Recent Case Notes & Commentary

Counterfeiting, “Unauthorised” Trademark Use and the UDRP

In markets where fake and counterfeit products can be widespread, companies often look to the UDRP to attempt to assert their trademark rights. It is not uncommon to see individual companies bring multiple cases against different Respondents in a short period of time.

Juul, a global market-leader in the e-cigarette and vaporiser industry, has recently brought three complaints to the UDRP, to curb what it alleges as the unauthorised sale and counterfeiting of its own products. Superficially, the three cases appear to be quite similar, involving the disputed domain names <>, <> and <juulistanbul>. However, Juul had mixed results, with its first complaint a success, the second going up in smoke and, after regaining some more puff, success with the third.

Photograph of a Juul and a Cigarette

In both cases, the Complainant had no issues succeeding under the first element of the policy. However, under the second and third the Complainant had drastically different fortunes, and upon examining them closely, we can see how the UDRP deals with some of the intricacies of trademark law. After doing that, we will return to the third and most recent decision.

Case 1.

JUUL Labs, Inc. v. Valentin Houseman / juulbulgaria

Claim Number: FA1906001848751

In this case, the complaint was undefended by the Respondent. Nevertheless, all three elements of the UDRP still had to be proved. The Complainant argued that the domain name was being used to “divert Internet users to the Respondent’s scam website which sells counterfeit or unauthorised versions of Complainant’s products.” With evidence submitted in the form of screenshots, and no response from the Respondent, the evidence before the panel demonstrated a clear case of cybersquatting. The panel had no issue finding in favour of the Complainant in the remaining two elements of the Policy.

However, it is worth noting that Complainants must always prove bad faith use and registration of a disputed domain name to be successful. While proving bad faith use is relatively straightforward in such cases, bad faith registration can sometimes be a little more complex. In this instance, given the trademark’s notoriety and the fact the domain name contained a geographic term (indicating a possible location in which the Respondents counterfeit products were sold), the panel concluded that on balance, the Respondent must have known about the trademark at the time of registering, with an intent to use it in bad faith.

All in all, this was a pretty clear case of cybersquatting, and the disputed domain name was transferred.

Case 2.

JUUL Labs, Inc. v. Jake Ades / Internet Development Company

Claim Number: FA1906001846643

However, the second of these three cases that JUUL brought under the UDRP wasn’t quite as straightforward, and a 2 out of 3 majority of the three-person panel ultimately found for the Respondent.

This case centred on the domain name <> and is particularly interesting because it involves the resale of a trademark owner’s product. The Respondent was not an authorised distributor of the Complainant’s products, but rather purchased the legitimate products from a distributor, and resold them online. The Complainant argued that because the Respondent was not licensed or permitted to use the trademark, it did not have a right or legitimate interest in the domain name. However, the panel noted the following:

“The products it sells are not unauthorized as they are legitimate products made and sold by Complainant itself. 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 “first sale” or “exhaustion” doctrine is well-established in trademark law. 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.”

Ultimately, a majority of the panel found in favour of the Respondent on the second and third elements of the policy, because despite not owning or being authorised to use the Complainant’s trademark, the resale of legitimate products is a bona fide offering of goods and services under both the UDRP and relevant trademark laws. Given there were no other factors indicating a bad faith nature of the business, such as evidence of counterfeiting, the second and third elements were found in favour of the Respondent.

Notice here, also, that this decision, so far as the majority was concerned, is another useful illustration of the principle known as Oki Data and the famous decision was cited by the panel. Accordingly, the facts also gave rise to a right or legitimate interest in the domain name because, as the majority said: