The Complainant is Monster Energy Company of Corona, California, United States of America ("United States"), represented by Knobbe, Martens, Olson & Bear, LLP, United States.
The Respondent is Pedro Madue \u00d1o Atalaya of Santiago, Chile. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 2, 2017. On August 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 3, 2017, 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 August 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 13, 2017.
The Center appointed Nicholas Weston as the sole panelist in this matter on September 27, 2017. 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 operates a global beverage business with retail sales exceeding USD 6 billion per year. The Complainant holds registrations for the trademark MONSTER ENERGY in the United States and numerous other countries which it uses to designate a range of drinks. United States Trademark Registration No. 3057061, for example, shows an application date of April 18, 2002, and has been registered since February 7, 2006.
The Complainant has operated a website using the domain name since August 19, 2003.
The Respondent registered the Disputed Domain Name on April 12, 2017. The Disputed Domain Name resolves to a "coming soon" website. 5. Parties' Contentions A. Complainant
The Complainant cites its United States trademark registration No. 3057061 and numerous other registrations around the world, including in Chile, for the mark MONSTER ENERGY as prima facie evidence of ownership.
The Complainant submits that the mark MONSTER ENERGY is well-known and that its rights in that mark predate the Respondent's registration of the Disputed Domain Name by 15 years. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the MONSTER ENERGY trademark (citing F.Hoffman-La Roche AG v. Julio Alvares,WIPO Case No. D2008-0254) and that the similarity is not removed by the addition of the generic Top-Level Domain ("gTLD") ".team" which suggests some connection with Complainant's practice of sponsoring athletes and athletic teams.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to an inactive website, and contend that such a respondent has no rights or legitimate interests in the Disputed Domain Name (citing Société Nationale des télécommunications: Tunisie Telecom v. Isamel Leviste,WIPO Case No. D2009-1529; Philip Morris USA Inc. v. Daniele Tornatore,WIPO Case No. D2016-1302; and Philip Morris USA Inc. v. Elijah Etame,WIPO Case No. D2016-0968).
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and long standing prior use of the Complainant's trademarks. The Complainant also submits evidence showing that the Respondent's broker, in reply to a Complainant's offer to purchase the Disputed Domain Name for USD 225, offered to transfer the Disputed Domain Name to the Complainant for USD 2,500, and later counter-offered USD 2,400. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark MONSTER ENERGY in the United States. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the MONSTER ENERGY trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant's trademark MONSTER ENERGY followed by (b) the gTLD ".team".
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: "monsterenergy".
It is also well-established that where a domain name incorporates a complainant's well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the use of a different gTLD suffix (see: Monster Energy Company v. Tank Li,WIPO Case No. D2016-1184; and Monster Energy Company v. Cai Manyi Manyicai,WIPO Case No. D2016-0301).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent's rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because there is no evidence of the Respondents' use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services, noting that it resolves to an inactive website.
This Panel accepts that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and, in the absence of a reply by the Respondent, the Panel finds for the Complainant on paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, the trademark MONSTER ENERGY is such a famous mark for soft drinks that it would be inconceivable that the Respondent might have registered the mark without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Monster Energy Company v. Cai Manyi Manyicai, supra ("MONSTER ENERGY trade mark is well known in the USA and internationally"); Monster Energy Company v. Huguang Tang / tanghuguang,WIPO Case No. D2016-1758 ("widely known"); Monster Energy Company v. Geremy Bordeleau,WIPO Case No. D2016-1308 ("The Panel accepts the Complainant's evidence that its trademark MONSTER ENERGY is widely known throughout the world, including Canada, as denoting the Complainant and its products"); and Monster Energy Company v. Tank Li, supra ("The Complainant and its trade mark MONSTER ENERGY enjoy a worldwide reputation.")
Further, a gap of ten years between registration of a complainant's trademarks and a respondent's registration of the disputed domain name (containing the trademark) could constitute in certain circumstances additional evidence of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name fifteen years after the Complainant established trademark rights in the MONSTER ENERGY mark.
On the issue of use, the offer by the Respondent's broker to sell the Disputed Domain Name to Complainant for sums exceeding USD 2,400 further demonstrate that Respondent did not have bona fide intent to use the Disputed Domain Name and is evidence of bad faith use in accordance with paragraph 4(b)(i) of the Policy.
Further, the Panel notes that the Disputed Domain Name does not resolve to an active website. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. "While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the 'passive holding' doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use" (See WIPO Overview 3.0, section 3.3).
In this case, the Complainant has a well-known trademark, no response to the Complaint has been filed, and the Respondent's broker offered to transfer the Disputed Domain Name for sums well in excess of its registration costs. This Panel regards such conduct as prima facie evidence of bad faith use in the absence of a response.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 the Complainant.
Nicholas Weston
Sole Panelist
Date: October 9, 2017
Full & Egal Universal Law Academy