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Cool #JUUL : Don’t ride on a famous #trademark with your #domain registrations

Registering “cool” variants of existing trademarks is pretty much cybersquatting.

Tagging a word on a popular brand such as JUUL is not exactly “fair use” of their mark.

In the case of the domain name CoolJuul.com the intent is obvious, as the two words rhyme. Perhaps it’s “cool” to use a smokeless product, such as JUUL perhaps it’s not.

Regardless, the case was sent to the National Arbitration Forum, as JUUL Labs, Inc. filed a UDRP.

It was a quick decision for the sole panelist, as the web site provided content competing with JUUL’s products. The domain was ordered to be transferred to the Complainant.

Fun fact: HugeDomains owned the domain CoolJuul.com between 2018 – 2019 seeking $2,695 dollars for it, but they dropped it. The Respondent in this UDRP registered it in 2020, after HugeDomains let go of it.

 

JUUL Labs, Inc. v. Riley Pollard

Claim Number: FA2003001887863

PARTIES

Complainant is JUUL Labs, Inc. (“Complainant”), represented by Susanna P. Lichter of Wilson Sonsini Goodrich & Rosati, California, United States. Respondent is Riley Pollard (“Respondent”), Canada.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cooljuul.com>, registered with NameCheap, Inc..

PANEL

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.

Richard Hill as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 11, 2020; the Forum received payment on March 11, 2020.

On March 11, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <cooljuul.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 March 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 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@cooljuul.com. Also on March 16, 2020, 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 April 9, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant states that it is in the business of selling vaporizer devices and accessories. Since the company’s launch in mid-2015, Complainant’s vaporizers have been growing in popularity. Based on Nielsen retail monthly sales data of vapor devices, Complainant sold 51,454 units in January 2016, with sales increasing to 3.5 million units sold in February 2018 alone. Perhaps even more impressive, Complainant’s retail sales generated more than $77 million in revenue from retail sales (Nielsen retail sales data) in February 2018. Complainant posted more than $1 billion in revenue in 2018. In 2018, Complainant sold 16.2 million devices. As of the end of 2018, Complainant’s JUUL mark represented approximately 75% of the US e-cigarette market share and Complainant launched in an additional eight country markets in 2018. As a result of the tremendous success of Complainant’s JUUL-branded vaporizer devices and related accessories, people around the world have come to associate the JUUL marks exclusively with Complainant and therefore Complainant maintains trademark registrations and applications all over the world for its JUUL-related marks. In particular, Complainant has rights in the JUUL mark based upon registration in the United States in 2015.

Complainant alleges that the disputed domain name is confusingly similar to its mark because it wholly incorporates the mark, merely adding the generic term “cool” along with the “.com” generic top-level domain (“gTLD”).

According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or permitted to use Complainant’s JUUL mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the dispute domain name to divert users to a misleading website that promotes competing products.

Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s business through promotion of competing products. Additionally, Respondent attempts to attract Internet users to its competing website for commercial gain through the sale of unauthorized products. Finally, Respondent has actual knowledge of Complainant’s rights in the JUUL mark as shown through use of Complainant’s logo and information on Respondent’s own website.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has registered trademarks for the mark JUUL and uses it to market vaporizer devices and accessories. The mark was registered in 2015.

Complainant has not licensed or otherwise authorized Respondent to use its mark.

The disputed domain name was registered in 2020.

The resolving website offers products that compete with those of Complainant.

DISCUSSION

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”).

Identical and/or Confusingly Similar

The disputed domain name wholly incorporates Complainant’s mark, merely adding the generic term “cool” along with the “.com” gTLD. Addition of generic terms and a gTLD is irrelevant to determining confusing similarity under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Thus, the Panel finds that the <cooljuul.com> domain name is confusingly similar to Complainant’s JUUL mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent is not licensed or otherwise permitted to use Complainant’s JUUL mark. Respondent is not commonly known by the disputed domain name: where a response is lacking, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Here, the WHOIS information of states that the registrant is “Riley Pollard”. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

The resolving website promotes products that compete with those of Complainant. Use of a confusingly similar domain name to sell competing products is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). Thus, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.

Registration and Use in Bad Faith

Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.

Indeed, as already noted, the resolving website offers products that compete with those of Complainant. Past panels have found bad faith pursuant to Policy ¶ 4(b)(iii) where a respondent appropriates a complainant’s mark to divert the complainant’s customers to the respondent’s competing business. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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).”). Consequently, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <cooljuul.com> domain name be TRANSFERRED from Respondent to Complainant.

Richard Hill, Panelist

Dated: April 9, 2020

 


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