Complainant is Monster Energy Company, United States (“United States”), represented by Knobbe, Martens, Olson & Bear, LLP, United States.
Respondent is Daniel Valverde, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2021. On July 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 8, 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 15, 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 20, 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 August 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 13, 2021.
The Center appointed John C. McElwaine as the sole panelist in this matter on September 17, 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 BackgroundComplainant is in the business of designing, creating, developing, marketing, and selling beverages.
Complainant’s MONSTER ENERGY trademark has been used in commerce since as early as 2002. Complainant’s United States trademark registration No. 3044315 for MONSTER ENERGY issued January 2006. Complainant also owns numerous trademark registrations globally for its MONSTER ENERY trademark. These other registrations for MONSTER ENERGY trademark cover a variety of goods and services including, beverages, nutritional supplements, clothing, accessories, entertainment services, sports gear, stickers, and decals. A list of such registered and pending MONSTER ENERGY trademarks held by Complainant throughout the world was attached to the Complaint as Annex D. Collectively, these trademark registrations are referred to herein as the “MONSTER ENERGY Marks”. Each of these registrations and applications pre-date Respondent’s June 2, 2021, registration of the Domain Name.
On June 2, 2021, Respondent registered the Domain Name with the Registrar. The Domain Name does not resolve to a functioning website.
5. Parties’ Contentions A. ComplainantComplainant contends that Domain Name must be transferred because each of the three elements required in paragraph 4(a) of the Policy has been established.
Complainant begins by providing background supporting the alleged well-known or famous nature of the MONSTER ENERGY Mark. Complainant asserts that in early 2002, Complainant introduced its MONSTER ENERGY brand line of beverages in the United States, which prominently bear Complainant’s MONSTER ENERGY Mark and that in 2003, Complainant began selling its MONSTER ENERGY beverages internationally. Complainant asserts that since its introduction, Complainant’s MONSTER ENERGY line has been tremendously successful with worldwide retail sales now exceeding 5 billion cans per year with estimated retail sales exceeding USD 10 billion per year.
Complainant asserts that it has spent well over USD 85 billion in marketing and promoting the MONSTER ENERGY Mark through various sponsorships including that of athletic sports teams and athletic competitions in the United States and around the world. Likewise, by unit volume and dollar value, Complainant’s MONSTER ENERGY brand drinks are generally the best-selling energy drinks in the United States and the second best-selling worldwide.
With respect to the first element of the Policy, Complainant contends that Complainant’s rights to the MONSTER ENERGY Mark dates back to as early as 2002. In addition, Complainant registered on August 19, 2003, the domain name
With respect to the second element of the Policy, Complainant contends that there is no evidence that Respondent has any rights or a legitimate interest in the Domain Name. Complainant asserts that to its knowledge Respondent lacks any type of formal association with the MONSTER ENERGY brand. Likewise, Complainant asserts that it has not authorized Respondent to use the MONSTER ENERGY Mark in any matter. In addition, Complainant asserts that its MONSTER ENERGY Mark has developed into a famous identifier of Complainant’s high quality, premium beverages over the past nineteen years. Complainant contends that Respondent does not use and has not made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services, and that the Domain Name leads to an inactive website. Because of this, Complainant concludes that this passive holding of the Domain Name satisfies the second element within paragraph 4(a) of the Policy.
With respect to the third element of the Policy, Complainant alleges that Respondent registered the Domain Name in bad faith because Complainant’s MONSTER ENERGY Mark became well-known in the United States and internationally well before the registration date of the Domain Name. Because of this, Complainant asserts that it is highly probable Respondent obtained actual or constructive knowledge of Complainant’s MONSTER ENERGY Mark at the time Respondent had registered the Domain Name. Complainant further contends that Respondent’s passive holding of the Domain Name, which is identical to Complainant’s famous MONSTER ENERGY Mark is evidence of bad faith use under Policy ¶ 4(a)(iii).
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsEven though Respondent did not formally reply to the Complaint, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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.
Because of the absence of a Response, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above-cited elements are as follows.
A. Identical or Confusingly SimilarParagraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. Complainant has provided evidence that it is the owner of numerous valid and subsisting trademark registrations globally for MONSTER ENERGY dating back to 2002. Complainant holds strong, exclusive, and valid rights to its MONSTER ENERGY Mark.
Here, the Domain Name consists entirely of Complaint’s MONSTER ENERGY Mark.
In other words, the most recognizable feature of the Domain Name, i.e., the term “MONSTER ENERGY”, is identical to Complainant’s mark, only followed by a generic Top-Level Domain Suffix.
Thus, it is the Panel’s finding that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsUnder the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Because it is difficult to produce evidence to support a negative statement, the threshold for the complainant to prove a lack of legitimate interest is low. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252.
The Policy paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you 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
(ii) you (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 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.”
With respect to Complainant’s contention that Respondent is not commonly known by the Domain Name, the Panel notes that the WhoIs information lists Respondent as “Daniel Valverde” and the Panel therefore finds, based on the record and the lack of evidence otherwise, that Respondent is not commonly known by the Domain Name. See Moncler S.p.A. v. Bestinfo,WIPO Case No. D2004-1049 (“the Panel notes that the Respondent’s name is ‘Bestinfo’ and that it can therefore not be ‘commonly known by the Domain Name’.”)
