The Complainant is Monster Energy Company of Corona, California, United States of America (“USA”), represented by Knobbe, Martens, Olson & Bear, LLP, USA.
The Respondent is Cai Manyi Manyicai of Beijing, China. 2. The Domain Name and Registrar
The disputed domain names and (the “Domain Names”) are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2016. On February 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 16, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On February 16, 2016, the Center transmitted an email to the Parties regarding the language of the proceeding. On February 16, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comments within the specified due date.
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 the Respondent of the Complaint in English and Chinese, and the proceeding commenced on March 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2016. On March 17, 2016, the Respondent submitted its request to extend the due date by four calendar days, which the Center granted. The Response was filed with the Center on March 25, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on April 14, 2016. 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, an American company, designs, creates, develops, markets and sells beverages under the brand name MONSTER ENERGY. The MONSTER ENERGY trade mark is also used in connection with clothing and sports gear. MONSTER ENERGY beverages were launched in 2002. Since its launch in the USA, MONSTER ENERGY products are sold all over the world. The line of beverages encompass all forms of energy drinks including non-carbonated energy drinks, dairy based coffee energy drink and espresso based nitrous oxide energy drinks to name a few. All the drinks bear the MONSTER ENERGY brand. The line of energy drinks include LO-CARB MONSTER ENERGY, MONSTER ENERGY ABSOLUTELY ZERO, JAVA MONSTER and MONSTER RIPPER.
The Complainant was initially named Hansen Beverage Company d/b/a Monster Beverage Company. Its changed its name on January 5, 2012 to its current name, Monster Energy Company. Since its inception, the Complainant’s business has expanded rapidly and generated more than USD22 billion in total sales revenue in the USA. It currently holds a 35.1% market share of energy drinks in the USA. Its current annual retail sales worldwide are estimated to exceed USD6 billion. Since 2002, the Complainant has spent over USD3 billion in marketing and promoting the MONSTER ENERGY drinks. It does so through sponsorship of athletes and athletic competitions around the world; on apparel and merchandise bearing the MONSTER ENERGY trade marks distributed in retail outlets; in magazines and other publications, on its various websites, third party websites and social media; sponsorship of the Las Vegas monorial, music festivals and musicians and distribution of point of sale and promotional materials. The Complainant also maintains an amateur sponsorship program called The Monster Army which currently has 360,000 amateur extreme sports athletes. They wear and use gear which bear the MONSTER ENERGY trade mark during competitions. Since its launch the Complainant has received extensive press coverage from international magazines including Forbes, Fortune, Newsweek and Businessweek which feature the MONSTER ENERGY brand prominently.
The MONSTER ENERGY trade marks are registered globally including China where it has over 20 registrations. The earliest registration in China dates back to 2009.
The Complainant also has domain names incorporating the MONSTER ENERGY trade mark including and . The websites connected to the domain names prominently display the MONSTER ENERGY trade mark. The websites host approximately 439,000 visitors per month. The “www.” website has about 200,697 visitors each month and more than 1.4 million page views. The Complainant’s Facebook page currently has more than 25 million “likes” and its Twitter account has over 2.8 million followers. The Facebook page features MONSTER ENERGY sponsored athletes, sports and events from all over the world. It also delivers content through various YouTube channels including the MONSTER ENERGY channel, The Monster Army channel and Monster World Rally Team channel. The total views for MONSTER ENERGY related channels exceed 36.5 million worldwide.
The Respondent registered the Domain Names on November 26, 2015. The Domain Names are not connected to any active websites and appear never to have been. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy have been met and the Domain Names should be transferred.
Identical or Confusingly Similar
The Complainant has strong rights in the MONSTER ENERGY trade mark. The Domain Names each contain the Complainant’s MONSTER ENERGY trade mark in its entirety followed by the generic Top-Level Domains (gTLD), “.ren.” and “.xyz”. The Domain Names are therefore confusingly similar to a trade mark in which the Complainant has rights.
Rights or Legitimate Interests
The Domain Names are inactive and therefore not used in connection with a bona fide offering of goods and services in accordance with the Policy. The WhoIs shows that the name of the Respondent bears no similarity to the Domain Names which is evidence that the Respondent is not commonly known by the name “Monster Energy”. The Respondent has no contractual relationship with the Complainant. It is not licensed or authorized to register or use the MONSTER ENERGY trade mark as its Domain Names or for any other purpose. Further there is nothing to show that the Respondent is making a legitimate or fair use of the Domain Names. The Respondent has no rights or legitimate interests in the Domain Names.
Registration and Use in Bad Faith
The MONSTER ENERGY trade mark is well known in the USA and internationally. The Respondent must have been aware of this fact when it registered the Domain Names which it did in bad faith.
Passive holding of a domain name can constitute use in bad faith, especially when the trade mark in question is famous, which is the case in this instance. This is a case where the Respondent’s activities constitute bad faith registration and use. B. Respondent
The Respondent submits as follows:
Identical or Confusingly Similar
No submissions have been made on this element.
Rights or Legitimate Interests
The Respondent claims it has rights or legitimate interests in the Domain Names for the following reasons:
1. The Respondent’s family owns a roast chicken stall for about 30 years and has established a reputation in the province of Heilongjiang or Black Dragon River. It did not register the name of its brand but marketed and promoted itself through traditional methods.
2. In order to keep up with the times, the family sought to revamp itself by creating new products and tastes. It came up with a new method of roasting and preserving meat.
