The Complainant is Monster Energy Company, United States of America (“United States”), represented by Knobbe, Martens, Olson & Bear, LLP, United States.
The Respondent is Joshua Jones, Australia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2021. On February 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 4, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 5, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 11, 2021. 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 the Respondent of the Complaint, and the proceedings commenced on February 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2021. The Respondent filed an informal Response on February 15, 2021, with the possibility of transferring the disputed domain name to the Complainant. The Center sent a possible settlement email to all Parties on February 15, 2021. The Complainant confirmed by email on February 17, 2021, that they did not wish to suspend the proceeding. The Center sent the Commencement of Panel Appointment Process to the Parties on March 8, 2021. The Center appointed Mihaela Maravela as the sole panelist in this matter on March 15, 2021. 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 in the business of designing, creating, developing, marketing, and selling beverages. The Complainant was formerly known as Hansen Beverage Company d/b/a Monster Beverage Company and changed its name to Monster Energy Company as of January 5, 2012. The Complainant started selling its MONSTER ENERGY line of beverages in the United States early 2002, and in 2003 the sales went internationally. The Complainant is the exclusive owner of a number of registered trademarks consisting of or including the words “monster energy”, including the European Union trademark registration No. 4823563 for MONSTER ENERGY, filed on December 22, 2005, and registered for goods in international classes 5 and 32 and the United States trademark registration No. 3057061 for MONSTER ENERGY, filed on April 18, 2002, and registered for goods and services in international class 32. The Complainant is also the owner of the domain name The disputed domain name was registered on November 29, 2020. The disputed domain name directs to an inactive website. 5. Parties’ Contentions A. Complainant The Complainant argues that it has strong rights in the MONSTER ENERGY trademarks resulting from registration and continuous use in commerce since 2002. Also, the disputed domain name is identical or confusingly similar with its MONSTER ENERGY trademarks, as the most distinguishing feature of the disputed domain name is identical to the Complainant’s trademark. As regards the second element, the Complainant contends that the disputed domain name is not used in connection with a bona fide offering of goods and services as the Respondent has failed to make any use of the disputed domain name. Moreover, the Complainant has not authorized, licensed, or permitted any person or entity to use the MONSTER ENERGY trademark for registering a domain name. The Complainant also argues that the disputed domain name was registered and is used in bad faith as the Complainant’s trademark MONSTER ENERGY became well-known internationally well before the registration of the disputed domain name. Moreover, the Respondent has registered another domain name similar with the Complainant’s MONSTER ENERGY trademark, and this is indicative of a pattern of bad faith actions against the Complainant. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. However, in a number of email communications the Respondent indicated willingness to settle the matter. As mentioned above, the Complainant was not willing to explore settlement options. 6. Discussion and Findings Notwithstanding the fact that no formal Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant. “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable” paragraph 15(a) of the Rules. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements: (i) that the disputed 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 disputed domain name; and (iii) that the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed. Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the MONSTER ENERGY trademark. As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. Also, according to section 1.7 of the WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Here the disputed domain name consists of the Complainant’s MONSTER ENERGY trademark (except for the omission of the space between the words “monster” and “energy”, which is required for technical reasons). It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.sydney”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0. This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name: (i) before any notice to it 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 has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” In the present case, the Complainant has established a prima facie case that it holds rights over the trademark MONSTER ENERGY and claims that the Respondent has no legitimate interests or rights to acquire and use the disputed domain name. There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or that the Respondent has been commonly known by the disputed domain name. By not submitting a formal Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati,WIPO Case No. D2014-1839. In its informal communication of February 15, 2021, the Respondent provided no explanation or evidence to demonstrate preparations for a bona fide offering of goods or services or other circumstances that could rebut the prima facie case made by the Complainant. With the evidence on file, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the requirement of paragraph 4(a)(ii) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. According to the unrebutted assertions of the Complainant, its MONSTER ENERGY trademark was widely used in commerce well before the registration of the disputed domain name in November 2020. The disputed domain name is identical with the Complainant’s trademark apart from the relevant gTLD “.sydney” and absence of a space between the words “monster” and “energy”. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain name. The Respondent provided no explanations for why he registered the disputed domain name. Section 3.3 of the WIPO Overview 3.0 describes the circumstances under which the passive holding of a domain will be considered to be a bad faith registration: “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, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” The Panel finds that passive holding of the disputed domain name does not in the circumstances of this case prevent a finding of bad faith. There is no evidence in the record of a legitimate use of the disputed domain name. The Complainant’s trademark MONSTER ENERGY has been extensively used by the Complainant in various countries including Australia where the Respondent resides and had significant goodwill and reputation at the registration of the disputed domain name (see e.g. Monster Energy Company v. WhoisGuard, Inc. / Ivan Demidov, Self-employed,WIPO Case No. D2019-2494; Monster Energy Company v. Huguang Tang / tanghuguang,WIPO Case No. D2016-1758). The Respondent has registered the disputed domain name that is confusingly similar to the Complainant’s well-known trademark. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. Moreover, the Respondent has not formally participated in these proceedings and has failed to rebut the Complainant’s contentions (Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210, Accenture Global Services Limited v. WhoIs Privacy Protection Service, Inc./ ROBERT GREEN,WIPO Case No. D2013-2100) and to provide any evidence of actual or contemplated good-faith use. The informal communication from the Respondent where he showed willingness to give up the disputed domain name further supports the above conclusion. Based on the evidence and circumstances of this case, the Panel concludes that the disputed domain name was registered and used 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 disputed domain name Mihaela Maravela
Sole Panelist
Date: March 26, 2021
Full & Egal Universal Law Academy