Complainant contends it has not, at any time, authorized, licensed, or permitted Respondent, nor any person or entity, to use the MONSTER ENERGY Mark in connection with a “.money” domain name. Likewise, Respondent is not and has never been an agent of Complainant, nor is there any contractual relationship between Complainant and Respondent. Complainant also contends that Respondent is not making a legitimate noncommercial fair use of the disputed domain name. Cartier International A. G. v. Blogger Pty Ltd, Publishing Australia,WIPO Case No. DAU2013-0037 (finding that in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent). Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit any response to rebut these points. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S.,WIPO Case No. D2000-0011.
Complainant contends, to the best of its knowledge, that Respondent has failed to make any use of the Domain Name since the date of registration. Complainant points out that Respondent’s Domain Name leads to an inactive website, and as such, is not in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i). See Société nationale des télécommunications: Tunisie Telecom v. Ismael Leviste,WIPO Case No. D2009-1529 (noting that passive holding of a disputed domain name “does not constitute a legitimate use of such a domain name” that would give rise to a legitimate right or interest in the name); Philip Morris USA Inc. v. Daniele Tornatore,WIPO Case No. D2016-1302 (Respondent had no rights or legitimate interests in the disputed domain name where the disputed domain name resulted to an inactive website); Philip Morris USA Inc. v. Elijah Etame,WIPO Case No. D2016-0968 (“the Panel cannot imagine any potentially legitimate interest that Respondent might have in the disputed domain names based on the manner in which the disputed domain names have been used on the inactive websites”).
Based on the foregoing, Complainant has made a prima facie showing of Respondent’s lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing.
As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate.
The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithUnder paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can also be found where respondents “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which they had no right or legitimate interest. See Accor v. Kristen Hoerl,WIPO Case No. D2007-1722. Here, the MONSTER ENERGY Mark represents the goodwill of a well-known, international beverage brand. Complainant’s MONSTER ENERGY Mark was well-known in the United States and internationally almost fifteen years before Respondent’s registration of the Domain Name. Based on Complainant’s submission, which was not rebutted by Respondent, Respondent must have known of Complainant’s MONSTER ENERGY Mark when it registered the Domain Name, which is comprised entirely of Complainant’s MONSTER ENERGY Mark. See WhatsApp Inc. v. Francisco Costa,WIPO Case No. D2015-0909 (finding that “it is likely improbable that Respondent did not know about Complainant’s WHATSAPP trademark at the time it registered the Disputed Domain Name considering the worldwide renown it has acquired amongst mobile applications, and the impressive number of users it has gathered since the launch of the WhatsApp services in 2009”.) Based on Complainant’s extensive reputation in respect to the MONSTER ENERGY Mark, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware” of Complainant’s well-known MONSTER ENERGY drinks. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (Feb. 18, 2000); see also Monster Energy Company v. Cai Manyi Manyicai,WIPO Case No. D2016-0301 (May 2, 2016) (transferring the registered domain names
The fact that the Domain Name does not resolve to an active website does not obviate a finding of bad faith use of the Domain Name. When a domain name is being passively held, the question of bad faith use does not squarely fall under one of the aforementioned non-exhaustive factors set out in paragraph 4(b) of the Policy. The three-member panel in Magazine Publishers Inc. and Les Publications Conde Nast S.A. v. ChinaVogue.com,WIPO Case No. D2005-0615, made the following observations in its determination that the respondent was acting in bad faith:
(i) the complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in the United States of America and in other countries;
(ii) the respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;
(iii) the respondent registered the domain name in 1999, and seems not to have been using the domain name;
(iv) the respondent did not reply to the complainant’s communications before the proceedings; and
(v) the respondent did not reply to the complainant’s contentions.
In this case, Complainant’s mark is well-known, if not famous, having been extensively marketed and used in the United States and internationally. Respondent did not respond to the Complaint and has provided no evidence of its intended use of the Domain Name. However, given the unique nature of the MONSTER ENERGY mark, and its fame, it seems highly likely that the Domain Name was registered to draw an association with Complainant. See e.g., Banco do Brasil S.A. v. Sync Technology,WIPO Case No. D2000-0727 (holding that the exact copying of Complainant’s mark, which deprived Complainant from legitimately reflecting its mark in a corresponding domain name, constitutes bad faith use where domain is passively held).
Based on the uncontested facts discussed in the previous sections, Respondent does not appear to have any rights or legitimate interests in the Domain Name nor does there appear to be any justification for Respondent’s choice to register the Domain Name. Accordingly, on balance, there does not appear to be any other reason for Respondent’s registration of the Domain Name other than for the possibility to trade off the goodwill and reputation of Complainant’s MONSTER ENERGY Mark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed. This is additionally evidence of bad faith registration and use.
In sum, the Panel finds that Respondent knew or should have known of Complainant’s trademark rights and that Respondent’s present passive holding of the Domain Name is evidence of registration and use of the Domain Name in bad faith. For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
John C. McElwaine
Sole Panelist
Date: October 1, 2021