3. In order to have an online presence it decided to register the brand name “Magician Anna’s Chicken” (pronounced in Chinese, “mo shi an na ji) which in Chinese sounds like Monster Energy. The name was to convey the novel methods it had invented for smoking the meat and making it more tasteful and fragrant so as to allow customers to have a nutritious meal and provide them with the energy they require. It chose the name MONSTER ENERGY to convey the meaning behind the brand in both English and Chinese.
4. The two gTLDs were picked because “.ren” embodies the unique traits of the Chinese culture as it has the same pronunciation as the Chinese word, word “人” which means people or person which is easy to identify and remember for the general Chinese population. It also represents the Chinese traditional belief that every single person plays a part. “.xyz” was registered as back-up. It was picked because it rolls off the tongue and is easy to remember and as such, scope of usage is broader.
Registration and Use in Bad Faith
There are no submissions under this element except to say that the Respondent spent a considerable amount of time and capital to implement its plan to create a brand and invent the new meat smoking methods. This included the cost of the registering the Domain Names, the websites URL, the advisory costs for the meat smoking methods. It has spent USD10,000 of capital as well as manpower and time. Changing the Domain Names of its brand and products will cause the Respondent to incur more losses. When it received the Complaint, the Respondent suspended all activities to build the website which affected their sales and publicity. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith. B. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Names is Chinese.
The Complainant submits in paragraph IV of the Complaint and confirmed by email on February 16, 2016 that the language of the proceeding should be English. The Complainant contends that the Domain Names are comprised of words in English characters. The Respondent must be aware of the Complainant’s MONSTER ENERGY trade mark and its website at “www.” which is entirely in English. The Respondent must be aware of the Complainant’s numerous trade mark registrations for MONSTER ENERGY in China in both English and Chinese. The Complainant has no knowledge of the Chinese language and it would cause undue delay and expense to submit all documents translated in to the Chinese language. A simple Internet search of MONSTER ENERGY would have shown hundreds of references to the Complainant’s trade mark in English.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. There is evidence that indicate that the Respondent has knowledge of the English language. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Respondent has filed the Response in Chinese in response to the allegations made by the Complainant. The Panel accepts the Response in Chinese. As such, the Respondent will not be disadvantaged by the proceeding being conducted in English. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has clearly established registered and unregistered rights in the trade mark MONSTER ENERGY. The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Names comprise the trade mark MONSTER ENERGY in its entirety. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD suffixes.
The Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights. D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the domain name, even if it has acquired no 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of proof shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of production always remaining on the complainant.
The Complainant alleges that the Respondent has no relationship with it or with MONSTER ENERGY. The Respondent is not authorized or licensed by the Complainant to use the MONSTER ENERGY name as a Domain Name or trade mark. Nor is it known by the name “Monster Energy”.
The Panel finds that the Complaint has made out a prima facie case.
The Respondent’s allegations and evidence submitted have not been sufficient to demonstrate rights and legitimate interests in the name MONSTER ENERGY. The Respondent alleges that its family business has owned a roast chicken store for 30 years in the Heilongjiang area under the trading name “Magician’s Anna Chicken.” The explanation given from the leap from this name to “Monster Energy” is not very convincing. “Monster Energy” is not a typical expression in Chinese or English for meat smoking or energy giving meals. The choice of the name especially given the fame of the Complainant’s trade mark would have been deliberate. It would be too much of a coincidence otherwise. If the Respondent had indeed spent USD10,000 on advice and creating a website, it would most certainly have at least done a simple Internet search to see if anyone else had rights to the name MONSTER ENERGY. The explanation seems to have been one made up after the event. No evidence has been submitted to show images of the roast chicken store, its name, the new smoking apparatus which the Respondent invented, invoices and receipts relating to the creation of the websites to be connected to the Domain Names.
In the circumstances, the Panel finds that the Respondent has failed to rebut the Complainant’s prime facie showing of lack of rights or legitimate interests in respect of the Domain Name. The Panel finds that the Complainant has satisfied the second element of the UDRP test. E. Registered and Used in Bad Faith
The standard of proof required under the UDRP is “on balance”. An asserting party needs to establish that it is more likely than not that the claimed fact is true. Conclusory allegations without supporting evidence would usually not suffice. To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The MONSTER ENERGY trade mark was registered and used for some 13 years before the Domain Names were registered. The Complainant has used the MONSTER ENERGY trade mark extensively all over the world. It’s presence on the Internet and social media would make it unusual for any third party who wants to create an Internet presence not to notice. The Respondent’s explanation of its selection of the Domain Names is disingenuous and highly unbelievable. It would be inconceivable that the Respondent had no knowledge and actual notice of the trade mark when the Domain Names were registered. The Panel concludes that the registration was made in bad faith.
The Panel also concludes that the actual use of the Domain Names is in bad faith. The Domain Names have never been connected to active websites. This of itself does not prevent a finding of bad faith. The Consensus View in paragraph 3.2 of the WIPO Overview 2.0 states that the apparent lack of active use of the domain name without any active attempt to sell or to contact the trade mark owner does not prevent a finding of bad faith. The Panel has to examine the circumstances of the case to determine whether the respondent is acting in bad faith. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
In addition to the circumstances of registration referred to above, the following facts indicate that the Domain Names are being used in bad faith –the Complainant has a widely-known trade mark, the Respondent’s address is in Beijing rather than Heilongjiang where the family business is based. In any case, it does not look like a proper contact address as it has no house or street number. The explanations given for the reason why it chose the Domain Names are not credible.
Considering the circumstances, the Panel considers that the Domain Names were also used in bad faith. Hence the Panel concludes that the Respondent’s registration and use of the Domain Names are in bad faith. 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 Domain Names and be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: May 1, 2016
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