaterial, as it has not strayed outside them.
Lastly, that Respondent owns/operates other sites which sell other, competing brands of vaping products is wholly immaterial. The site at issue does not mention or link to any such sites and only sells legitimate, genuine JUUL products.
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <buyjuul.com> domain name, of its rights to use the disputed domain name. Finding that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the <buyjuul.com> domain name and/or that Respondent registered and is using the disputed domain name in bad faith is a difficult task in this limited proceeding. NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”). Discerning a party’s knowledge, intent and/or motivation is virtually impossible to do fairly without admissions, live testimony, cross-examination or other such tools of inquiry and discernment.
However, Complainant’s allegations that Respondent engaged in counterfeiting and/or phishing are baseless and thus, troubling. As Abraham Lincoln counselled long ago, “In law it is good policy to never plead what you need not, lest you oblige yourself to prove what you can not.” (Letter to Usher P. Linder, Feb. 20, 1848).
It is instructive to review the exact language used by Complainant in its Complaint on this issue:
(b)(iii) “… in addition to selling potentially counterfeit and/or unauthorized products, Respondent may be using the site to conduct an illegal phishing scam to collect personal information for some other reason. See, Ex. “G.””;
(v) “… the website at the infringing domain name attempts to leave customers to believe they are purchasing bona fide JUUL products, whereas the purpose of the site is clearly to sell counterfeit or unauthorized vaporizers. Or, in the alternative, the purpose of the site is to use the pretense of selling such products to collect personal information.”;
(vi) “… and the vaporizers sold via this website are likely counterfeit and are definitely unauthorized. Possibly, there are no products being sold. Respondent may be running a phishing scam where consumers provide contact information to buy non-existent JUUL vaporizers under the mistaken belief they are providing this information to JLI.”;
(vii) “To the best of Complainant’s knowledge, Respondent has never used the website for any purpose other than to exploit consumer confusion and to trick users with the false promise of vaporizers from JLI.”
If Complainant had any evidence of either, it surely would have submitted same. Complainant is a corporation with ample resources, including lawyers and private investigators, and could easily have conducted an investigation into these claims. At a bare minimum, it could have checked with its Authorized Distributor, MidWest Distribution (midwestgoods.com) which sells vaping products of scores of companies and Respondent identified it as its source of legitimate JUUL products to confirm Respondent’s claim that it purchased its advertised products from that legitimate source. It could also have made a standard, controlled, third-party purchase from Respondent’s site and examine the goods to determine their authenticity.
In any event, while troubled by Complainant’s submissions in this regard, the Panel does not believe that on this limited record it can find Reverse Domain Name Hijacking. Thus, Respondent’s claim for same is DENIED.
I dissent from the majority decision. I would find that the Respondent did not establish a bona fide offering of goods and services because the Respondent’s disclaimer falls far short of the requirements established under domain name dispute jurisprudence commencing nearly two decades ago. See OkiData Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
First, the disclaimer appears at the end of Respondent’s web pages. The disclaimer will not appear on most computer screens until the user scrolls through all the pictures of the JUUL products being offered. Most consumers will never get there. The Respondent could have easily placed the disclaimer prominently on the top of the Respondent’s web page or as a pop-up to be acknowledged when the consumer makes a JUUL product selection.
Second, the disclaimer is composed of the smallest font size on the Respondent’s webpage. The font is so small as to be almost unreadable with squinting at the screen. When the Respondent wants to grab the consumer’s attention on its web pages, the Respondent uses color fonts, highlighted fonts, bold fonts, and large fonts. No such font was used with respect to the disclaimer.
Finally, the disclaimer is (i) not merely at the end of the web page where the consumer will likely never go, (ii) not merely in an extremely small font, (ii) but also in faded greyscale. The Respondent has not provided an effective disclaimer. The Respondent has provided a disclaimer designed not to be noticed. Ironically, the Respondent posts “front and center” on its pages and in bold font the warning: “This product contains nicotine. Nicotine is an addictive chemical.” Respondent thus knows how to create an effective notice but chose not to make an effective disclosure that Respondent is not associated or affiliated with the Complainant.
The Respondent’s lack of adequate disclaimer must also be placed in the context of the Respondent’s web page which features color images of the Complainant’s products closely resembling the product images on Complainant’s web pages.
I believe the following points require the conclusion that the Respondent registered and used the disputed domain name in bad faith to lure unsuspecting internet customers into making purchases from Respondent’s website: (1)The persistent use of the JUUL mark, (2) the persistent use of color pictures of JUUL products, (3) the lack of an effective disclaimer, and (4) and the choice of the disputed domain name composed only of Complainant’s JUUL mark and the generic word “buy.” Interestingly, the Respondent knows how to sell Complainant’s products without running afoul of the Policy. The Respondent’s website <www.directeliquids.com> offers JUUL products for sale.
Finally, I note that the Respondent is not re-selling harmless consumer products. The Respondent is re-selling the highly addictive nicotine drug. Although I would find the Respondent’s disclaimer inadequate for any re-seller’s website, an effective disclaimer is particularly imperative for consumers to make informed judgments as to the risks associated with making purchases from non-authorized merchants of addictive products.
I would order the disputed domain name to be transferred to the Complainant.
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 <buyjuul.com> domain name REMAIN WITH Respondent.
M. Kelly Tillery, Chair and Panelist
William F. Hamilton, Panelist
Charles Kuechenmeister, Panelist
Dated: July 22, 2019
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