Complainant is Monster Energy Company, United States of America (“United States”), represented by Knobbe, Martens, Olson & Bear, LLP, United States.
Respondent is Contact Privacy Inc. Customer 1249791840, Canada / Farnaughio Nicholson, 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 June 19, 2021. On June 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 21, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 7, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 13, 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 Respondent of the Complaint, and the proceedings commenced on July 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 3, 2021. The Center appointed Robert A. Badgley as the sole panelist in this matter on August 9, 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 Since 2002, Complainant has produced and sold beverages under the trademark MONSTER ENERGY. Complainant’s worldwide sales of MONSTER ENERGY drinks exceed three billion cans and USD 6 billion per year. In 2013, Complainant introduced a new line of beverages, “targeted specifically to performance athletes, bodybuilders, powerlifters, and other fitness-related individuals”, under the trademark MUSCLE MONSTER. According to Complainant, “MUSCLE MONSTER® is currently the #1 energy plus protein beverage in the U.S.” Annual sales of Complainant’s MUSCLE MONSTER beverages exceed USD 10 million. Complainant holds numerous registrations of the mark MUSCLE MONSTER, including United States Patent and Trademark Office (“USPTO”) Reg. No. 4,376,796 (registered July 30, 2013 for “nutrition supplements in liquid form” in class 5 and “beverages, namely, soft drinks” in class 32) and USPTO Reg. No. 4,451,535 (registered December 17, 2013 for “vitamin fortified beverages” in class 5, “dairy-based beverages” in class 29, and “ready to drink coffee based beverages” in class 30). Complainant’s main commercial website at “www.monsterenergy.com” features Complainant’s MONSTER ENERGY, MUSCLE MONSTER, and other of Complainant’s beverage brands. Complainant has annexed to the Complaint substantial evidence of its advertising and marketing efforts for the MONSTER ENERGY and MUSCLE MONSTER marks, as well as Complainant’s extensive social media footprint. The Domain Name was registered on March 22, 2021. It resolves to an error page (“This site can’t be reached”). 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the three elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that Complainant has rights in the trademark MUSCLE MONSTER through registration and use demonstrated in the record. The Panel also finds that the Domain Name is identical to that mark. Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to articulate, much less demonstrate, his bona fides vis-à-vis the Domain Name. The three non-exclusive “safe harbors” quoted above do not appear present here. Respondent does not assert or demonstrate any efforts to use the Domain Name in connection with a bona fide offering of goods or services. There is no basis to conclude that Respondent is commonly known by the Domain Name. Respondent has not claimed that he is seeking to make a noncommercial or fair use of the Domain Name, and the Panel cannot perceive any such effort from the record here. Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and used the Domain Name in bad faith. On this undisputed and well-developed record, the Panel finds that MONSTER ENERGY is a famous trademark and MUSCLE MONSTER is a distinctive and well-known trademark. The Panel also finds, on a balance of probabilities, that Respondent very likely had Complainant and its MUSCLE MONSTER trademark in mind when registering the Domain Name. Respondent has made no use of the Domain Name since registering it five months ago. In the seminal UDRP case Telstra Corporation v. Nuclear Marshmallows,WIPO Case No. D2000-0003, however, the panel held that, in certain circumstances, the “passive holding” of a domain name may constitute “bad faith” within the meaning of the UDRP. As noted above, the Panel concludes that MUSCLE MONSTER enjoys a fair measure of notoriety as a trademark. The fame of the relevant trademark is typically a leading factor in a “passive holding” analysis. In the circumstances of this undisputed record, the Panel can conceive of no good-faith reason for Respondent to have registered the Domain Name, and that Respondent’s “passive holding” of the Domain Name amounts to bad faith use of the Domain Name. Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name Robert A. Badgley
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Sole Panelist
Date: August 23, 2021
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