JB IP, LLC v Mo Kang

WIPO Case No. DCO2023-0112

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

JB IP, LLC v. Mo Kang

Case No. DCO2023-0112

1. The Parties

Complainant is JB IP, LLC, United States of America (“United States”), represented by

Valauskas Corder LLC, United States.

Respondent is Mo Kang, United States.

2. The Domain Name and Registrar

The Disputed Domain Name <jungleboysofficial.co> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28,

2023. On December 28, 2023, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the Disputed Domain Name. On December 28, 2023, the Registrar

transmitted by email to the Center its verification response confirming that Respondent is listed as the

registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name

Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution

Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint,

and the proceedings commenced on January 10, 2024. In accordance with the Rules, paragraph 5, the due

date for Response was January 30, 2024. Respondent did not submit any response. Accordingly, the

Center notified Respondent’s default on February 3, 2023.

The Center appointed Richard W. Page as the sole panelist in this matter on February 8, 2024. The Panel

finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration

of Impartiality and Independence, as required by the Center to ensure compliance with the Rules,

paragraph 7.

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4. Factual Background

Complainant is a Delaware limited liability company doing business as the well-known Jungle Boys and has

been continuously using the JUNGLE BOYS Mark in commerce in the cannabis industry since at least as

early as 2016. Complainant is the owner of the following trademark registrations:

United States Trademark Registration No. 7134110 JUNGLE BOYS registered August 8, 2023 in classes 16,

21 and 34; and

International Trademark Registration Nos. 1763500 JUNGLE BOYS registered October 12, 2023 in class 25;

1763498 JUNGLE BOYS registered October 12, 2023 in class 25; and 1620669 JUNGLE BOYS registered

April 5, 2021 in classes 3, 18, 24 and 34.

Complainant also owns various domain names incorporating the JUNGLE BOYS Mark, including without

limitation, <jungleboysflorida.com> registered in 2020. Complainant’s domain names permit Internet users to

find websites featuring detailed information about the goods and services offered by Complainant.

Complainant’s websites include display of the JUNGLE BOYS Mark, and also contain text, artwork,

photographs and other copyrighted content.

Complainant also owns and operated the JUNGLE BOYS retail stores in California and Florida.

Respondent registered the Disputed Domain Name on May 12, 2023, which resolved to a website claiming

to provide the same or highly related goods and services offered and sold by Complainant without

Complainant’s permission.

Complaint registered its <jungleboysclothing.com> domain name in 2016 and <jungleboys.com> domain

name in 2000.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the

Disputed Domain Name.

Complainant further contends that the Disputed Domain Name utilizes the JUNGLE BOYS Mark in its

entirety. Consumers are likely to believe that the Disputed Domain Name is associated with Complainant

and the JUNGLE BOYS Mark in which Complainant has rights. Complainant further contends that the

Disputed Domain Name is confusingly similar to the JUNGLE BOYS Mark.

Complainant further contends that the Disputed Domain Name is used to operate a website that attempts to

impersonate Complainant with the intent to trade on Complainant’s recognition and goodwill. By

impersonating Complainant, Respondent cannot demonstrate a bona fide offering of goods or services.

Complainant further contends that Respondent has never been commonly known by the Disputed Domain

Name.

Complainant alleges that it did not authorize Respondent to use the JUNGLE BOYS Mark. However,

Respondent’s website illustrates content that is the same and is closely related to that which appears on

Complainant’s websites.

Complainant further alleges that Respondent is attempting to divert consumers with intent for commercial

gain. Therefore, Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain

Name.

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Complainant further alleges that the Disputed Domain Name utilized the dominant identity of the JUNGLE

BOYS Mark and is linked to a website claiming to provide the same or highly related goods and services

offered and sold by Complainant without Complainant’s permission. It is clear that Respondent is attempting

to profit from Complainant’s JUNGLE BOYS Mark. Respondent’s efforts to pass itself off as Complainant

disrupts Complainant’s business and misleads consumers. By using the Disputed Domain Name,

Respondent is intentionally attempting to attract for commercial gain, Internet users to Respondent’s website,

by creating a likelihood of confusion with the JUNGLE BOYS Mark as to the source, sponsorship, affiliation,

or endorsement of Respondent’s website or of a product on Respondent’s website.

