JUUL Labs, Inc. v. han shun fei
Claim Number: FA2010001916071
Complainant is JUUL Labs, Inc. (“Complainant”), represented by Susanna P. Lichter of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is han shun fei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juu1vapor.com>, registered with Alibaba Cloud Computing (Beijing) Co., 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 6, 2020; the Forum received payment on October 6, 2020. The Complainant was received in English.
On October 10, 2020, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <juu1vapor.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., 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 October 15, 2020, the Forum served the English language Complaint and all Annexes, including an English and Chinese language Written Notice of the Complaint, setting a deadline of November 4, 2020 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@juu1vapor.com. Also on October 15, 2020, the English and Chinese 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 November 10, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
The Panel notes that the relevant Registration Agreement present by Complainant is written in Chinese making the favored language of the proceedings also in Chinese. However, pursuant to UDRP Rule 11(a), the Panel finds that there is a likely possibility that the Respondent is conversant and proficient in the English language and further that conducting the proceeding in Chinese would unfairly burden Complainant. Notably, the website addressed by that at-issue domain name contains some amount of content in the English language. Moreover, Respondent, although having been given appropriate notice of the instant complaint, has failed to offer any objection to going forward in English as per Complainant’s request. Therefore, the Panel finds that the proceeding should be in English.
A. Complainant
Complainant contends as follows:
Complainant, JUUL Labs, Inc., sells vaporizer devices and accessories under its distinctive JUUL mark.
Complainant has rights in the JUUL mark based on registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <juu1vapor.com> domain name is confusingly similar to Complainant’s mark because it simply misspells Complainant’s JUUL mark by replacing the letter “L” with the number “1” and adding the term “vapor.”
Respondent does not have rights or legitimate interests in <juu1vapor.com> domain name. Respondent is not commonly known by the at-issue domain name and Complainant has not licensed or permitted Respondent to use the JUUL mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to divert consumers to Respondent’s website and pass itself off as Complainant. Furthermore, Respondent does not need to make use of the JUUL mark in its domain name in order to identify its website.
Respondent registered and uses the <juu1vapor.com> domain name in bad faith. Respondent disrupts Complainant’s business by diverting web traffic away from Complainant’s websites and misleads consumers by selling unauthorized products. Additionally, Respondent uses the domain name to attract consumers for commercial gain by passing itself off as Complainant. Furthermore, Respondent has actual knowledge of Complainant’s rights in the JUUL mark since Respondent sells Complainant’s products on the resolving website and represents itself as “JUU1VAPOR.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the JUUL trademark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the JUUL trademark.
Respondent uses the at-issue domain name to pass itself off as Complainant and offer unauthorized versions of Complainant’s products for sale to third parties.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its JUUL trademark and Complainant’s registration of its JUUL mark is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <juu1vapor.com> domain name contains Complainant’s JUUL trademark, misspelled by substituting a graphically similar “1” character for the mark’s “l,” followed by the suggestive term “vapor” with all followed by a domain name-necessary top-level name, here “.com”. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <juu1vapor.com> domain name from Complainant’s JUUL trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <juu1vapor.com> domain name is confusingly similar to Complainant’s trademark. See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); see also TripAdvisor, LLC v. Zhong Wan / Wanzhongmedia, FA 1623450 (Forum July 31, 2015) (establishing a confusing similarity between the <tripadviso4.com> domain name and the TRIPADVISOR mark, as the domain name was created by swapping the letter ‘r’ from the mark for the number ‘4’); see additionally Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
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, as discussed below, 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 at-issue domain name identifies the domain name’s registrant as “han shun fei” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <juu1vapor.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <juu1vapor.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Respondent uses the <juu1vapor.com> domain name to pass itself off as Complainant and offer unauthorized JUUL products for sale. The at-issue domain name addresses a website that displays Complainant’s trademark as well as images of Complainant’s products. There, Respondent offers unauthorized JUUL products. Respondent’s use of the confusingly similar domain name in this manner falsely implies that there is a relationship between Complainant and Respondent when there is none. Respondent’s use of the confusingly similar domain name indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
Respondent’s <juu1vapor.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, Respondent’s confusingly similar domain is used to address a website displaying Complainant’s JUUL mark and other intellectual property so that Respondent may pass the website off as being sponsored by, or affiliated with, Complainant when there is no such sponsorship or affiliation. Respondent’s <juu1vapor.com> website offers unauthorized versions of Complainant’s products for sale. Respondent’s product offerings compete with products sold by Complainant while capitalizing on the confusion that Respondent intentionally created between the at-issue domain name and Complainant’s JUUL trademark. Using the <juu1vapor.com> domain name to give a false impression of affiliation with Complainant in order to disrupt Complainant’s business and unfairly compete with Complainant shows Respondent’s bad faith registration and use of the <juu1vapor.com> domain name per Policy ¶¶ 4(b)(iii) and (iv). See Kipling Apparel Corp. v. Yan Feng Geng, FA 1703296 (Forum Dec. 20, 2016) (finding the respondent registered and used the <kiplingstores.com> domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the domain name to sell the complainant’s products that were either counterfeit or genuine products resold without authorization); see also, 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 ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products).
Moreover, Respondent registered <juu1vapor.com> knowing that Complainant had trademark rights in the JUUL mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s use of Complainant’s trademark on Respondent’s <juu1vapor.com> website, and from Respondent’s offering of unauthorized JUUL products and/or competitive products for sale on such website. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <juu1vapor.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also, 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 Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under 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 <juu1vapor.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 11, 2020
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