WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Monster Energy Company v. Tank Li

Case No. D2016-1184

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 Tank Li of Beijing, China.

2. The Domain Names and Registrar

The disputed domain names <monsterenergy.top> and <monsterenergy.wang> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 10, 2016. On June 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 14, 2016, 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.

On June 15, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 in both Chinese and English of the Complaint, and the proceedings commenced on June 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 13, 2016.

The Center appointed Sok Ling MOI as the sole panelist in this matter on July 19, 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.

4. Factual Background

The Complainant is in the business of designing, creating, developing, marketing and selling beverages including tea-based, coffee-based and dairy-based energy drinks. The Complainant uses the brand MONSTER ENERGY in connection with its beverages, clothing, sports gear and other products. The MONSTER ENERGY mark was first used in commerce in 2002 when the MONSTER ENERGY line of beverages was launched. The Complainant changed its company name from "Hansen Beverage Company d/b/a Monster Beverage Company" to its current name "Monster Energy Company" on January 5, 2012.

The Complainant sells its MONSTER ENERGY beverages to consumers throughout the United States of America and many other countries around the world, including Singapore, Japan, the Republic of Korea, the United Kingdom of Great Britain and Northern Ireland, France, Australia and New Zealand. It currently holds more than a 30 percent market share for energy drinks in the United States of America by unit volume. Its current annual retail sales worldwide are estimated to exceed USD 6 billion. It currently sells an estimated 3 billion cans of MONSTER ENERGY drinks in a year. In the year 2015, the Complainant spent over USD 196 million in marketing and promoting its MONSTER ENERGY line of beverages throughout the world.

The Complainant and its MONSTER ENERGY brand of beverages have a significant online presence. Its primary website at "www.monsterenergy.com", launched on August 19, 2003, has in the years past received thousands of unique visitors each month. Its other website at "www.monsterarmy.com" which features more than 300,000 amateur athletes under its amateur sponsorship program called "The Monster Army" has in the years past received more than 100,000 unique visitors each month. It also delivers content through various YouTube channels and other social media websites such as Facebook.

The Complainant has registered its MONSTER ENERGY trade marks globally including in China (where the Respondent is based) where it has over 20 registrations. The earliest registration in China dates back to 2009.

The disputed domain names were registered by the Respondent on May 24, 2016, long after the Complainant registered its trade mark MONSTER ENERGY. As at the date of this decision, the disputed domain names do not resolve to any active websites and appear never to have been so directed.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to its trade mark as they incorporate the MONSTER ENERGY mark in its entirety and add the generic Top Level Domain (gTLD) ".top" and ".wang" respectively.

The Complainant claims that its MONSTER ENERGY trade mark is globally well-known and recognisable considering its long history, business activities and market presence in numerous countries. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant claims that the Respondent must have been aware of the Complainant's famous MONSTER ENERGY trade mark and line of energy drinks when it registered the disputed domain names, and that its main purpose in registering the disputed domain names was to deprive the Complainant from reflecting its trade mark in a corresponding domain name. The Complainant therefore contends that the passively-held disputed domain names were registered and are being used by the Respondent in bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1 Preliminary Issue

Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated equitably and given a fair opportunity to present their respective cases.

The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.

The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain names <monsterenergy.top> and <monsterenergy.wang> are registered in Latin scripts rather than Chinese characters; and

(b) the disputed domain names are composed of ordinary English words "monster" and "energy".

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but failed to do so; and

(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in its ability to articulate the arguments for this case.

The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; (ii) English shall be the language of the proceeding and the decision will be rendered in English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.

On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the MONSTER ENERGY mark by virtue of its use and registration of the same as a trade mark.

Each of the disputed domain names incorporates the Complainant's trade mark MONSTER ENERGY in its entirety. The addition of the gTLD ".top" and ".wang" respectively does not impact the analysis of whether the disputed domain names are identical or confusingly similar to the Complainant's trade mark.

Consequently, the Panel finds that each of the disputed domain names is identical to the Complainant's trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to them of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974).

The Complainant has clearly established that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the MONSTER ENERGY trade mark or register the disputed domain names. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain names or that the Respondent has any rights in the term "monster energy".

The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain names.

As at the date of the decision, the disputed domain names do not resolve to any active website and appear never to have been so directed. The Respondent did not file a Response to the Complaint and has thus failed to provide any evidence to establish its rights or legitimate interests in the disputed domain names.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.

The Panel notes that, as of the date of this decision, the disputed domain names do not resolve to any active website and appear never to have been so directed. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (see WIPO Overview 2.0, paragraph 3.2).

The Complainant and its trade mark MONSTER ENERGY enjoy a worldwide reputation. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. A cursory Internet search would have disclosed the MONSTER ENERGY trade mark and its extensive use by the Complainant.

Thus a presumption arises that the Respondent was aware of the Complainant's MONSTER ENERGY trade mark and related domain names when it registered the disputed domain names. Registration of a domain name that incorporates a complainant's long-established and well-known trade mark suggests opportunistic bad faith.

The Respondent has failed to provide any evidence of actual or contemplated bona fide use of the disputed domain names. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain names, the Panel accepts the Complainant's contention and is satisfied that the Respondent has registered the disputed domain names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(ii) of the Policy are applicable to the present case (noting that for this Panel the two disputed domain names constitutes a pattern of conduct for the purposes Policy paragraph 4(b)(ii)).

The Panel also notes that efforts by the Center to contact the Respondent at the physical address provided to the Registrar failed which suggests that the Respondent has provided false contact details .

Taking into account all the circumstances, it is appropriate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 names, <monsterenergy.top> and <monsterenergy.wang>, be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: August 3, 2016