WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Monster Energy Company v. amit kumar
Case No. D2020-0165
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 amit kumar, India.
2. The Domain Name and Registrar
The disputed domain name <monsterenergy.engineer> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2020. On January 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2020, 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 the Complainant on January 24, 2020 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 January 30, 2020.
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 February 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2020.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on March 4, 2020. 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 Delaware Corporation. According to the Complainant’s evidence contained in the Amended Complaint the Complainant is in the business of designing, creating, developing, marketing and selling beverages in the United States since early 2002 and internationally since 2003. It was formerly known as Hansen Beverage Company d/b/a Monster Beverage Company but changed its name to Monster Energy Company as of January 5, 2012.
Its brand MONSTER ENERGY has been used since at least as early as 2002 in connection with beverages, clothing, sports gear, stickers, and other products. The MONSTER ENERGY marks have been used in connection with the Complainant’s drinks since 2002 and have become recognized by consumers in the United States and throughout the world as designating the Complainant as the source of MONSTER ENERGY goods.
Since its introduction, the Complainant’s MONSTER ENERGY line has been very successful. Sales have increased every year since the launch of the brand. Worldwide retail sales now exceed 3 billion cans per annum with estimated retail sales exceeding USD 6 billion per annum.
The Complainant sets out in some detail its range of beverages most of which are branded under names including MONSTER ENERGY eg. LO-CARB MONSTER ENERGY ®, or MONSTER eg. JUICE MONSTER ®. The range includes tea, dairy and coffee based drinks and energy drinks.
The Complainant sells or has sold its MONSTER ENERGY drinks to consumers throughout the United States and in a large number of other countries including India, throughout North and South America, Europe, Asia, the Caribbean, Middle East , Africa and Australasia. In the United States the MONSTER ENERGY drinks are sold in over 300,000 retail stores and outlets.
Since 2002, in addition to beverages, the Complainant has used and continues to use the MONSTER ENERGY marks in connection with non-beverage items including but not limited to entertainment services, video games, clothing, accessories, bags, sports gear, helmets, stickers and decals.
At Annex E to the Amended Complaint the Complainant exhibits a list of registered and pending MONSTER ENERGY marks held by the Complainant throughout the world including in the United States and Panama. The Complainant specifically points out that its first United States Registration was granted in January 2006 more than 13 years before the Respondent registered the disputed domain name, <monsterenergy.engineer>.
The Complainant’s first registrations for MONSTER ENERGY in India were granted in September 2016 more than 3 years before registration of the disputed domain name on November 23, 2019.
The Complainant exhibits at Annex L to the Complaint previous panel decisions in all of which the panels recognized the Complainant’s rights in the mark MONSTER ENERGY.
The Complainant adduces evidence of the Complainant’s sales and revenue. Since 2002 the Complainant has sold more than 28 billion cans of MONSTER ENERGY drinks worldwide which have generated more than USD 30 billion in gross worldwide sales, with estimated worldwide retail revenues in excess of USD 60 billion. The brand has been established as the best-selling energy drink brand in the United States and continues to be the fastest-growing major brand of energy drinks in the United States and worldwide.
The Complainant points out that the mark MONSTER ENERGY is the subject of substantial and continuous marketing and promotion including the distribution of apparel and merchandise bearing the mark distributed in retail outlets, in magazines and on-line. It has also throughout the world widely advertised, marketed and promoted its mark through sports and athletics sponsorships. These include, for example, Formula 1 and Grand Prix motor racing.
The Complainant owns the domain name <monsterenergy.com>. A print-out is exhibited at Annex F to the Amended Complaint. The website had over 35 million visits between 2010 and 2017. Additionally the Complainant’s mark is used on social media websites. The Facebook page exhibited at Annex G currently has 26 million “likes”. The Twitter page exhibited at Annex H has 3.16 million followers. At Annex J the Complainant exhibits its YouTube page which since its launch has received more than 389 views worldwide.
The Complainant refers to extensive magazine and press coverage of its MONSTER ENERGY products. At Annex K to the Amended Complaint are exhibited extracts from such coverage.
In the absence of a Response the Panel finds the evidence set out above to be true and proceeds to decide the Complaint on the basis of that evidence.
Since the date of registration, the Respondent has failed to make any use of the disputed domain name which resolves to an inactive website.
5. Parties’ Contentions
The Complainant submits;
i. the disputed domain name <monsterenergy.engineer> is identical and / or confusingly similar to the Complainant’s mark MONSTER ENERGY in which it has rights.
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular the Respondent has not made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has not been commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
iii. the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel is satisfied upon the evidence of the Complainant’s trade mark rights referred to in Section 4 above that the Complainant has registered rights in the United States and in other jurisdictions in the mark MONSTER ENERGY and which predate the registration of the disputed domain name.
The Complainant submits that the disputed domain name <monsterenergy.engineer> incorporates the Complainant’s mark in its entirety followed by the Top-Level Domain (“TLD”) suffix “.engineer”. The second level of the disputed domain name, i.e. “monsterenergy” is identical to the Complainant’s mark.
The Panel agrees with that submission. It is supported in its view by earlier UDRP panel decisions cited by the Complainant including Monster Energy Company v. Tank Li, WIPO Case No. D2016-1184 where it was held that the domain names <monsterenergy.top> and <monsterenergy.wang> were identical to the Complainant’s mark MONSTER ENERGY and that the TLD suffix could be ignored.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant submits that the disputed domain name is not being used in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.
The Complainant points out that to the best of its knowledge since the date of registration the Respondent has failed to make any use of the disputed domain name which resolves to an inactive website which is exhibited at Annex M. On the basis of this evidence the Panel accepts this submission and finds that there is no bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.
The Complainant also submits that it has not authorized, licensed, or permitted any person or entity, including Amit Kumar, to use the Complainant’s mark in connection with registering a “.engineer” domain name. There is therefore no evidence that the Respondent has been or was commonly known by the disputed domain name.
The Complainant draws attention to the fact that the Complainant at no time authorized the registration of the disputed domain name. There is no evidence of a contractual relationship between the parties, no authorization or licensing by the Complainant.
On the basis of this evidence and no evidence from the Respondent to the contrary the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant submits that the disputed domain name was registered in bad faith. It relies upon the evidence that the Complainant’s mark MONSTER ENERGY had become well known in the United States and internationally before the date of registration of the disputed domain name.
It argues that “it is not possible to conceive of a plausible situation in which the Respondent would have been unaware” of the Complainant’s well known drinks sold under the Complainant’s mark. In summary the Respondent must have been aware of this when the Respondent registered the disputed domain name. Given the evidence of the Complainant’s mark, and reputation and sales under the mark the Panel accepts this submission. Moreover, the panel in Monster Energy Company v. Cai Manyi Manyicai, WIPO Case No. D2016-0301 reached the same decision on similar facts.
The Complainant also submits that the Respondent’s passive holding of the disputed domain name constitutes use in bad faith. It is well-established under paragraph 4 (b) of the Policy that inaction in relation to a domain name registration can constitute use in bad faith. That is the position here.
Taking these submissions into account the Panel finds that the Respondent’s activities constitute bad faith registration and use of the disputed domain name within paragraphs 4(a)(iii) and 4 (b) 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 name <monsterenergy.engineer> be transferred to the Complainant.
Clive Duncan Thorne
Date: March 18, 2020