Juul Labs, Inc. v jasim miah, vape dubai king

WIPO Case No. DAE2024-0007

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

JUUL Labs, Inc. v. jasim miah, vape dubai king

Case No. DAE2024-0007

1. The Parties

The Complainant is JUUL Labs, Inc., of United States of America (“United States”), represented by Saba &

Co. IP, Lebanon.

The Respondent is jasim miah, vape dubai king, United Arab Emirates (“UAE”).

2. The Domain Name and Registrar

The disputed domain name <juuldubai.ae> is registered with AE Domain Administration (.aeDA).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2024.
On April 16, 2024, the Center transmitted by email to AE Domain Administration (.aeDA) a request for
registrant verification in connection with the disputed domain name. On May 7, 2024, AE Domain
Administration (.aeDA) transmitted by email to the Center its verification response confirming that the

Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute
Resolution Policy for - UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute
Resolution Policy - UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute

Resolution Policy - UAE DRP (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on May 7, 2024. In accordance with the Rules, paragraph 5(a),
the due date for Response was May 27, 2024. The Respondent’s informal communications were received
by the Center on May 14 and May 19, 2024, as well as June 20, 2024.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on June 20, 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

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4. Factual Background

The Complainant is an electronic cigarettes (“e-cigarettes”) company based in the United States. It manufactures a series of e-cigarettes amongst which ENDS, JUUL, and JUUL2.

In addition to the <juul.com> domain name, the Complainant owns several trademark registrations, amongst which (Annexes 4 and 5 to the Complaint):

- UAE registration No. 300599 for the word and device mark JUUL, registered on March 17, 2019, in international class 9;

- UAE registration No. 300601 for the word and device mark JUUL, registered on March 17, 2019, in international class 34;

- UAE registration No. 303370 for the word and device mark JUUL, registered on April 24, 2019, in

international class 9;
- UAE registration No. 303371 for the word and device mark JUUL, registered on April 24, 2019, in international class 34;

- UAE registration No. 365561 for the word mark JUUL, registered on March 16, 2022, in international

class 34; and

-	UAE registration No. 365558 for the word mark JUUL, registered on March 16, 2022, in international
class 9.

The disputed domain name was registered on September 11, 2023, and presently does not resolve to an active webpage. At the time of the filing of the Complaint, the disputed domain name redirected Internet users to the webpage available at <vapshopdubai.ae>, advertising “genuine Juul products in the United Arab

Emirates” as well as selling competing tobacco products and/or accessories of other commercial origin.

The Complainant sent the Respondent a warning letter on February 2, 2024. No reply was received but the
following disclaimer was added to the website that used to be available at the disputed domain name:
“ HAVE NO AFFILIATION WITH JUUL OR MYLE VAPE. THIS IS NOT OFFICIAL

WEBSITE OF MYLE OR JUUL VAPE. INC.”

5. Parties’ Contentions

A. Complainant

The Complainant claims to be known for its JUUL electronic nicotine delivery systems which are characterized by compact design and the use of nicotine salts, which allows for a smoother vaping experience in comparison to traditional e-cigarettes, having become well-known as a market leader for the sale of these products since 2015.

Under the Complainant’s view, the disputed domain name is confusingly similar to the Complainant’s JUUL well-known trademark given that the Complainant’s trademark is entirely reproduced in the disputed domain name with the addition of the geographical term “dubai” which is incapable of avoiding a finding of confusing similarity (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:

(i) the Respondent is not commonly known by the disputed domain name;

(ii) there is no relationship whatsoever between the Complainant and the Respondent and the Complainant
has never authorized the Respondent to use its trademark, nor has the Complainant ever authorized the
Respondent to sell the Complainant’s products;

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(iii) the JUUL trademark is famous and well known in connection with vapes and electronic cigarettes;

(iv) the website to which Internet users were redirected when accessing the disputed domain name created a

likelihood of association with the Complainant and its products as to source, sponsorship, or affiliation; and

(v) the disclaimer later added to the website to which Internet users were redirected when accessing the
disputed domain name, after having the Respondent received the warning letter sent by the Complainant,
was insufficient to characterize a bona offer of goods and services under the “Oki Data test”, as established
in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (given that the Respondent was not
only offering the Complainant’s products but also competing products and accessories of other commercial

origin).

