Complainant is Monster Energy Company of Corona, California, United States of America represented by Knobbe, Martens, Olson & Bear, LLP, United States of America.
Respondent is Theodore Idleburg of Lakeland, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet SE (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 name. On September 19, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on September 24, 2016.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on September 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 19, 2016.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on October 28, 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
Complainant designs, creates, develops, markets and sells beverages. In particular, Complainant sells nutritional supplements and beverages (collectively "beverages") under its MUSCLE MONSTER trademark. Complainant has sold products under the MUSCLE MONSTER trademark since at least 2013. It promotes and markets the MUSCLE MONSTER beverages through Internet websites, social media, live events, sponsorship of athletes, and distribution at point of sale. The MUSCLE MONSTER beverages sold more than USD 27.9 million in 2013 and USD 35.4 million in 2014.
Complainant owns numerous worldwide MUSCLE MONSTER trademark registrations.
Complainant markets and promotes its MUSCLE MONSTER beverages on its website at , as well as its social media pages on Facebook, Twitter, and Instagram.
Respondent registered the disputed domain on July 16, 2016. Respondent has parked the domain at a website featuring pay-per-click links related to Complainant's business.
On August 3, 2016, Complainant's counsel sent a cease and desist letter to Respondent, asking Respondent to transfer the disputed domain name to Complainant. On August 16, 2016, Respondent sent an email, which states:
"While we do not recognize the ownership of (Monster Energy) I have clear ownership of the name and any disputes will have to be made to the Polk County Clerk of Courts. I am the free and clear owner of . And I do not wish to cancel or transfer the ownership of the domain. Time and imagination behind the thought process given to choose this name is worth 25,000 to me. If you wish to submit me a purchase order for the domain I will keep the domain parked until this is rectified.
Theodore Idleburg"
There was no further correspondence between the parties. 5. Parties' Contentions A. Complainant
Complainant asserts that it has rights in the MUSCLE MONSTER trademark. It contends that the disputed domain name is confusingly similar to Complainant's mark because it consists of Complainant's MUSCLE MONSTER mark in its entirety, and that the only difference between Complainant's mark and the disputed domain name is the top level domain ".xyz". Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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. A. Identical or Confusingly Similar
To satisfy paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
As set forth above, Complainant owns various trademark registrations for the MUSCLE MONSTER mark.
The disputed domain name is confusingly similar to Complainant's MUSCLE MONSTER mark. It contains Complainant's MUSCLE MONSTER mark in its entirety. The only difference between the disputed domain name and Complainant's trademark is the addition of the top level domain ".xyz". As found, since the very early UDRP decisions, the selection of the Top-Level Domain is irrelevant to a conclusion of identity or confusing similarity. See Busy Body, Inc. v Fitness Outlet Inc.,WIPO Case No. D2000-0127.
Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion which is unrebutted by Respondent.
Complainant has exclusive rights in the MUSCLE MONSTER trademark and has not authorized Respondent to register and use the disputed domain name . Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the MUSCLE MONSTER trademark. Respondent is not known under the trademark. Respondent has made no showing that it has any legitimate interest in using the disputed domain name or made a bona fide offering of goods or services under the trademark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made an unrebutted, prima facie showing of Respondent's lack of rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that:
"for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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."
It is difficult to conceive that Respondent did not know of Complainant's marks and products when Respondent registered the disputed domain name. As set forth above, the MUSCLE MONSTER beverages are protected by various United States of America and international trademark registrations. Complainant used the MUSCLE MONSTER trademark for its MUSCLE MONSTER beverages, and has marketed and sold them worldwide. All of this occurred before Respondent registered on July 16, 2016. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant's trademark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, in which the panel found it "inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant's rights and interests".
Additionally, Complainant sent Respondent a cease and desist letter on August 3, 2016. Respondent therefore was made aware of Complainant's rights in the MUSCLE MONSTER trademark and Complainant's demand that it transfer the disputed domain name to Complainant.
The cease and desist letter and Respondent's response set forth above show that Respondent purchased this disputed domain name for the purpose of selling it to Complainant, which is evidence of bad faith according to paragraph 4(b) of the Policy.
It also is well established that passive holding of a domain name can constitute use in bad faith under the totality of the circumstances. See, e.g., Telstra Corporation Ltd v Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 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 name, be transferred to Complainant.
Sandra A. Sellers
Sole Panelist
Date: November 11, 2016
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