WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Monster Energy Company v. Domain Administrator, Robot Energy Limited
Case No. D2016-0202
1. The Parties
Complainant is Monster Energy Company of Corona, California, United States of America (“United States”), represented by Knobbe, Martens, Olson & Bear, LLP, United States.
Respondent is Domain Administrator, Robot Energy Limited of Malaga, Spain, represented by Mapa Trademarks SL, Spain.
2. The Domain Names and Registrar
The disputed domain names <monster.army> and <monstergirl.club> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2016. On February 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 2, 2016, 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 February 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2016. The Response was filed with the Center on February 25, 2016.
On March 14, 2016 the Center received a Supplemental Filing from Respondent. Complainant answered in turn with its own Supplemental Filing on March 17, 2016.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on March 7, 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
Complainant is a United States company domiciled in California that is active in the business of designing, developing, marketing and selling beverages.
Complainant has provided evidence that it is the owner of numerous registered trademarks worldwide relating to the designation “monster”, inter alia:
- Word mark MONSTER, Office for Harmonization in the Internal Market (OHIM), Registration No. 009144536, Registration date: November 12, 2010; protection for goods in classes 7, 8, 11 and 21; status: active;
- Word mark MONSTER, OHIM, Registration No. 009492158, Registration date: April 19, 2011; protection for goods in classes 5, 29, 30, 32 and 33; status: active;
- Word mark MONSTER GIRL, OHIM, Registration No. 009661539, Registration date: June 23, 2011; protection for goods in classes 5 and 32; status: active.
The disputed domain name <monster.army> was created on May 13, 2015 and the disputed domain name <monstergirl.club> on May 14, 2015. At the time of rendering this decision, they do not direct to any content on the Internet.
Complainant sent a cease and desist letter to Respondent on August 20, 2015, requesting that the disputed domain name <monster.army> be transferred to Complainant.
On November 24, 2015, Respondent applied to register the word mark MONSTER ARMY for goods in classes 1 and 3 as well as services in class 35 with the German Patent and Trademark Office (DPMA). The registration took place on March 10, 2016.
Respondent states that in view of the documentation submitted by Complainant, it consents to transfer the disputed domain name <monstergirl.club> to Complainant.
Complainant requests that the disputed domain names be transferred to Complainant.
5. Parties’ Contentions
Complainant asserts that it started using its MONSTER trademarks as early as 2002 in connection with its beverages, clothing, jewelry and other products and that by virtue of the extensive marketing conducted by Complainant, its family of MONSTER trademarks including MONSTER ARMY, MONSTER GIRL and MONSTER GIRLS has meanwhile become recognized by consumers in the United States and throughout the world designating Complainant as the source of MONSTER goods. Furthermore, Complainant contends to maintain, since at least 2004, an amateur sponsorship program under the brand MONSTER ARMY which is being promoted e.g. on Complainant’s website at “www.monsterarmy.com” (with more than 1.4 million page views in 2008) as well as on Facebook at “www.facebook.com/MonsterArmy” with more than 770,000 fans.
Complainant argues that the disputed domain name <monster.army> is identical to its MONSTER ARMY mark and the disputed domain name <monstergirl.club> is identical or at least confusingly similar to its MONSTER and MONSTER GIRL trademarks as the generic Top-Level Domain (“gTLD”) suffix “.club” does not add any distinguishing feature.
Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain names since (1) they have been inactive since their registration and, therefore, are not being used in connection with a bona fide offering of goods or services, (2) Respondent’s name bears no similarity to the disputed domain names which is why Respondent apparently is not commonly known by “Monster Army” and/or “Monster Girl”, and (3) Respondent is neither making a legitimate noncommercial or fair use of the disputed domain names nor has Complainant authorized or licensed Respondent to use any of its MONSTER trademarks.
Finally, Complainant states that Respondent has registered the disputed domain names in bad faith since (1) Respondent operates under a completely different name than Complainant’s distinctive MONSTER trademarks and (2) it is not possible to conceive of a plausible situation in which Respondent would have been unaware of Complainant’s well-known MONSTER beverages. Moreover, Complainant purports that Respondent’s passive holding of the disputed domain names is evidence of their use in bad faith.
Respondent contends that Complainant has not submitted sufficient evidence to establish common law trademark rights in the phrase “Monster Army”, and expresses doubts that the disputed domain name <monster.army> is identical or confusingly similar to Complainant’s MONSTER trademarks since none of the latter refers explicitly to the designation “Monster Army”.
As for rights or legitimate interests with respect to the disputed domain name <monster.army>, Respondent points to its ownership of the German MONSTER ARMY trademark, which Respondent had applied for prior to the filing of the Complaint, and that “eventually” Respondent will be making a legitimate noncommercial or fair use of the disputed domain name <monster.army>.
Finally, Respondent denies Complainant’s statements of having registered and used the disputed domain name <monster.army> in bad faith on the ground of Respondent’s ownership of the German MONSTER ARMY trademark, claiming goods and services in the field of “perfume”. Respondent argues that such ownership is a plausible good faith explanation which Complainant has failed to rebut.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) That the disputed domain names have been registered and are being used in bad faith.
