Juul Labs, Inc. v Pinball Machines Shop Aussie
WIPO Case No. DAU2025-0016
•22-07-2025
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
JUUL Labs, Inc. v. Pinball Machines Shop Aussie
Case No. DAU2025-0016
1. The Parties
The Complainant is JUUL Labs, Inc., United States of America (the “United States”), represented by
Davies Collison Cave Pty Ltd, Australia.
The Respondent is Pinball Machines Shop Aussie, Australia.
2. The Domain Name and Registrar
The disputed domain name <juulpodsonline.com.au> is registered with Domain Directors Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2025. On April 23, 2025, the Center transmitted by email to Domain Directors Pty Ltd. a request for registrar verification in connection with the disputed domain name. On April 25, 2025, Domain Directors Pty Ltd. 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 .au Dispute Resolution Policy (the
“Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au
Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On May 7, 2025, the Center sent an email to the Complainant informing of additional registrant information disclosed by the Registrar that will be used for purposes of Notification of the Complaint, and the Respondent was copied into the above email.
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On May 13, 2025, the Center sought clarification from the Complainant on the remedy of either cancellation or
transfer, because the original remedy was for the request of termination. On the same day of May 13, 2025, the
Complainant confirmed that the remedy be cancellation of the disputed domain name.
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 14, 2025. In accordance with the Rules, paragraph 5(a),
the due date for Response was June 3, 2025. The Respondent sent an informal email communication to the
Center on May 8, 2025.
The Center appointed Robert Walters as the sole panelist in this matter on July 3, 2025. 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.
4. Factual Background
The Complainant JUUL Labs, Inc., is a registered Delaware corporation, of United States, operating throughout the country, the United Kingdom and Canada. JUUL provides sales both in store and online. JUUL specialises in the supply of products for adult smokers. More specifically, JUUL is a vaporizer, also known as an electronic cigarette or e-cigarette, and is designed to be convenient, easy-to-use, and familiarly enjoyable for adult
smokers. The device is able to contain nicotine-containing e-liquid formulation, which the Complainant contends
is among the first of its kind, making innovative vapor technology an alternative to smoking cigarettes.
The Complainant’s domain name <JUUL.com> was registered on June 6, 1997.
According to the Registrar, the disputed domain name was registered on March 2, 2025. At the time of filing of the Complaint, the disputed domain name resolved to a website displaying the JUUL trademark and purportedly offering JUUL products as well as unrelated third party products for sale.
The Complainant contends its JUUL Marks are extensively used and owns trademark registrations around the world, including JUUL and JUULPOD/JUULPODS, in the United States and Australia. The Australian trademark registrations are: 1717382 JUUL (registered June 30, 2015), 1939458 JUULPODS (registered July 9, 2018), and 2355859 JUULPODS (registered May 11, 2023).
According to the IP Australia database, the Respondent does not have a registered trademark for
JUULPODSONLINE, and no such trademark exists in the database.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the trademark or service mark, contrary to the requirements of the Policy, paragraph, Policy, para. 4(a)(i).
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, contrary to the requirements of the Policy, paragraph 4(a)(ii).
Moreover, it is alleged that the disputed domain name has been registered and subsequently used in bad faith, contrary to the requirements of the Policy, paragraphs 4(a)(iii) and 4(b).
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B. Respondent
On May 8, 2025, the Respondent wrote to the Center stating that the dispute is irrelevant and [the Complainant]
has no right to request termination or cancellation of the disputed domain name “just because he or she sees
the requested domain as a competitor or competition”. The Respondent further stated in its email
“He [the Complainant] should have bought it before rather than pursuing a witch hunt”.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
The disputed domain name is confusingly similar to the Complainant’s trademarks JUUL and JUULPODS.
The inclusion of the term “online” does not prevent a finding of confusing similarity. Where the disputed domain name is confusingly similar, because the domain name incorporates the complainant’s trademark in its entirety and simply adds a generic or descriptive term, the mere addition of a generic or descriptive word to a registered
Mark does not negate the confusing similarity of the domain name pursuant to Policy 4(a)(i).
The Complainant has satisfied paragraph 4(a)(i) of the Policy, and the Panel finds the disputed domain name to be confusingly similar to that of JUUL Mark.
B. Rights or Legitimate Interests
There is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.
The disputed domain name does direct consumers to an active website. The Respondent has not provided any evidence that demonstrates the disputed domain name, and subsequent website, is used for any other purpose other than to provide consumers with smoking goods or services.
The Complainant confirms that it did not extend any rights to the Respondent to use the Complainant’s trademark, in a domain name or otherwise. The Complainant confirms that the Respondent is not affiliated with the Complainant in any way. That said, where the Respondent has not provided evidence of circumstances giving rise to a right to or legitimate interest in the domain name, the Panel considers that, in light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word “juul” appears to be an invented word, the disputed domain name as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant.
The Complainant contends that the Respondent’s website infringes on the JUUL Marks. The Complainant also submits that the infringing website is designed to capitalize on confusion in order to: (1) imitate the Complainant; (2) advertise purported JUUL products; and (3) offer third party products that are unrelated to the Complainant under the JUUL Marks, including the brands Mig Cig, Smok and Smoko which are offered.
