JUUL Labs, Inc. v. Phuong Nguyen
Claim Number: FA2205001995396
Complainant is JUUL Labs, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Phuong Nguyen (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juulpodonline.com>, registered with Shinjiru Technology Sdn Bhd.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2022; the Forum received payment on May 8, 2022.
On May 9, 2022, Shinjiru Technology Sdn Bhd confirmed by e-mail to the Forum that the <juulpodonline.com> domain name is registered with Shinjiru Technology Sdn Bhd and that Respondent is the current registrant of the name. Shinjiru Technology Sdn Bhd has verified that Respondent is bound by the Shinjiru Technology Sdn Bhd 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 May 13, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 2022 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@juulpodonline.com. Also on May 13, 2022, 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 June 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant produces vaporizer devices and accessories. Complainant has rights in the JUUL and JUULPODS trademarks (together, the JUUL trademarks) through its registration with the United States Patent and Trademark Office (“USPTO”) Reg. No. 4,818,664, registered Sep. 22, 2015 (for JUUL); Reg. No. 5,918,490, registered Nov. 26, 2019 (for JUULPODS). Respondent’s <juulpodonline.com> domain name is identical or confusingly similar to Complainant’s trademarks as it incorporates the JUUL trademark in its entirety, adding the word “pod”, and adding the word “online” along with the “.com generic top-level domain (“gTLD”) to both marks. The JUULPODS trademark is incorporated into the disputed domain name in its singular form.
Respondent lacks rights and legitimate interests in the <juulpodonline.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its JUUL trademarks in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead attempts to pass off as Complainant and divert users for to a competing website.
Respondent registered and uses the <juulpodonline.com> domain name in bad faith. Respondent is diverting users for commercial gain to a competing website and disrupting Complainant’s business while creating a false sense of affiliation with Complainant. Respondent used a privacy service to shield its identity. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the JUUL trademarks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 4,818,664 JUUL (word), registered September 22, 2015 for goods in Intl Classes 1, 30 and 34;
No. 6,583,859 JUUL (word), registered December 7, 2021 for goods in Intl Classes 9 and 16;
No. 4,898,257 JUUL (in stylized lettering), registered February 9, 2016 for services in Intl Class 34;
No. 6,211,614 JUUL (in stylized lettering), registered December 1, 2020 for goods in Intl Class 9;
No. 6,064,902 JUUL (fig), registered May 26, 2020 for goods and services in Intl Classes 9 and 16;
No. 5,918,490 JUULPODS (word), registered November 26, 2019 for goods in Intl Class 34;
No. 9,504,904 JUUL C1 (word), registered October 5, 2021 for goods in Intl Class 9 and 34;
No. 6,548,206 JUUL PASS (word), registered November 2, 2011 for goods in Intl Class 9 and 34;
No. 5,776,153 JUUL LABS (word), registered June 11, 2019 for goods in Intl Class 34; and
No. 5,770,541 JUUL LABS (fig), registered June 4, 2019 for goods in Intl Class 34
The disputed domain name <juulpodonline.com> was registered on May 3, 2020.
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”).
Complainant claims rights in the JUUL trademarks through its registration with the USPTO (e.g., JUUL Reg. No. 4,818,664, registered Sep. 22, 2015, JUULPODS Reg. No. 5,918,490, registered Nov. 26, 2019). Registration with the USPTO is generally sufficient in demonstrating rights in the trademarks under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel find that Complainant has rights in the trademarks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <juulpodonline.com> domain name is identical or confusingly similar to Complainant’s JUUL / JUULPODS trademarks. Under Policy ¶ 4(a)(i), adding descriptive words along with the “.com” gTLD and removal of the letter “s” is insufficient in differentiating from the trademark. See Broadcom Corp. v. Domain Depot, FA 96854 (Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also 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).”). Here, the disputed domain name incorporates the JUUL trademark in its entirety, adding the word “pod”, and adding the word “online” along with the “.com” gTLD to both trademarks, while removing the “s” from the JUULPODS trademark to indicate its singular form. Therefore, the Panel find that Respondent’s domain name is confusingly similar to Complainant’s trademark/s under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant argues that Respondent is not commonly known by the <juulpodonline.com> domain name, nor has Complainant authorized or licensed Respondent to use its JUUL trademarks in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its trademarks in the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS record identifies Respondent as “Phuong Nguyen”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its JUUL trademarks in the disputed domain name. Therefore, the Panel find that espondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not using the <juulpodonline.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use by diverting users to a competing website. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to divert internet users to a competing website does not constitute any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Complainant provides screenshots of the disputed domain name’s resolving website, which purports to sell competing third party vapor products. Therefore, the Panel find that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent is not using the <juulpodonline.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use by attempting to pass off as Complainant. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as complainant does not constitute any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). As noted above, the Complainant provides screenshots of the disputed domain name’s resolving website, which also displays the JUUL logo and trademark as well as Complainant’s JUUL packaging and images. Therefore, the Panel find that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Finally, Complainant argues that Respondent would not be using the <juulpodonline.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use even if it were selling actual JUUL products. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to sell a complainant’s competitors’ products or complainant’s products without authorization does not constitute any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See Nike, Inc. v. Dias, FA 135016 (Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). Again, considering the - by the Complainant provided screenshots of the resolving website - the Panel agrees, and find that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and uses the <juulpodonline.com> domain name in bad faith by creating a false sense of affiliation with Complainant. Under Policy ¶ 4(b)(iv), using a disputed domain name to create confusion as to the source or affiliation of the website is evidence of bad faith registration and use. See Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). As noted, Complainant has provided screenshots of the disputed domain name’s resolving website, which displays the JUUL logo and trademark as well as Complainant’s JUUL packaging and images. Therefore, the Panel agrees with Complainant’s conclusion, and find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered and uses the <juulpodonline.com> domain name in bad faith by diverting consumers for commercial gain. Under Policy ¶ 4(b)(iv), using a disputed domain name to divert internet users for respondent’s own commercial gain is evidence of bad faith registration and use. See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). The Panel recall Complainant’s screenshots of the disputed domain name’s resolving website, which displays the JUUL logo and trademark as well as Complainant’s JUUL packaging and images. Therefore, the Panel find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered and uses the <juulpodonline.com> domain name in bad faith by diverting users to a competing website. Under Policy ¶ 4(b)(iii), using a disputed domain name to divert users to respondent’s competing website is evidence of bad faith registration and use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). As noted above, Respondent’s disputed domain name’s resolving website displays the JUUL logo and mark as well as Complainant’s JUUL packaging and images, and based on that, the Panel find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent registered the <juulpodonline.com> domain name with bad faith actual knowledge of Complainant’s rights in the JUUL trademarks. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through incorporation of a well-known/established mark into a domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Considering the fact that Complainant’s registered JUUL trademarks are incorporated into the disputed domain name, the Panel agree with Complainant’s conclusion, and find that Respondent had actual knowledge of Complainant’s rights in the trademarks under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent’s bad faith is further demonstrated by its use of a WHOIS privacy service. Hiding one’s information behind a privacy service may contribute to a finding of bad faith registration or use under Policy ¶ 4(a)(iii). See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sept. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). The Panel notes that Respondent’s information was initially hidden behind a WHOIS privacy service, and – considering the use of the disputed domain name – the Panel find that Respondent’s use of a privacy service contributes to a finding of 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 <juulpodonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: June 13, 2022
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