WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JHO Intellectual Property Holdings, LLC v. Jason Locke Stoll
Case No. D2020-1021
1. The Parties
Complainant is JHO Intellectual Property Holdings, LLC, United States of America (“United States”), internally represented.
Respondent is Jason Locke Stoll, United States.
2. The Domain Name and Registrar
The disputed domain name <bangenergy.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2020. On April 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 28, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on April 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 20, 2020.
The Center appointed Robert A. Badgley as the sole panelist in this matter on May 25, 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
Complainant is the intellectual property affiliate of Vital Pharmaceuticals (“Vital”), the third largest energy drink producer in the United States (with sales approaching USD 700 million in 2019). Vital’s flagship product is “Bang Energy”, purveyor of a line of energy drinks and dietary supplements. Vital sells its drinks and other products through third-party distributors and directly via its website, located at “www.bang-energy.com”.
Complainant holds various trademark registrations for BANG, including United States Patent & Trademark Office Reg. No. 3,545,129 for the word mark BANG, registered on December 9, 2008, in connection with, among other things, “nutritionally fortified beverages”. The date of first use in commerce for the BANG mark is September 26, 2008.
The Domain Name was created on November 7, 2011. The Domain Name does not resolve to an active website. On some unspecified date, Complainant alleges, Respondent offered to sell the Domain Name to Complainant for USD 850,000.
5. Parties’ Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent did not respond to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark BANG through registration and use demonstrated in the record. The Panel also finds that the Domain Name is confusingly similar to that mark. The mark BANG is fully incorporated within the Domain Name, accompanied by the descriptive term “energy”, the main product under the BANG mark being energy drinks.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to explain his bona fides vis-à-vis the Domain Name. The undisputed record here is that Complainant had been selling BANG energy drinks for five years at the time the confusingly similar Domain Name was registered, that the BANG mark had been registered for nearly three years by the time the Domain Name was registered, that Respondent has made no use of the Domain Name, and that Respondent offered to sell the Domain Name for USD 850,000. Under these circumstances, it cannot be said that Respondent has any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent registered and used the Domain Name in bad faith within the meaning of the above-quoted Policy paragraph 4(b)(i). It is undisputed on this record that Respondent sought USD 850,000 to transfer the Domain Name to Complainant. Given Respondent’s non-use of the Domain Name and Complainant’s trademark rights, this offer of sale is clearly excessive and runs afoul of paragraph 4(b)(i).
Complainant has established Policy paragraph 4(a)(iii).
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 <bangenergy.com> be transferred to Complainant.
Robert A. Badgley
Date: May 28, 2020