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| “JUUL Australia” or “JUUL Pods Australia” and marketing imagery (logo) is likely to confuse and mislead the | It is further contended by the Complainant that the Respondent’s use of JUUL Marks in representing Fulton, Colorbond Fence Price, WIPO Case No. D2016-1405. The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211. On that basis, the Panel finds there is no bona fide offering where the disputed domain name reproduces the Complainant's logo, sells unrelated third-party products, and contains a lack of any disclaimer, all of which suggest that the website was one of the official JUUL websites. |
| It is asserted that the disputed domain name is confusingly similar to the Complainant’s JUUL Mark, which carries a risk of assumed or implied affiliation with the Complainant. The Complainant has not authorised the Respondent to register or use the disputed domain name or any domain name containing the JUUL trademark and there is no association between the Complainant and the Respondent. | |
| Based on the evidence provided and lack of response supported by evidence by the Respondent, the Complainant has put forward a prima facie case that the Respondent lacks the requisite rights or legitimate interests in the disputed domain name, which have not been rebutted by the Respondent. See Overview of Panel Views on Selected auDRP Questions, Second Edition (“auDRP Overview 2.0”), section 2.1. | |
| Accordingly, the Panel prima facie determines that the Respondent has no rights or legitimate interests in the disputed domain name, as required under the Policy, paragraph 4(a)(ii). | |
| C. Registered or Subsequently Used in Bad Faith | |
| Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent registered or used the disputed domain name in bad faith. Paragraph 4(b) of the Policy sets out five illustrative circumstances of the registration or use of a domain name in bad faith. | |
| Bad faith registration is ordinarily determined when the respondent “knew or should have known” of the complainant’s trademark rights who also had a worldwide reputation and presence online, and nevertheless, registered a domain name. See The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113. | |
| registered the disputed domain name since: 1) the website at the disputed domain name specifically refers to | |
| The Complainant asserts that the Respondent knew about the Complainant’s JUUL Marks when the Respondent vaporizer brands | |
| The Complainant submits that the JUUL Mark is widely known and since the Respondent registered the disputed domain name years after the JUUL Mark was first used in commerce, it strains credulity to believe that the Respondent had not known of the Complainant or its JUUL marks when registering the disputed domain name. The Complainant's worldwide reputation, and presence on the Internet, indicates that the Respondent was or should have been aware of the marks prior to registering the disputed domain name; see Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517. |
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The further likelihood is that the Respondent registered the disputed domain name to profit from an implied connection by displaying a similar website, which enables potential customers and Internet users to be directed away from the Complainant. On that basis alone, the registration was likely to profit the Respondent, to use the disputed domain name for illegitimate purposes for its own commercial gain.
More importantly, the disputed domain name generally reproduces the Complainant’s trademark. The
registration of the disputed domain name and its subsequent use provides evidence, while not conclusive, of
opportunistic bad faith. See Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303, Veuve
Clicquot Ponsardin, Maison Fonde en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163;
Lancome Perfumes Et Beaute & CIE, L’OREAL v. 10 Selling, WIPO Case No. D2008-0226. In addition to this,
where it can be determined that the disputed domain name to be so obviously connected to the Complainant that
use or registration by anyone other than the Complainant, suggests opportunistic bad faith; Pavillion Agency,
Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd. and Glenn Greenhouse, WIPO Case
No. D2000-1221, and Veuve Cliquot Ponsardin, Maison Fonde en 1772 v. The Polygenix Group Co., WIPO
Case No. D2000-0163.
The Complainant further contends that by incorporating the JUUL marks into the disputed domain name and representing on the website that the Respondent is “JUUL Australia” or “JUUL Pods Australia”, and by displaying the Complainant’s packaging and marketing images, the Respondent creates the false impression that the disputed domain name originates with or is endorsed by or certified by the Complainant. Accordingly, the Respondent registered and used the dispute domain name in bad faith under paragraph 4(b)(iv) of the Policy. It is asserted that this has been undertaken in order to attract Internet users to the Respondent’s website for commercial gain; Muitas Ltd. v. Michal Kalasek, Poste restante, WIPO Case No. D2022-2963.
| Rather, the Respondent only outlines when the products were introduced and the company formation under | There is no statement on the Respondent’s website clearly stating that it is not affiliated with the Complainant. Complainant has made extensive use of the trademark globally. An Internet search would have clearly highlighted a considerable amount of information about the Complainant, and the worldwide reputation of its brand, including its business activities. |
| The Complainant is mentioned as part of wider research into the e-cigarette and vaping market. It is therefore almost inconceivable that the Respondent would be unaware of the Complainant’s trademark rights and website. | |
| More importantly, the Panel finds it relevant that Respondent has not provided any evidence of contemplated good faith registration or use. On the other hand, the Complainant has put forward serious claims regarding the apparent bad faith use of the disputed domain name that the Panel would expect any legitimate party would seek to refute. | |
| Accordingly, the Panel determines that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. |
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7. Decision
For all 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 <juulpodsonline.com.au> be cancelled.
/Robert Walters/
Robert Walters
Sole Panelist
Date: July 22, 2025
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