JUUL Labs, Inc. v. The bee
Claim Number: FA2111001972609
Complainant is JUUL Labs, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is The bee (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulonlinesales.com> (the “disputed domain name”), registered with NameSilo, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 9, 2021; the Forum received payment on November 9, 2021.
On November 9, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <juulonlinesales.com> disputed 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 November 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2021 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@juulonlinesales.com. Also on November 11, 2021, 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 December 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the JUUL trademark in connection with vaporizer devices and accessories as a smoking alternative for adults. Complainant uses the JUUL trademark to provide and market its products and services. Complainant has rights in the JUUL trademark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,818,664, registered Sept. 22, 2015) (hereinafter the “JUUL Mark”).
Respondent’s <juulonlinesales.com> disputed domain name is confusingly similar to the JUUL Mark. The disputed domain name incorporates the JUUL Mark in its entirety and then adds the descriptive term "online sales” followed by the ".com" generic top-level domain ("gTLD").
Respondent has no rights or legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name, nor has Complainant licensed or otherwise permitted Respondent to use the JUUL Mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent disrupts Complainant’s business by attempting to sell Complainant’s or third-party products without permission. The disputed domain name resolves to Respondent’s website where Respondent attempts to pass itself off as affiliated with Complainant and offers competing products for sale. Complainant provides screenshots of Respondent’s website in an annex to the Complaint.
Respondent registered and is using the disputed domain name in bad faith. Respondent attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the JUUL Mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Moreover, Respondent had actual knowledge of Complainant’s JUUL Mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant holds valid trademark rights in the JUUL Mark. In addition, the disputed domain name is confusingly similar to Complainant’s JUUL Mark as it incorporates the JUUL Mark in its entirety, merely adding a descriptive term and the “.com” gTLD; that Respondent lacks rights or legitimate interests in the use of the disputed domain name since Respondent is not commonly known by the disputed domain name, Complainant has not authorized, licensed, or otherwise permitted Respondent to use the JUUL Mark and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant; and that Respondent registered and is using the disputed domain name in bad faith as the disputed domain name initially resolved to a website on which Respondent impersonated Complainant and offered Complainant’s goods – and competing goods – for sale.[i]
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 Panel finds that Complainant asserts rights in the JUUL Mark based on registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish a complainant’s rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides copies of its several trademark registrations with the USPTO as an annex to the Complaint (e.g., Reg. No. 4,818,664, registered Sept. 22, 2015). Therefore, the Panel finds that Complainant has rights in the JUUL Mark under Policy ¶ 4(a)(i).
The Panel also concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s JUUL Mark as it adds the descriptive term “online sales” and the “.com” gTLD to Complainant's JUUL Mark. The addition of a descriptive term and a gTLD does not distinguish a disputed domain name from a trademark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a descriptive term and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel therefore concludes that the disputed domain name is confusingly similar to the JUUL Mark under Policy ¶ 4(a)(i).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”). In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard-pressed to furnish availing arguments had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain name, Complainant has not authorized, licensed, or otherwise permitted Respondent to use the JUUL Mark and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use because Respondent uses the disputed domain name to divert Internet users to a website that impersonates that of Complainant and sell competing goods. Use of a disputed domain name to resolve to a webpage selling goods or services in direct competition with a complainant’s business supports a finding that a respondent has not used a domain for a bona fide offering or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii). See 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).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
First, Respondent registered and is using the disputed domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iii) can be found where a respondent uses a confusingly similar domain name to disrupt the Complainant’s business by diverting users to a disputed domain name that resolves to a website selling competing goods. See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). Respondent is appropriating Complainant’s JUUL Mark to divert Complainant’s customers to Respondent’s competing business and Respondent also has attempted to pass off the website as that of Complainant. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Furthermore, bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with the Complainant. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s imputes intent to attract Internet users for commercial gain and finds bad faith per Policy ¶ 4(b)(iv).”). Here, Respondent created a likelihood of confusion with Complainant and its JUUL Mark by registering a disputed domain name that incorporates in its entirety Complainant’s JUUL Mark, followed by a descriptive term and a “.com” gTLD. Respondent’s initial use of the disputed domain name is to resolve to a website that displays Complainant’s products as well as products from competing businesses.[ii]
Second, the fame of the JUUL Mark, which was adopted by Complainant in advance of the Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with such a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith.
Based on the above, the Panel therefore concludes that Respondent had actual knowledge of Complainant’s rights in the JUUL Mark, especially since Respondent’s website displayed and purportedly sold Complainant’s goods. The JUUL Mark is widely known and since Respondent registered the disputed domain name years after the JUUL Mark was used in commerce, it strains credulity to believe that Respondent had not known of the Complainant or its JUUL Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademarks before registering a domain name is sufficient to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juulonlinesales.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: December 13, 2021
[i]. As of the writing of this Decision, however, the disputed domain name resolves to a landing page that states “Dangerous scam page”, indicating that the landing page may contain malicious software.
[ii]. In addition, Respondent’s use of the disputed domain name to host and distribute malware on the landing page to which the disputed domain name currently resolves is emblematic of bad faith. See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that a disputed domain name which resolves to a landing page that distributes malware to Internet users’ computers demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv)).
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