The Complainant is Monster Energy Company, a Delaware Corporation of Corona, California, United States of America (“US”), represented by Knobbe, Martens, Olson & Bear, LLP, US.
The Respondent is J.H.M. den Ouden of Nieuwegein, Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with M International, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2016. On August 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 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.
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, and the proceedings commenced on September 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2016. An informal communication (discussed later) was transmitted by the Respondent to the Center on September 5, 2016, which was acknowledged by the Center the same day. The Center’s communication also invited the Parties to consider settlement discussions, which was not pursued by the Parties. The Center transmitted by email to the Parties a notification of Commencement of Panel Appointment Process on September 27, 2017.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on October 7, 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 facts relevant to the decision in this case are that:
(1) the Complainant has since 2002 continuously marketed and sold energy drinks (and other goods) by reference to the trade mark MONSTER ENERGY;
(2) the trade mark is the subject of United States Patent and Trademark Office (“USPTO”) Registration No. 3057061, registered February 7, 2006;
(3) the disputed domain name was registered on July 20, 2016;
(4) the disputed domain name is not in use and has not been used; and
(5) there has been no commercial or other relationship between the Parties and the Complainant has not authorized the Respondent to use the trade mark or to register any domain name incorporating the trade mark. 5. Parties’ Contentions A. Complainant
The Complainant asserts trade mark rights in MONSTER ENERGY and alleges that the disputed domain name is identical to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant accordingly petitions the Panel to order transfer of the disputed domain name. B. Respondent
The Respondent did not submit a formal Response to those contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Consent to transfer
On September 5, 2016 and after notification of the Complaint, the Respondent wrote to the Center in the following terms: “I don’t understand why this all is, if they want it it is fine by me. just give me my 28 dollar back they would have paid for as well.”
The Panel has in these circumstances discretion whether to order immediate transfer of the disputed domain name or make an analysis applying the Policy. The Panel notes that whilst the Respondent has indicated its preparedness to voluntarily give up the disputed domain name, it has not done so unconditionally.
Further, when the Complainant was alerted to that offer by the Center and asked if it wished to suspend these Administrative Proceedings to explore settlement options, it replied indicating that it preferred to proceed to a decision. Accordingly, the Panel is not presented with a bilateral request for transfer as in, for example, the case of Dolce & Gabbana s.r.l. v. Couture Industry, Trent Rezor, WIPO Case No. D2008-1850.
Furthermore, on the basis of the Complainant’s uncontested representations and as discussed below, the Panel has found that the disputed domain name was registered in bad faith. Other panels have found that “consent-to-transfer” offers are one way for cybersquatters to avoid adverse findings against them.1
The Panel decides that in the circumstances it is appropriate to proceed to apply the Policy. 6.2. Substantive Issues
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name is 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a Response. Having considered the Complaint and the available evidence, the Panel finds the following: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy.2 The Complainant provides evidence of registration of the trade mark MONSTER ENERGY with the USPTO and the Panel accepts that the Complainant has trade mark rights in that expression.
The disputed domain name takes the trade mark and merely adds the generic Top-Level Domain, “.world”, which generally can be disregarded for the purposes of comparison.3 The Panel finds that the disputed domain name is identical to the Complainant’s trade mark.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
The Panel finds it convenient to add here and for the purposes of later discussion the observation that, had paragraph 4(a)(i) turned on proof of unregistered or “common law” trade mark rights, the evidence of use and reputation of the trade mark provided with the Complaint is overwhelming and has been so recognized in earlier decisions under the Policy to which the Complainant has been a party.4 B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests.5
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
There is no evidence that the Respondent has trade mark rights in the disputed domain name. The publicly available WhoIs database identifying the Respondent as the registrant does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no relationship between the parties, and the Complainant has not authorized the Respondent to use its trade mark. Further, the evidence is that the disputed domain name has not so far been used and it follows that there is no use in connection with a bona fide offering of goods or services, or legitimate noncommercial use of the disputed domain name.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel finds that the disputed domain name was registered and is being used in bad faith.
Registration in bad faith is supported by the evidence that the trade mark has been in continuous use since 2002 during which time many billions of dollars in revenue has been generated by way of sales of energy drinks and related merchandising goods all made by reference to the trade mark.
Whilst the disputed domain name has not been used, the concept of a domain name “being used in bad faith” is not confined to positive action and the Panel applies the principle of so-called “passive holding” first laid out in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, applied countless times since by UDRP panelists. The trade mark at issue in these proceedings is shown to be especially well known and, absent a Response, it is impossible to find any plausible reason why the Respondent should have registered a domain name identical to the trade mark, or to imagine any likely good faith use to which the domain name might be put in the future.
Accordingly, the Complainant has satisfied the third and final limb of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules and with the Complainant’s request, the Panel orders that the disputed domain name be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Date: October 21, 2016
1 See, for example, Maxim Healthcare Services, Inc. v. VistaPrint Technologies Ltd,WIPO Case No. D2009-1168.
2 See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
3 Ibid. at paragraph 1.2.
4 See, for example, Monster Energy Company v. PrivacyDotLink Customer 116709/Ferdinand Nikolaus Kronschnabl,WIPO Case No. D2016-1335.
5 See, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624.
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