As to the registration or use of the disputed domain name in bad faith, the Complainant states that:

(i) the Respondent knew of the Complainant’s trademarks when registering the disputed domain name;

(ii) the purpose of the Respondent’s registration of the disputed domain name was to attract, for commercial
gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered
trademark as to the source, sponsorship, affiliation, or endorsement of its website;

(iii) by reproducing the Complainant’s registered trademark in the disputed domain name and offering the suggest to be an affiliated dealer of the Complainant as the source of the website which is not the case; and

(iv) the lack of reply to the warning letter sent is a further indicative of the Respondent’s bad faith.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. On May 14, 2024, the Respondent
sent a first informal message to the Center stating that it had registered the disputed domain name but
“disconnected it after receiving the complaint”, apologizing for the mistake and undertaking not to do it again
(“I confirm that I will never do that again. please dismiss the case”).

On May 19, 2024, the Respondent sent a second informal message to the Center requesting the suspension of the case given that it agreed with the transfer of the disputed domain name to the Complainant.

On the Respondent’s last message to the Center, dated June 20, 2024, the Respondent reiterates that it recognizes that it was a mistake having registered the disputed domain name, for what it apologizes and emphasizes its willingness to transfer the disputed domain name to the Complainant.

6. Discussion and Findings

Noting the substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution appropriate.

6.1 Procedural matter – Respondents consent

Firstly, the Panel has to address the Respondent’s acceptance as to the voluntary transfer of the disputed domain name without findings of fact or conclusions as to the merits of the case under the Policy.

A UAE DRP panel may at its discretion order the transfer of the domain name if the respondent has given its unambiguous consent to transfer without findings under the Policy, paragraph 6(a). WIPO Overview 3.0, section 4.10. Some panels have declined to grant a remedy solely on the basis of respondent’s consent

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where the complainant objects or because the panel finds a broader interest in reaching a substantive
determination.

In the present case, considering all the circumstances of the present case, the Panel will proceed to a decision on the merits, and analyze the three requisite elements under paragraph 6(a) of the Policy.

6.2 Substantive matter

Paragraph 6(a) of the Policy sets forth the following three requirements which the Complainant must meet in order for the Panel to order the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established its rights in the JUUL trademark, duly registered in several jurisdictions around the world.

The addition of the geographic term “dubai” does not prevent a finding of confusing similarity under the Policy which, as recognized by past panels involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed

domain name”. See WIPO Overview 3.0, sections 1.7 and 1.8.

The first element of the Policy has therefore been established.

B. Rights or Legitimate Interests

Paragraph 6(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:

(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain
name or a name corresponding to the domain name in connection with a bona fide offering of goods or

services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the

domain name, even if it has not acquired trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for

commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In that sense, the Complainant indeed states that there is no relationship whatsoever between the trademark, nor has the Complainant ever authorized the Respondent to sell the Complainant’s products.

Also, the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate the absence of a right or legitimate interest.

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As seen above, the Respondent has used the disputed domain name to redirect Internet users to an online shop advertising “genuine Juul products in the United Arab Emirates” as well as selling competing tobacco products and/or accessories of other commercial origin.

Selling other parties competing products at the online shop to which Internet users were redirected when accessing the disputed domain name does not meet the criteria for a bona fide offering of goods or services as established in Oki Data Americas, Inc. v. ASD, Inc, supra.

Lastly, the disclaimer on that website was not clear as to the identity of the responsible for the online shop, not properly indicating who is the owner of the JUUL trademark. Further, the presence of the disclaimer was not clear and sufficiently prominent on the website and would have remained under the control of the Respondent who could have changed it at any time. Moreover, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant. See WIPO Overview 3.0, section 2.5.1.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 6(b)(iv) that bad faith registration and use can be found in respect of a domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, both the registration and use of the disputed domain name in bad faith can be found pursuant to Policy, paragraph 6(b)(iv) in view of the redirection of the disputed domain name to a website purportedly offering the Complainant’s products as well as third party related products, which creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement thereof. For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 6(b)(iv) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <juuldubai.ae> be transferred to the Complainant.

/Wilson Pinheiro Jabur/
Wilson Pinheiro Jabur
Panelist
Date: July 4, 2024