The Complainant is Monster Energy Company of Irvine, Corona, United States of America, represented by Knobbe, Martens, Olson & Bear, LLP, United States of America.
The Respondent is Cameron Jackson of Kingston, New South Wales, Australia. 2. The Domain Names and Registrar
The disputed domain names and are registered with Uniregistrar Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2016. On September 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 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.
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 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2016.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 21, 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 is part of the beverage industry and uses the MONSTER ENERGY trademark in connection with beverages, clothing, sports gear and other products.
The Complainant is the owner of several trademark registrations amongst which are the following:
- Australian Trademark Registration No. 1103490 for MONSTER ENERGY, registered on July 13, 2009 in classes 05 and 32;
- Australian Trademark Registration No. 1109998 for MONSTER ENERGY, registered on July 13, 2009 in class 32; and
- Australian Trademark Registration No. 1360300 for MONSTER ENERGY, registered on March 30, 2012 in classes 09 and 25.
The disputed domain names are and and were registered on August 22, 2016. The disputed domain names resolve to parked pages without active content. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it has been using the MONSTER ENERGY trademark in relation to beverages, clothing and sports gears since at least as early as 2002. The Complainant started its activities in the United States of America but then expanded to more than 100 other countries, including Australia, where the Respondent is located. The Complainant’s worldwide sales now exceed USD 6 billion per year.
In the Complainant’s point of view the disputed domain names are identical to its registered and well-known MONSTER ENERGY trademark and can cause confusion amongst Internet users who might falsely believe that the respective websites are operated or endorsed by the Complainant.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain names given that:
(i) the Respondent has not used the disputed domain names in connection with a bona fide offering of goods and services and is therefore not making a legitimate noncommercial or fair use of the disputed domain names;
(ii) the Respondent has not been commonly known by the disputed domain names, nor has he acquired any registered trademarks or trade names corresponding to the disputed domain names;
(iii) the Respondent has not been authorized by the Complainant to use the MONSTER ENERGY trademark; and
(iv) the Complainant’s trademark is so well known that the Respondent must have had it in mind when registering the disputed domain names.
Moreover, the Complainant contends that the registration of the disputed domain names was done clearly in bad faith given that the MONSTER ENERGY trademark became well-known in the United States of America and internationally well before the registration date of the disputed domain names, so much so that the Respondent could not simply be unaware of it. Furthermore, the disputed domain names have been passively held, given that they resolve to parked pages, what has already been found as an indication of bad faith use of domain names that consist of well-known trademarks. Lastly, the fact that the Respondent has faced at least 12 UDRP decisions which found him in bad faith of registering domain names that related to third parties’ well-known trademarks is a further indication of his bad faith in relation to the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:
(i) the disputed domain names are identical or confusingly similar to a trademark 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain names. A. Identical or Confusingly Similar
The Complainant has established rights in the MONSTER ENERGY trademark, duly registered in various countries.
The Panel finds that the disputed domain names and merely reproduce the Complainant’s mark and thus the first element of the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant to first make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has not authorized the Respondent to use the MONSTER ENERGY trademark.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain names, or any possible link between the Respondent and the disputed domain names that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain names, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Another element to consider is the fact that no active use of the disputed domain names appears to have taken place which makes it even more difficult to conceive which rights or legitimate interests the Respondent would have in domain names that reproduce in their entirety a well-known trademark.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring them to the complainant who is the owner of a trademark relating to the disputed domain names or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain names primarily for the purpose of disrupting the business of the complainant; or
(iv) by using the disputed domain names, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
Past UDRP panels have already dealt with the question of whether the “passive holding” of a domain name could constitute bad faith. Paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that “[…] panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity”.
In the present case, the passive holding of the disputed domain names by the Respondent amounts to the Respondent acting in bad faith in view of the following circumstances:
(i) the Complainant’s trademark is well-known;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain names;
(iii) the Respondent appears to have engaged in a pattern of registering domain names that incorporate third parties well-known trademarks, as shown in the 12 past UDRP cases against him;
(iv) taking into account all of the above (as the panel did in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003), it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
For the reasons stated above, the Respondent’s conduct amounts, in this Panel’s view, to bad faith registration and use of the disputed domain names. 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 disputed domain names, and be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: November 3, 2016
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