WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Monster Energy Company v. WhoisGuard, Inc. / Ivan Demidov, Self-employed
Case No. D2019-2494
1. The Parties
The Complainant is Monster Energy Company, United States of America (“United States”), represented by Knobbe, Martens, Olson & Bear, LLP, United States.
The Respondent is WhoisGuard, Inc., Panama / Ivan Demidov, self-employed, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <monster-energy.club> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2019. On October 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 11, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 18, 2019, 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 on October 23, 2019.
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 of the Complaint, and the proceedings commenced on October 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2019. The Center received an email communication from the Respondent on October 29, 2019 and re-sent on October 30, 2019, in which the Respondent apologized about “this mistake” and that he did not want to create troubles and that he agreed with blocking and deleting his domain name. The Center acknowledged receipt of Respondent’s communication on October 30, 2019, reminding him to ensure all communications were copied to the Complainant and pointed out that settlement negotiations were a matter for the Parties and the concerned Registrar. The Respondent was advised to direct future communications regarding settlement to the Complainant.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on November 18, 2019. 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 following facts are undisputed.
The Complainant is a worldwide company, well-known for its Monster Energy beverages. The Monster Energy beverages were introduced in 2002. The Complainant’s website can be found at “www.monsterenergy.com”.
The Complainant is the owner of many registered trademarks worldwide, including in countries and territories such as the Russian Federation, consisting of the word mark and/or containing the word elements MONSTER ENERGY, including, but not limited to, the United States trademark MONSTER ENERGY with registration number 78253933, registered on May 23, 2003, covering goods and services in class 5 and European Union Trade Mark MONSTER ENERGY with registration number 004823563, registered on December 22, 2005, covering goods and services in classes 5 and 32 (hereinafter referred to together, in singular, as the “Trademark”).
The Domain Name was registered on July 29, 2019. The Domain Name has not been used in connection with an active website.
5. Parties’ Contentions
Insofar as relevant, the Complainant contends the following.
The Domain Name is identical to the Trademark and contains a hyphen. The most distinguishing part is the Trademark, the generic Top-Level Domain (“gTLD”) suffix “.club” does not change identicality.
The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not authorized or permitted to use the Trademark, nor is the Respondent associated with the Complainant. Furthermore, the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services.
The Domain Name was registered and has been used in bad faith. The Trademark significantly predates the registration date of the Domain Name and the Respondent was aware of the Trademark. In addition, the Respondent’s passive holding of the Domain Name constitutes use in bad faith. The Respondent’s use of a Proxy registration service favors the finding of bad faith.
Except for the non-substantive email communication received from the Respondent on October 29, 2019, and resent on October 30, 2019 the Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark.
The Complainant has sufficiently shown that it has rights in the Trademark.
As set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison.
In light of the foregoing, the Panel finds that the Domain Name is almost identical to the Trademark. The Domain Name consists entirely of the Trademark.
It is a well-established principle that the gTLD in a domain name may be disregarded when considering the issue of identity or confusing similarity with a complainant's trade mark under paragraph 4(a)(i) of the Policy. The gTLD does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the suffix is a necessary component of a domain name. Moreover, the hyphen does not serve to remove the confusing similarity between the Domain Name and Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did not substantively reply to the Complainant’s contentions. The Respondent has more or less said that he should not have registered the Domain Name.
Lacking a substantive reply, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that Monster or Monster Energy is the Respondent’s name or that the Respondent is commonly known as such.
There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked or has ever been permitted in any way by the Complainant to register or use the Complainant’s marks, or to apply for or use any domain name incorporating the Trademark.
Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods or services. In particular, the Respondent did not demonstrate any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services.
Finally, given the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no (substantive) response was filed by the Respondent. According to earlier UDRP panels, “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090; and Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493). In addition, the Panel takes into consideration Respondent admitting that he has been wrong to register the Domain Name.
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith.
The Panel refers to its considerations under section 6.B and adds the following.
In light of the extensive evidence filed by the Complainant and the absence of a substantive reply, the Panel finds that the Trademark is, as well as the activities of the Complainant, well-known throughout the world. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights at the time of registering the Domain Name.
In addition, there is no other plausible explanation why the Respondent registered the Domain Name, other than the Respondent being aware of the Complainant and the Trademark.
Panels have consistently held that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. The present circumstances, including the lack of a response and use of a privacy service, support a finding of bad faith registration and use under the doctrine of passive holding.
And again, as Respondent has admitted that he should not have registered the Domain Name and that he made a mistake, would be an indication that Respondent was aware of what he has been doing.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <monster-energy.club> be transferred to the Complainant.
Willem J. H. Leppink
Date: December 2, 2019