Complainant concludes that Respondent registered and used the Disputed Domain Name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the

dispute: “A Panel shall 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.”

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will

review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”),

section 4.3.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following three elements:

i)       that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the

JUNGLE BOYS Mark in which Complainant has rights; and,

ii)      that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,

iii)     that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or

threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between

the JUNGLE BOYS Mark and the Disputed Domain Name. WIPO Overview 3.0, section 1.7.

Complainant has shown rights in respect of the JUNGLE BOYS Mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain

Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other term here, “official” may bear on assessment of the second and third elements,

the Panel finds the addition of such term does not prevent a finding of confusing similarity between the

Disputed Domain Name and the JUNGLE BOYS Mark for the purposes of the Policy. WIPO Overview 3.0,

section 1.8.

In addition, the country-code Top Level Domain (“ccTLD") such as “.co” may be disregarded for purposes of

assessing confusing similarity. WIPO Overview 3.0, section 1.11.1.

The Panel finds the first element of the Policy has been established.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or

legitimate interests in the Disputed Domain Name.

Although the overall burden of proof in UDRP proceedings is on Complainant, panels have recognized that

proving Respondent lacks rights or legitimate interests in a domain name may result in the difficult task of

“proving a negative”, requiring information that is often primarily within the knowledge or control of

Respondent. As such, where Complainant makes out a prima facie case that Respondent lacks rights or

legitimate interests, the burden of production on this element shifts to Respondent to come forward with

relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of

proof always remains on Complainant). If Respondent fails to come forward with such relevant evidence,

Complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Complainant contends that the Disputed Domain Name utilizes the JUNGLE BOYS Mark in its entirety.

Consumers are likely to believe that the Disputed Domain Name is associated with Complainant and the

JUNGLE BOYS Mark in which Complainant has rights.

Complainant further contends that the Disputed Domain Name is used to operate a website that attempts to

impersonate Complainant with the intent to trade on Complainant’s recognition and goodwill. By

impersonating Complainant, Respondent cannot demonstrate a bona fide offering of goods or services.

Complainant further contends that Respondent has never been commonly known by the Disputed Domain

Name.

Complainant alleges that it did not authorize Respondent to use the JUNGLE BOYS Mark. However,

Respondent’s website illustrates content that is the same and is closely related to that which appears on

Complainant’s websites.

Having reviewed the available record, the Panel finds Complainant has established a prima facie case that

Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent has not rebutted

Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating

rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or

otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy

establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall

be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b)(iv) of the Policy states: “by [Respondent] using the domain name, you have intentionally

attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating

a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or

endorsement of your web site or location or of a product on Respondent’s website or location.”

Complainant alleges that it did not authorize Respondent to use the JUNGLE BOYS Mark. However,

Respondent’s website illustrates content that is the same and is closely related to that which appears on

Complainant’s websites.

Complainant further alleges that the Disputed Domain Name includes the JUNGLE BOYS Mark and is linked

to a website claiming to provide the same or highly related goods and services offered and sold by

Complainant without Complainant’s permission. It is clear that Respondent is attempting to profit from

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Complainant’s JUNGLE BOYS Mark. Respondent’s efforts to pass itself off as Complainant disrupts

Complainant’s business and misleads consumers. By using the Disputed Domain Name, Respondent is

intentionally attempting to attract for commercial gain, Internet users to Respondent’s website, by creating a

likelihood of confusion with the JUNGLE BOYS Mark as to the source, sponsorship, affiliation, or

endorsement of Respondent’s website or of a product on Respondent’s website.

Complainant concludes that Respondent registered and used the Disputed Domain Name in bad faith.

The Panel finds that Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel

orders that the Disputed Domain Name <jungleboysofficial.co> be transferred to Complainant.

/Richard W. Page/

Richard W. Page

Sole Panelist

Date: February 22, 2024