WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Monster Energy Company v. WhoisGuard, Inc., WhoisGuard, Inc. / Erik Oddur

Case No. D2020-3215

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., WhoisGuard, Inc., Panama, / Erik Oddur, Iceland.

2. The Domain Name and Registrar

The Disputed Domain Name <mangoloco.monster> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2020. On December 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 1, 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 December 3, 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 December 9, 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 January 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2021. The Respondent submitted an informal Response with the possibility to settle the dispute on January 12, 2021. The Complainant did not request a suspension of the proceeding with the purpose of exploring settlement. The Center sent the commencement of Panel Appointment on February 9, 2021.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 23, 2021. 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 at this proceeding is Monster Energy Company, a Delaware corporation. The Complainant is in the business of designing, creating, developing, marketing, and selling beverages. The Complainant’s MONSTER ENERGY trademark is used in connection with beverages, clothing, sports gear, stickers, and other products and services in the United States and internationally.

Moreover, the Complainant is the owner of extensive rights in and to the MONSTER ENERGY trademark and it has used the MONSTER ENERGY trademark in commerce since at least as early as 2002.

In 2018, the Complainant launched its MANGO LOCO drink under its JUICE MONSTER line.

In addition, the Complainant is the owner of numerous valid and subsisting trademark registrations worldwide for the trademark MONSTER ENERGY, MONSTER MANGO LOCO, and MANGO LOCO among others:

- MONSTER MANGO LOCO, Albania trademark registration No. 19748, registered on November 11, 2019;

- MONSTER MANGO LOCO, Brazil trademark registration No. 917208080, registered on December 17, 2019;

- MONSTER MANGO LOCO, European Union Trade Mark registration No. 018055722, registered on September 6, 2019;

- MANGO LOCO, Canadian trademark registration No. TMA1072377, registered on February 11, 2020;

- MANGO LOCO, European Union Trade Mark registration No. 018009152, registered on June 30, 2020;

- MONSTER ENERGY, United States Trademark Registration No. 3044315, registered on January 17, 2006; and

- MONSTER, European Union Trade Mark registration No. 009492158, registered on April 19, 2011.

The Respondent registered the Disputed Domain Name <mangoloco.monster> on June 30, 2020. The Disputed Domain Name resolves to a website showing a can of the Mango Loco beverage with the text “[I]f you’re interested in purchasing this domain, please email me at […]@gmail.com”.

5. Parties’ Contentions

A. Complainant

The Complainant contentions can be summarized as follows:

Identical or confusingly similar

The Complainant contends that the Disputed Domain Name is identical to the Complainant’s MANGO LOCO trademark and is followed by the Top-Level Domain (“TLD”) suffix “.MONSTER.” Additionally, the Disputed Domain Name’s TLD suffix “.MONSTER” is substantially identical and confusingly similar to the Complainant’s MONSTER trademarks.

Rights or legitimate interests

The Complainant alleges that it has not authorized, licensed, or permitted the Respondent or any person or entity to use the MONSTER ENERGY or the MANGO LOCO trademarks in connection with registering a .MONSTER domain name. Additionally, the Complainant has not authorized the Respondent or anyone utilizing the Respondent’s email address to use the MONSTER ENERGY or the MANGO LOCO trademarks in connection with registering a MONSTER domain name.

In addition, there is no evidence that the Respondent has been or was commonly known by the Disputed Domain Name.

The Complainant further states that the Respondent has made no use of the disputed Domain Name except to include a parked landing page displaying an image bearing Complainant’s MONSTER ENERGY marks and MANGO LOCO trademark and offering the Disputed Domain Name for sale.

Finally, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

Registration and use in bad faith

The Complainant claims that the Respondent registered the Disputed Domain Name in bad faith. The Respondent’s email address is the same email address as the email address listed on website homepage at the disputed Domain Name contacted the Complainant on September 8, 2020 by email. In the email, the Respondent stated, “What do you [i.e., Monster] think of my website, inspired by you guys.”