I. Preliminary Issue: Supplemental Filings
Within the General Panel Powers set forth by paragraph 10 of the Rules and in accordance with the consensus view among UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2), the Panel has accepted both Supplemental Filings of March 14, 2016 (by Respondent) and of March 17, 2016 (by Complainant) in order to give each party a fair opportunity to fully present its case, yet ensuring procedural efficiency and adequate timing of the rendering of this decision.
II. Substantive Issues
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain names <monster.army> and <monstergirl.club> are at least confusingly similar to the MONSTER and MONSTER GIRL trademarks in which Complainant has shown itself to have rights.
It is obvious that the second level domain name in <monster.army> is identical to Complainant’s MONSTER trademark and that the second level domain name in <monstergirl.club> is identical to Complainant’s MONSTER GIRL trademark. There also is a consensus view among UDRP panels that the applicable gTLDs in the disputed domain names (e.g., “.army” and “.club”) would usually be disregarded under the identity or confusing similarity test (see WIPO Overview 2.0, paragraph 1.2).
Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
It is undisputed between the Parties that the disputed domain names so far have not been made use of at all, neither in connection with a bona fide offering of goods or services nor in a legitimate noncommercial or fair manner. Panels have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, may not of itself confer rights or legitimate interests in the domain name (see WIPO Overview 2.0, paragraph 2.2). Also, there is no reason to believe that Respondent’s name somehow corresponds to the disputed domain names.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence to the contrary (see WIPO Overview 2.0, paragraph 2.1).
As for the disputed domain name <monstergirl.club>, Respondent expressly states that in view of the documentation submitted by Complainant, it consents to transfer said disputed domain name to Complainant. The Panel’s understanding, therefore, is that Respondent itself does not claim any rights or legitimate interests with respect to the disputed domain name <monstergirl.club>.
As for the disputed domain name <monster.army>, Respondent primarily points to its ownership of the MONSTER ARMY trademark with protection, inter alia, for “cosmetics” in class 3. Such trademark, however, was applied for with the DPMA only on November 24, 2015 – thus more than three months after Respondent’s receipt of Complainant’s cease and desist letter – and was registered only on March 10, 2016 (with the opposition deadline still running) – thus after the formal commencement of this UDRP proceeding. Paragraph 4(c)(i) of the Policy provides that a use of, or demonstrable preparations to use, a disputed domain name in connection with a bona fide offering of goods or services shall demonstrate rights or legitimate interests in that disputed domain name if such use or preparations take place “before any notice” to Respondent “of the dispute”. Therefore, even if one could conceivably interpret the registration of the MONSTER ARMY trademark with DPMA as a “demonstrable preparation” to use the disputed domain name <monster.army> in connection with a bona fide offering – an argument which Respondent itself has not expressly come forward with – such demonstrable preparations have taken place too late as to fulfill the prerequisites of a showing of rights or legitimate interests under Paragraph 4(c)(i) of the Policy.
Moreover, Respondent’s mere announcement that it would “eventually” make a legitimate noncommercial or fair use of the disputed domain name <monster.army> does not qualify as an appropriate allegation allowing the Panel to find rights or legitimate interests of Respondent within, e.g., the meaning of Paragraph 4(c)(iii) of the Policy.
Therefore, Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain names were registered and are being used by Respondent in bad faith.
Panels have found that the apparent lack of a so-called active use of a disputed domain name without any active attempt to sell or to contact the trademark holder (passive holding) does not as such prevent a finding of bad faith, if an examination of all the circumstances of the case still indicates that respondent is acting in bad faith; indicative circumstances may be that complainant has a well-known trademark and that respondent has not filed any substantive response to complainant’s contentions (see WIPO Overview 2.0, paragraph 3.2).
Complainant states – and Respondent has not contested said line of argumentation – that it is not possible to conceive of a plausible situation in which Respondent would have been unaware of Complainant and its MONSTER trademarks at the time the disputed domain names were registered. For the Panel, it is important to note that the disputed domain names refer to two different trademarks within Complainant’s large portfolio of registered trademarks, namely MONSTER and MONSTER GIRL, and, furthermore, to the MONSTER ARMY trademark in which Complainant claims unregistered trademark rights. Besides, Respondent agrees to transfer the disputed domain name <monstergirl.club> voluntarily to Complainant. Against this background, it is reasonable to find that the registration of both disputed domain names by Respondent indeed took place with full knowledge of Complainant’s trademark rights. Moreover, in the absence of any other reasonable explanation as to why Respondent should rely on the disputed domain names, the Panel has no difficulty in finding that Respondent has registered and uses the disputed domain names in a manner which at least takes unjustified and unfair advantage of the MONSTER trademark’s fame and must, therefore, be considered as registered and being used in bad faith within the meaning of the Policy.
Respondent indeed has pointed several times to its ownership of the MONSTER ARMY trademark to justify its ownership of the disputed domain name <monster.army>. However, as previous panels have stated, “it would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy.” Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847. Here, no legitimate interest arises as both application and registration of said MONSTER ARMY trademark took place well after Complainant had served Respondent with a cease and desist letter.
Moreover, Respondent has brought forward nothing in substance relating to the intended use of said MONSTER ARMY trademark that would have allowed the Panel to hold for Respondent.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) under 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 <monster.army> and <monstergirl.club> be transferred to Complainant.
Stephanie G. Hartung, LL.M.
Date: March 21, 2016