The Complainant is Monster Energy Company, United States of America (“United States”), represented by Knobbe, Martens, Olson & Bear, LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Peter Malandrinos, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2021. On March 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 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 April 12, 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 April 16, 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 April 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2021. The Center appointed William F. Hamilton as the sole panelist in this matter on May 26, 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 designs, creates, develops, markets, and sells beverages. The Complainant’s MONSTER ENERGY mark (the “Mark”) is well-known throughout the United States and internationally. The Complainant commenced using the Mark in commerce in 2002. In addition to beverage sales, the Complainant also uses the Mark in connection with the sale of clothing, sports gear, stickers, and related accessories. The Annexes to the Complaint establish that the Complainant owns hundreds of trademark registrations for the Mark, or elements of the Mark, throughout the world including dozens of registrations with the United States Patent and Trademark Office, e.g., United States Registration No. 3057061, dated February 7, 2006, and United States Registration No. 4036681, dated October 11, 2011. The Complainant has generated more than USD 30 billion in gross worldwide sales of its drinks. Since 2002 the Complainant has spent over USD 8.5 billion to market and promote the Complainant’s MONSTER ENERGY branded products. The Complainant’s Mark-branded drink is one of the best-selling energy drinks in the United States. The Complainant owns and operates the website “www.monsterenergy.com” which was launched in 2003. In addition to its website, the Complainant operates popular YouTube, Facebook, Twitter, and Instagram accounts that feature and promote its products and Mark. The disputed domain name was registered on December 22, 2019, and dynamically redirects to various third party websites including those with apparent malware. 5. Parties’ Contentions A. Complainant The Complainant asserts the disputed domain name is identical to the Mark because the disputed domain name is composed by appending the generic Top-Level Domain (“gTLD”) “.org” to the Complainant’s Mark. The Complainant asserts that the Complainant never authorized the Respondent to use the Mark, that the Respondent is not known by the Mark, and that the Respondent has never engaged in any bona fide commercial activity in connection with the Mark. The Complainant also asserts the Respondent has registered and used the disputed domain name in bad faith as part of a malware distribution scheme whereby visitors to the Respondent’s website at the disputed domain name are solicited to install a malicious add-on on the Internet user’s browser. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and, (iii) the disputed domain name was registered and are being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the disputed domain name is identical to the Complainant’s Mark. The disputed domain name is composed by the wholesale adoption of the Mark followed by a gTLD. A domain name which wholly incorporates a complainant’s registered mark is sufficient to establish identity for the purposes of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7; Nomura International Plc / Nomura Holdings, Inc. v. Global Domain Privacy / Nicolas Decarli,WIPO Case No. D2016-1535. The gTLD of the disputed domain name, in this case “.org”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1; Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden,WIPO Case No. D2016-1759. The Complainant has met its burden under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. The Complainant has established a prima facie case in its favor which shifts the burden of production on this point to the Respondent. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name. The Respondent did not respond to the Complaint. Furthermore, the nature of the disputed domain name, being identical to the Mark, carries a high risk of implied affiliation. See WIPO Overview, section 2.5.1. The Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Annexes to the Complaint establish that the disputed domain name was registered after the Complainant obtained its Mark and is being used to facilitate a fraudulent malware scheme whereby unsuspecting Internet users are falsely lured to the Respondent’s website and tricked into downloading malware on the user’s browser. The registration and use of a disputed domain name as part of a fraudulent scheme constitutes bad faith. Comerica Bank v. Will Rote,WIPO Case No. D2016-0419; see also WIPO Overview 3.0, section 3.1.4 (“The use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing […] is manifestly considered evidence of bad faith”); Nomura International Plc. V. Name Redacted,WIPO Case No. D2021-0654 (transferring a domain name used as part of a fraudulent email phishing scheme). Aside from the Respondent’s fraudulent scheme, it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909 (where the reputation of a complainant in a given mark is significant and the mark bears strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred); DPDgroup International Services GmbH & Co. KG v. Wise One, Wilson TECH,WIPO Case No. D2021-0109; Monster Energy Company v. PrivacyDotLink Customer 116709 / Ferdinand Nikolaus Kronschnabl, WIPO Case No. D2016-1335. The Complainant has met its burden under 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 William F. Hamilton
Sole Panelist
Date: June 9, 2021
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