The Complainant is Monster Energy Company, United States of America (“United States”), represented by Knobbe, Martens, Olson & Bear, LLP, United States.
The Respondent is Whois Privacy Protection Service by onamae.com, Japan / Hideki Nakayama, Japan.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2020. On December 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2020, 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 December 2, 2020 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 in English on December 8, 2020.
On December 2, 2020, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On December 8, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Japanese of the Complaint, and the proceedings commenced on December 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2021. The Center received an email communication from the Respondent on December 25, 2020. On February 1, 2021, the Center informed the Parties that it would proceed to panel appointment.
The Center appointed Douglas Clark as the sole panelist in this matter on March 12, 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 BackgroundThe Complainant is in the business of designing, creating, developing, marketing, and selling beverages. The Complainant’s MONSTER ENERGY brand is used in connection with beverages, clothing, sports gear, stickers, and other products and services. It sells in many countries around the world including Japan. The Complainant commenced selling MONSTER ENERGY drinks in 2002 and now sells over 3 billion cans a year. The Complainant also sells a number of products with trademarks that incorporate ULTRA such as MONSTER ENERGY ULTRA BLACK, MONSTER ENERGY ZERO ULTRA, MONSTER ENERGY ULTRA BLUE, MONSTER ENERGY ULTRA CITRON, MONSTER ENERGY ULTRA RED, MONSTER ENERGY ULTRA VIOLET, ULTRA SUNRISE, ULTRA SUNSET, ULTRA PARADISE, and UNLEASH THE ULTRA BEAST! (the “ULTRA marks”).
The Complainant is the owner of the international trademark registrations for MONSTER ENERGY in multiple classes in numerous countries around the world and for the ULTRA marks in the United States as well as in Japan. For example, the mark MONSTER ENERGY ULTRA has been registered in classes 5 and 32 in Japan by the Complainant since October 31, 2014 under registration no. 5715016.
The Respondent is an individual based in Japan.
The disputed domain name was registered on April 8, 2019 and resolves to a parking page for the Registrar.
5. Parties’ Contentions A. ComplainantIdentical or confusingly similar
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s MONSTER and MONSTER ENERGY ULTRA trademarks. The disputed domain name incorporates dominant portions of Complainant’s MONSTER ENERGY ULTRA mark and is followed by the Top-Level Domain (“TLD”) suffix “.monster” which is the dominant portion of Complainant’s MONSTER ENERGY mark.
No rights or legitimate interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name; that the Respondent has not been commonly known by the disputed domain name; and that the Respondent does not use, and has not made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
Registered and used in bad faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith in full knowledge of the Complainant’s rights and that passive holding can amount to bad faith use.
B. RespondentThe Respondent in an English language email to the Center stated that he would like to release the disputed domain name. The Respondent did not reply to the Complainant’s contentions substantively.
6. Discussion and Findings 6.1 Language of the proceedingsThe language of the Registration Agreement is in Japanese.
The Complainant requested the language of the proceedings be in English on the following grounds. First, that the Respondent uses English words, rather than Japanese characters, in the disputed domain name. “Monster” and the gTLD suffix “.monster” are not Japanese characters. Second, the Complainant and its representatives in this proceeding are not fluent in Japanese, and thus, it would cause undue delay and great additional expense if the Complainant were required to submit all documents translated into Japanese in the proceeding. Third, a simple Internet search of the Complainant’s MONSTER ENERGY and MONSTER ENERGY ULTRA marks would show at least hundreds of references to the famous MONSTER ENERGY brand in English.
The Respondent did not respond to this request but his email to the Center was in English and shows that he clearly understands the nature of the proceedings.
Given the Respondent responded in English and stated he did not wish to keep the disputed domain name, the Panel determines English to be the language of the proceeding.
6.2 Consent to TransferThe Panel takes the Respondent’s email communication that he would like to release the disputed domain name as a clear consent to transfer.
Paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") sets out the current views of UDRP panelists when a respondent consents to transfer or cancel the disputed domain name. This provides:
“Where parties to a UDRP proceeding have not been able to settle their dispute prior to the issuance of a panel decision using the “standard settlement process” described above, but where the respondent has nevertheless given its consent on the record to the transfer (or cancellation) remedy sought by the complainant, many panels will order the requested remedy solely on the basis of such consent. In such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis).
In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights.”
This Panel considered this issue in detail in Rockwool International A/S v. Lin Chengxiong,WIPO Case No. D2012-0472 and the Panel will not repeat its reasoning here. The Panel finds the circumstances which previous panels found appropriate to proceed to a substantive decision on the merits are not present in this proceeding. The Panel finds the Respondent’s statement it wished to release the disputed domain name is sufficient to order transfer of the disputed domain name.
Accordingly, the Panel will order that the disputed domain name be transferred.
7. DecisionFor 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
Douglas Clark
Sole Panelist
Date: March 31, 2021