WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Monster Energy Company v. PrivacyDotLink Customer 116709 / Ferdinand Nikolaus Kronschnabl
Case No. D2016-1335
1. The Parties
Complainant is Monster Energy Company of Corona, California, United States of America (“United States”) represented by Knobbe, Martens, Olson & Bear, LLP, United States.
Respondent is PrivacyDotLink Customer 116709 of Seven Mile Beach, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Ferdinand Nikolaus Kronschnabl of Malaga, Spain.
2. The Domain Name and Registrar
The disputed domain name <monsterenergy.club> is registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2016. On July 1, 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 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 Complainant on July 6, 2016 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 12, 2016.
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 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2016. Respondent submitted an informal communication on July 17, 2016 in German but did not submit a formal response.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on August 10, 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
Complainant is in the business of designing, creating, developing, marketing, and selling beverages. Complainant was formerly known as “Hansen Beverage Company d/b/a Monster Beverage Company”, but changed its name to “Monster Energy Company”, effective on January 5, 2012. Complainant has used the MONSTER ENERGY mark in commerce since at least as early as 2002. The trademark MONSTER ENERGY is used in connection with beverages, clothing, sports gear and other products..
Complainant is the holder of numerous trademark registrations worldwide for MONSTER ENERGY, such as inter alia the United States Patent and Trademark Office (“USPTO”) registrations No. 3057061 in International class 32, filed on April 18, 2002, and registered in February 07, 2006; No. 3044315 in International class 05, filed on May 23, 2003, and registered on January 17, 2006 and No. 4036680 in class Int. 05, filed on September 11, 2007, and registered on October 11, 2011.
Furthermore, Complainant owns the domain name < monsterenergy.com> at which its website is operated since August 19, 2003 and also maintains the domain name <www.monsterarmy.com> for an amateur sports program called “The Monster Army”. Complainant has a Facebook page and YouTube channels where it uses the trademark MONSTER ENERGY.
Respondent’s disputed domain name was registered in May 28, 2014. The disputed domain name resolves to a parking page.
5. Parties’ Contentions
Complainant alleges to be the holder of numerous trademark registrations for MONSTER ENERGY worldwide and that most of them pre-date the disputed domain name’s registration. Complainant also claims that the trademark has been famous since well before Respondent registered the disputed domain name.
Complainant mentions that seven UDRP panels have recognized Complainant’s rights for the MONSTER ENERGY trademark.
Complainant argues that the disputed domain name <monsterenergy.club> incorporates its MONSTER ENERGY trademark in its entirety, followed by the generic Top-Level Domain (“gTLD”) suffix “.club”.
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name, since it consists of a parked webpage and, therefore, is not being used in connection with a bona fide offering of goods or services.
Besides that, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name considering that Respondent has never been in any kind of relationship and was never authorized by Complainant to use the trademark MONSTER ENERGY.
Complainant also argues that Respondent is using the disputed domain name <monsterenergy.club> in bad faith since it consists in a well-known trademark in the United States and internationally well before the disputed domain name’s registration date.
Lastly, Complainant states that another evidence of Respondent’s bad faith is the use of a registrar’s proxy service that enables the real owner of a domain name to conceal its identity. The use of this service by Respondent with the purpose to avoid disclosing its real name and coordinates can also be considered as an act of bad faith.
Respondent did not reply to Complainant’s contentions. In its informal communication of July 17, 2016, Respondent claimed it thought the disputed domain name had been deleted and that it had unsuccessfully tried to do so again.
6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The burden of proving these elements is on Complainant.
A. Identical or Confusingly Similar
Complainant has duly proven the first element under paragraph 4(a) of the Policy is met by attesting that it is the legitimate owner of several trademark registrations for MONSTER ENERGY worldwide and that such trademark is contained in its entirety in the disputed domain name <monsterenergy.club>.
The Panel acknowledges that MONSTER ENERGY is a widely known trademark in the beverage business, and believes that the disputed domain name causes confusion, since its most distinctive feature, the term “Monster Energy”, is identical to Complainant’s trademark.
The Panel finds the disputed domain name to be identical to Complainant’s trademark, because the gTLD “.club” is not to be taken into account in the comparison, as per paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”): “The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”
Therefore, the Panel considers the requirements of the first element of paragraph 4(a) of the Policy satisfied.
B. Rights or Legitimate Interests
Respondent had twenty days to submit a response according to paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if Respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.1 of the WIPO Overview 2.0 as follows: “[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest[s], the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions (the only communication received from Respondent is an email communication in which Respondent claimed it thought the disputed domain name had been deleted and that it had unsuccessfully tried to do so again), that burden has not been discharged, and the Panel has considered Complainant’s prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <monsterenergy.club>.
The disputed domain name was registered on March 28, 2014, that is, several years after Complainant’s registrations of the trademarks and domain name <monsterenergy.com>. Considering that Complainant’s trademark is widely known, the Panel agrees that Respondent must have been aware of Complainant’s trademark at the time of registration.
The Panel finds that Complainant has never entered into any agreement with Respondent, nor granted any authorization or license to Respondent, regarding the use of Complainant’s trademarks, nor is Respondent affiliated with Complainant’s activities.
Accordingly, Complainant established a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Since Respondent has not replied to Complainant’s contentions and, thus, has not presented any evidence or elements to justify any rights or legitimate interest in connection with the disputed domain name, the Panel has found no indication that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith.
The Panel notes that the disputed domain name resolves to a parked webpage as informed by Complainant, tantamount to “passive holding” of the disputed domain name. This kind of activity may constitute evidence of bad faith use, as per the consensus view of paragraph 3.2 of WIPO Overview 2.0.
The following reasons also contribute to a finding of bad faith registration and use by the Panel: (i) the widespread reputation of Complainant’s products and services make it very unlikely that Respondent had no knowledge of Complainant’s rights regarding the trademark at the time of the disputed domain name’s registration, (ii) Respondent did not reply to the Complainant’s contentions (iii) Respondent opted for the Registrar’s proxy service, preventing others to have access to its real identity and (iv) Respondent showed willingness to give up the disputed domain name in its informal communication.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith, in compliance with paragraph 4(a)(iii) of Policy.
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 name <monsterenergy.club> be transferred to Complainant.
Gabriel F. Leonardos
Date: August 19, 2016