WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Monster Energy Company v. Serhan K. Yasar
Case No. D2016-0472
1. The Parties
The Complainant is Monster Energy Company of Corona, California, United States of America, represented by Knobbe, Martens, Olson & Bear, LLP, United States of America.
The Respondent is Serhan K. Yasar of Izmir, Turkey.
2. The Domain Name and Registrar
The disputed domain name <rehab.coffee> (“Disputed Domain Name”) is registered with Godaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2016. On March 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 proceeding commenced on March 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2016. On March 10, 2016, the Center received an email communication from the Respondent. The Respondent did not however submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on April 12, 2016.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on April 25, 2016. 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.
On May 9, 2016, due to exceptional circumstances, the Panel extended the due date for rendering its decision to May 16, 2016.
4. Factual background
The Complainant designs, creates, develops, markets and sells beverages. The Complainant has been using the REHAB trade mark since 2011, and holds numerous registered trade mark rights in the REHAB trade mark, and other trade marks incorporating the words “rehab” in various jurisdictions, including the European Union and Turkey. The Complainant has been selling beverages under the REHAB trade mark since 2011.
The Respondent registered the Disputed Domain Name on behalf of Ms. K[…](the Respondent’s business partner). According to the Registrar, the Disputed Domain Name was registered by the Respondent since at least September 3, 2016.
5. Parties’ contentions
The Complainant’s contentions can be summarised as follows:
(a) The Complainant is the registered owner of the REHAB trade mark in various jurisdictions, including in the European Union, the United States of America, Turkey, the United Kingdom of Great Britain and Northern Ireland and so on. The Disputed Domain Name incorporates the Complainant’s REHAB trade mark in its entirety. The Top-Level Domain extension, “.coffee”, adds to the possible confusion and association between the Disputed Domain Name and the Complainant. Either way, the mere use of the generic word “coffee” as the Top-Level Domain extension does nothing to detract from the confusing similarity between the Disputed Domain Name and the Complainant’s REHAB trade mark.
(b) The Disputed Domain Name is currently parked, and the Respondent does not have rights to or legitimate interests in the Disputed Domain Name. The Respondent has not used (and has made no demonstrable preparations to use) the Disputed Domain Name in connection with the bona fide sale of any goods or services and is not making any noncommercial or fair use of the Disputed Domain Name. The Complainant has not authorised the Respondent’s use of its REHAB trade mark.
(c) The Respondent registered and used the Disputed Domain Name in bad faith in order to create a false association with the Complainant and its REHAB trade mark. The Respondent is fully aware of the Complainant and its REHAB trade mark, as stated in the email sent by the Respondent’s business partner to the Complainant on October 14, 2015. In the email, Ms. K[…] suggested that her company could serve as a business partner for the Complainant in Turkey.
(d) The Respondent’s passive holding of the Disputed Domain Name constitutes bad faith, as it deprives the Complainant from being able to legitimately reflect its REHAB trade mark in a corresponding domain name.
(e) The use of a proxy service provider to register the Disputed Domain Name may also amount to evidence of bad faith.
The Respondent did not submit a formal Response to the Complainant’s contentions. However, on March 10, 2016, the Respondent sent an email to the Center, in which he claimed that he registered the Disputed Domain Name on behalf of Ms. K[…], and has no interest in the Disputed Domain Name. At the time of registration, the Respondent claims that Ms. K[…] was the sole shareholder of a company in Turkey called Rehab Gida Sanayi ve Ticaret Anonim Sirketi, but Ms. K[…] has since changed the name of her company after receiving a complaint from the Complainant. The Respondent further stated that he authorizes the Registrar to transfer the Disputed Domain Name to whomever has a claim to it, and that he does not have any interest in the Disputed Domain Name and does not want to participate in this proceeding.
On March 21, 2016, Ms. K[…] sent an email to the Center stating that neither she nor her company has any control over the Disputed Domain Name. She went on to state as follows:
“I wish I can help you but, I cannot do anything for your favour to transfer them back [sic].”
The Panel has decided to take into account the Respondent’s email of March 10, 2016 and Ms. K[…]’s email of March 21, 2016.
6. Discussion and Findings
In the email dated March 10, 2016, the Respondent expressly states that he has “absolutely no interest or use for this domain and [he sees] no reason to put a block or whatever on it [sic].” The Respondent goes on to state as follows:
“YOU CAN JUST TRANSFER THE DOMAIN NAME TO YOUR NAME AND LEAVE ME IN PEACE! I WANT TO GET RID OF IT AS MUCH AS YOU SEEM TO WANT IT….if it needs to be spelled out, ‘I hereby authorize GoDaddy to transfer the domain ‘rehab.coffee’ to WHOMEVER claims a title on it’. [sic]”.
The Respondent has clearly consented to and requests the transfer of the Disputed Domain Name to the Complainant. The Panel notes that although the Respondent alleges to have registered the Disputed Domain Name on behalf of Ms. K[…], according to the Rules the Respondent is “the holder of a domain-name registration against which a complaint is initiated.” Either way, even if Ms. K[…] is the beneficial owner of the Disputed Domain Name, she appears to have also consented to the transfer of the Disputed Domain Name to the Complainant. On November 21, 2015, Ms. K[…] sent an email to the Complainant’s legal representative stating that her and the Respondent had tried to transfer the Disputed Domain Name to the Complainant, but had problems obtaining the authorization code.
In The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, it was held that:
“a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000‑0207).”
The Panel also refers to Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207:
“Because Respondent has consented to the relief requested by Complainant, it is not necessary to review the facts supporting the claim. I am left to decide the appropriate procedure to conclude the case in a situation not directly addressed by the Rules. Several provisions provide guidance. Rule 10(a) gives the panel the discretion to conduct the proceeding in such manner as it deems appropriate under the Policy and the Rules. Rule 10(c) requires the Panel to “ensure that the proceeding takes place with due expedition.” Rule 12 permits the Panel to require further statements from the parties. Rule 17 requires the Panel to terminate the proceeding when the parties have agreed to a settlement.”
The Panel agrees with the rational under Williams-Sonoma, Inc. v. EZ-Port, supra, and pursuant to paragraph 10 of the Rules, the Panel decides to order transfer of the Disputed Domain Name without needing to consider the three elements under paragraph 4(a) of the Policy.
In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <rehab.coffee>, be transferred to the Complainant.
Date: May 16, 2016