The Complainant further alleges that the website located at the Disputed Domain Name prominently displays an image of the Complainant’s juice MONSTER MANGO LOCO can. Consequently, there can be no dispute that the Respondent was aware of the Complainant’s trademarks and intentionally registered the Disputed Domain Name in an attempt to benefit financially by causing confusion with the Complainant’s MONSTER and MANGO LOCO trademarks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, it sent an email stating that his son forwarded the email received from WIPO and he was aware that Monster is wanting the domain name for their use.

Finally, the Respondent stated that he was willing to hand over the disputed domain name.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name in this case:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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

The Complainant has demonstrated that it has trademarks rights over the terms MONSTER MANGO LOCO, MANGO LOCO, MONSTER ENERGY, and MONSTER.

The Panel finds that the Disputed Domain Name <mangoloco.monster> is confusingly similar to the Complainant’s MONSTER MANGO LOCO, and MANGO LOCO trademarks, as those marks, in their respective forms, are clearly recognizable within the Disputed Domain Name.

Furthermore, the Disputed Domain Name contains the Complainant’s MONSTER MANGO LOCO, MANGO LOCO and MONSTER trademarks in their entirety.

This case raises the broader question, to what extent the TLD could be relevant in terms of assessing the first element if the second level portion did not comprise a complainant’s trademark such that the latter was said to be “recognizable”. For example, in the Panel’s view, while the TLD corresponding to a trademark would prima facie tend to render the trademark recognizable within the disputed domain name, the Panel would likely need to assess the broader case context. For example, a term such as “energydrink” (creating <energydrink.monster>) related to the goods or services offered under the relevant mark here would trigger a sense of connection with the brand owner and thereby affirm confusing similarity. On the other hand, a term such as “scary” (creating <scary.monster>) that built on the non-trademark meaning of the TLD may depart, at least prima facie,from the idea of the respondent registering such domain name due to its similarity with the Complainant’s trademark and would trigger further analysis of the broader case circumstances, such as whether the use of the domain name showed an intent to target the relevant mark (see e.g., WIPO Overview 3.0, section 1.15); perhaps somewhat self-evidently, this would also likely bear on the second and third elements. Overall, the Panel notes that while the particular TLD may draw to mind a particular mark, the broader case circumstances must be viewed under the Policy elements but in particular under the first element; to hold otherwise would mean that any second level registration under a TLD that corresponded to a mark would be at risk, and clearly this goes against a common sense interpretation of the Policy. Applying this conceptual framework to the present case, the combination of the term “monster” (being the TLD and also one of the Complainant’s trademarks) and the term “mango loco” (being the second level and also another of the Complainant’s trademarks) creating <mangoloco.monster> (in addition to the related website content) would trigger a sense of connection with the brand owner and thereby affirm confusing similarity.

Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

(i) before any notice to you 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 (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 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.

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark.

The Complainant has prior rights in the trademarks, which precede the Respondent’s registration of the Disputed Domain Name.

In addition, in the correspondence with the Complainant, the Respondent sent the message “what do you think of my website, inspired by you guys. https://mangoloco.monster”, which is in effect an acknowledgment both of the Complainant’s rights, and that the Respondent targeted the Complainant with the Disputed Domain Name. In addition, the Panel notes the composition of the Disputed Domain Name, which potentially implies some sort of affiliation with the Complainant.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but he did not do so. As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Disputed Domain Name was registered on June 30, 2020 several years after Complainant began using the MONSTER ENERGY and MONSTER trademarks, and approximately two years since Complainant began using its MANGO LOCO trademark.

In this sense, and noting the above communications, the Panel is of the opinion that the Respondent was aware of the Complainant’s rights when registered the Disputed Domain Name. This is moreover clearly demonstrated by the fact that the Disputes Domain Name resolves to a website displaying the of Complainant’s JUICE MONSTER MANGO LOCO can. In addition, the Complainant has also produced evidence that the Disputed Domain Name was offered for sale.

Accordingly, the Panel finds that the Respondent has registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant, who is the owner of the trademark, according to the paragraph 4(b)(i) of the Policy.

Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith.

7. Decision

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, <mangoloco.monster> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: March 9, 2021