As a leader in domain disputes, Lexsynergy keeps a close eye on UDRP decisions, especially when a trademark owner's claim is denied.

In July 2019, a UDRP panel rejected a complaint filed by JUUL Labs, Inc. against the domain

Complainant's Arguments
In its claim, JUUL claims that the Respondent "is not licensed or otherwise permitted to use Complainant’s JUUL mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the disputed domain name to sell unauthorized, competing and/or counterfeit goods.

JUUL provided screenshots of the website which showed the products that they claim were "counterfeit" or "unauthoized" versions of their products but did not provide any additional support of this claim.

Respondent's Arguments
The Respondent claimed that it made fair use of the JUUL mark and had not acted in bad faith because it used the website to only sell legitimate JUUL products which were purchased from a JUUL authorized distributor. The Respondent also posted a disclaimer on the website that the Respondent has no relationship with JUUL and does not claim to be an authorized reseller of JUUL's products. 

JUUL was not able to produce any evidence that the products being sold by the Respondent were indeed counterfeit.

The UDRP panel denied the claim because it determined the Respondent had a bona fide offering of goods or services. The panel stated "Nothing in the UDRP or U.S. law requires Respondent or any other to be “authorized” by the Trademark Owner to resell legitimate goods bearing that Trademark Owner’s mark." 

The panel went on to reference previous case law which sets the conditions that constitute a bona fide offering of goods and services:

  • The Respondent actually offers the goods or services at issue; and,
  • The Respondent uses the site to sell only the legitimate trademarked goods; and,
  • The site accurately discloses the registrant’s relationship with the trademark owner; and,
  • The Respondent does not try to corner the market in all domain names.

The panel found that the Respondent met all of these requirements. It stated that "once a trademark owner releases its goods into the marketplace, it relinquishes control over their distribution, and resale, even if “not authorized,” it does not constitute trademark infringement and is permissible under law." A full version of the decision can be found HERE

What lesson should be learned?
Sufficient research is a critical part of winning a UDRP case. Having a trade mark only gets you so far. Complainants must be able to prove all three requirements, which are:

  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.

Lexsynergy's Brand Protection team does a full case evaluation prior to submitting a UDRP complaint. This includes doing some homework on the Respondent and determining whether or not they are using the domain for a bona fide offering of goods or services. We ensure our clients go in with the best chances possible by doing the necessary legwork and research.