WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Monster Energy Company v. Huguang Tang / tanghuguang
Case No. D2016-1758
1. The Parties
The Complainant is Monster Energy Company of Corona, California, United States of America ("United States"), represented by Knobbe, Martens, Olson & Bear, LLP, United States.
The Respondent is Huguang Tang / tanghuguang of Guangzhou, Guangdong, China.
2. The Domain Names and Registrars
The disputed domain names <monsterbeverage.vip> and <monsterenergy.vip> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on August 27, 2016. On August 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 30, 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 August 31, 2016, the Center transmitted by email in both English and Chinse to the Parties a request for comment on the language of the proceeding. On September 3, 2016, the Complainant confirmed its request that the language of the proceeding be English. The Respondent did not comment on the language of the proceeding.
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, in both English and Chinese, and the proceeding commenced on September 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 5, 2016.
The Center appointed Matthew Kennedy as the sole panelist in this matter on October 12, 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, Monster Energy Company, is a subsidiary of Monster Beverage Corporation. The Complainant markets beverages and other goods in many countries around the world. It owns multiple trademark registrations in multiple jurisdictions including European Union trademark registration number 2784486 for MONSTER registered on October 19, 2005; United States trademark registration number 3057061 for MONSTER ENERGY registered on February 7, 2006; and Chinese trademark registration number 5447961 for MONSTER ENERGY, registered on May 28, 2009. These registrations specify a variety of goods including beverages and they remain in effect. The Complainant has operated its official website at "www.monsterenergy.com" since 2003, where it provides information about itself and its products.
The Respondent is the registrant of the disputed domain names, which were both registered on July 29, 2016. Neither of the disputed domain names resolves to any active website.
5. Parties' Contentions
The disputed domain names are identical or confusingly similar to the Complainant's trademarks. The disputed domain name <monsterbeverage.vip> incorporates the Complainant's MONSTER trademark in its entirety and the addition of the word "beverage" creates an association with the Complainant. The disputed domain name <monsterenergy.vip> incorporates the Complainant's MONSTER and MONSTER ENERGY trademarks in their entirety.
The Respondent has no rights or legitimate interests in the disputed domain names. The disputed domain names are inactive. The Respondent has not been commonly known by the disputed domain names and has not acquired any trademark rights in them. There is no contractual relationship between the Respondent and the Complainant or Monster Beverage Corporation. The Complainant has not licensed or otherwise authorized the Respondent to use any of the Complainant's trademarks or to apply for any domain name incorporating the trademarks. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
The Respondent registered and is using the disputed domain names in bad faith. The disputed domain names were registered after the Complainant's trademarks became well-known and seven years after its first Chinese trademarks were registered. The disputed domain names incorporate the Complainant's trademarks and its parent company's corporate name in their entirety.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Paragraph 11(a) of the Rules provides that "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." The Registrar confirmed that the Registration Agreement for each of the disputed domain names is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain names are in English and that the Complainant is unable to communicate in Chinese.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the parties are treated with equality, that each party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have noted that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English. Having received notice of the Complaint in Chinese and English, the Respondent has not expressed any interest in responding to it or participating in this proceeding in any other way. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.
6.2. Analysis and Findings
The Respondent's failure to file a formal Response does not automatically result in a decision in favor of the Complainant. Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the MONSTER and MONSTER ENERGY trademarks.
The disputed domain name <monsterbeverage.vip> incorporates the Complainant's MONSTER trademark in its entirety. It also contains the dictionary word "beverage". A dictionary word is not sufficient to avoid confusing similarity of the disputed domain name to the Complainant's trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.
The disputed domain name <monsterenergy.vip> incorporates the Complainant's MONSTER ENERGY trademark in its entirety but for the omission of the space between the words "monster" and "energy". This omission can be disregarded because domain names do not include spaces for technical reasons.
Each disputed domain name also includes the generic Top-Level Domain ("gTLD") suffix ".vip". A gTLD suffix is generally disregarded when determining a domain name's confusing similarity with a trademark.
Consequently, the Complainant's trademarks are the dominant and only distinctive element of each disputed domain name.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] 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] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark 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 trademark or service mark at issue.
The disputed domain names do not resolve to any active website and there is no evidence of any preparations to use them. Accordingly, the Panel does not find that the Respondent's use falls within the first or third circumstances of paragraph 4(c) of the Policy.
As regards the second circumstance, the Respondent's name is "Huguang Tang / tanghuguang" not "monsterbeverage" or "monsterenergy" or even "monster". There is no evidence indicating that the Respondent has been commonly known by the disputed domain names as envisaged by the second circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent did not rebut that case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.
With respect to registration in bad faith, the Panel observes that the Respondent registered the domain name <monsterbeverage.vip>, which entirely incorporates the Complainant's MONSTER trademark, in combination with the word "beverage", which indicates an awareness of the Complainant's products. This disputed domain name, but for the gTLD, is also identical to the distinctive elements of the corporate name of the Complainant's parent company.
Again, with respect to registration in bad faith, the Panel observes that the Respondent registered the disputed domain name <monsterenergy.vip>, which incorporates the Complainant's MONSTER and MONSTER ENERGY trademarks, and which, but for the space between the words "monster" and "energy" and the gTLD, is identical to the latter trademark. Although the words "monster" and "energy" are ordinary dictionary words, the combination of the two indicates an awareness of the Complainant's trademark and products.
The disputed domain name registrations were registered on the same day hence each one provides evidence of the Respondent's state of knowledge at the time of registration of the other. Both the disputed domain name registrations postdate the Complainant's trademark registrations, including in China, where the Respondent is located, by several years. Information on the Complainant and its products are among the top search results for the terms "monster beverage" and "monster energy" in the Baidu Internet search engine. In view of all the circumstances, the Panel is persuaded that the choice to register the Complainant's MONSTER trademark as part of the disputed domain names and to register a disputed domain name identical to the Complainant's MONSTER ENERGY trademark, in combination with a gTLD, was in bad faith.
With respect to use in bad faith, the Respondent has made only passive use of the disputed domain names but this does not preclude a finding of use in bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In the present dispute, the Complainant has a strong reputation in its trademarks, particularly in the beverage industry, which are widely known through promotion in connection with the Complainant's products, including through the Complainant's official website "www.monsterenergy.com". One disputed domain name consists of the exact trademark MONSTER plus a word describing the Complainant's products and a gTLD. The other disputed domain name consists of the exact trademark MONSTER ENERGY plus a gTLD. Given these circumstances and those set out at Section 6.2B, the Panel finds that the Complainant has discharged its burden of demonstrating that the disputed domain names were registered with the Complainant's trademarks in mind and are being used in bad faith. The Respondent has failed to come forward claiming any interest or to explain its choice for registering the disputed domain names.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the 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 names, <monsterbeverage.vip>and <monsterenergy.vip>, be transferred to the Complainant.
Date: October 14, 2016