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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Monster Energy Company v. Geremy Bordeleau

Case No. D2016-1308

1. The Parties

The Complainant is Monster Energy Company of Corona, California, United States of America (“United States”), represented by Knobbe, Martens, Olson & Bear, LLP, United States.

The Respondent is Geremy Bordeleau of Repentigny, Quebec, Canada, self-represented.

2. The Domain Name and Registrar

The disputed domain name <monsterenergy.quebec> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2016. On June 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on July 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2016. On July 18, 2016, the Center granted a four calendar day extension for Response pursuant to paragraph 5(b) of the Rules upon the Respondent’s request. The Response was filed with the Center on July 22, 2016.

The Complainant filed a Supplemental Filing with the Center on July 28, 2016. In accordance with paragraphs 10(d) and 12 of the Rules, it is for the Panel to determine the admissibility, relevance, materiality and weight of that Supplemental Filing.

The Center appointed Steven A. Maier as the sole panelist in this matter on July 29, 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.

In the light of its findings as set out below, the Panel determined in its discretion that it was neither necessary nor appropriate to review the Complainant’s Supplemental Filing in this case.

4. Factual Background

The Complainant is a corporation registered in Delaware, United States, with its principal place of business in Corona, California, United States. It is a supplier of beverages including an energy drink named “Monster Energy”.

The Complainant is the proprietor of registrations in numerous jurisdictions throughout the world for the trademark MONSTER ENERGY. Those registrations include, for example:

- United States trademark number 4721433 for MONSTER ENERGY registered on April 14, 2015 in Class 35;

- European Union trademark number 004823563 for MONSTER ENERGY registered on January 10, 2007 in Classes 5 and 32;

- Canadian trademark number 690588 for MONSTER ENERGY registered on June 21, 2007 for use in connection with beverages and related products.

The Complainant is also the proprietor in various jurisdictions of a figurative trademark comprising the letter “M” in the shape of a claw together with the words “Monster Energy”. These registrations include Canadian trademark number TMA833012 registered on September 27, 2012. Other registrations comprise the figurative trademark (or logo) in a variety of colours.

The disputed domain name was registered on April 12, 2016.

As at June 21, 2016, the disputed domain name resolved to a holding page stating that the site was under development.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has used the MONSTER ENERGY mark since 2002 and that it sells a wide range of drinks under the MONSTER ENERGY brand, which is also used in connection with the sale of clothing, sports gear, accessories, bags and other products. It has sold its beverages outside the United States since 2003 and its worldwide retail sales in over 80 jurisdictions now exceed three billion cans per year, with revenue in excess of USD six billion per year. Since its launch in Canada in 2003, it has sold more than 443 million cans in Canada producing approximately USD 529 million in revenue.

The Complainant states that its MONSTER ENERGY mark has been the subject of substantial and continuous marketing and promotion and submits that it has spent over USD 4.1 billion on such activities since 2002. The Complainant refers to its sponsorship of athletes and athletic competitions, music festivals and musicians and the Las Vegas monorail. It also refers to its branded merchandise and promotional materials and its “Monster Ambassador Team” which distributes free samples of its drinks, including approximately 3.4 million cans which it says have been distributed in Canada.

The Complainant refers to its principal website at “www.monsterenergy.com” which it states was launched in 2003. It claims approximately 439,000 visitors per month, the majority of which it states are unique visitors, including a large number based in Canada. The Complainant also refers to its presence on social media websites including Facebook, Twitter and YouTube and provides evidence that the “Monster Energy” Facebook page was ranked the 12th most “liked” brand on Facebook by the Business Insider website. It also produces articles from magazines including Forbes, Business Week and Fortune making reference to the success of the MONSTER ENERGY brand.

As a result of the matters referred to above, the Complainant submits that its MONSTER ENERGY trademark has become widely recognized by consumers in the United States, Canada and throughout the world as designating the Complainant and its products.

The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights. The Complainant states that the disputed domain name comprises its MONSTER ENERGY trademark in its entirety together with the generic Top-Level Domain (“gTLD”) “.quebec”. The Complainant submits that the addition of the gTLD does not distinguish the disputed domain name from the Complainant’s trademark and, on the contrary, given its descriptive nature, will suggest to consumers that the disputed domain name is used by the Complainant to sell its products in Quebec.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has never licensed or authorized the Respondent to use its trademarks and submits that the Respondent has not commonly been known by the disputed domain name. The Complainant points to the fact that the disputed domain name has resolved to a parked web page and submits in these circumstances that the Respondent has neither used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, nor made legitimate noncommercial or fair use of the disputed domain name.

The Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Complainant relies on the reputation of its MONSTER ENERGY trademark, which it submits had been well known internationally for many years prior to the registration of the disputed domain name and the subject of a Canadian trademark registration for nine years prior to the date of such registration. It contends that it is impossible in the circumstances to conceive of a plausible situation in which the Respondent would have been unaware of its MONSTER ENERGY trademark at the date of registration of the disputed domain name.

In addition, the Complainant exhibits correspondence with the Respondent in April 2016, in the course of which the Respondent stated that he liked the Complainant’s products and was aware of a commercial tie-up between the Complainant and Yamaha Motors. The Complainant submits that this evidences the Respondent’s prior knowledge of the MONSTER ENERGY trademark and supports a finding of bad faith.

The Complainant makes further reference to its correspondence with the Respondent and states that, following its third approach to the Respondent, the Respondent offered to sell the disputed domain name to the Complainant “for a reasonable sum”. The Respondent told the Complainant that the disputed domain name had been registered in connection with a “very interesting project” but that the Respondent was willing to abandon that project and sell the disputed domain name to the Complainant. The Complainant submits that this is evidence that the Respondent did not have bona fide intent to use the disputed domain name and that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant as contemplated by paragraph 4(b)(i) of the Policy.

Finally, the Complainant submits that the Respondent’s passive holding of the disputed domain name does not prevent a finding of registration and use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Complainant further contends that where a trademark has a high degree of inherent or acquired distinctiveness, then the passive holding of a domain name comprising that mark is of itself evidence of bad faith (Miss Universe L.P., LLLP v. Oliya Productions, WIPO Case No. D2002-0765).

The Complainant requests a transfer of the disputed domain name.

B. Respondent

The Respondent states that he registered the disputed domain name in good faith and without any intention of harming the Complainant.

The Respondent points to the General Registration Polices applicable to the “.quebec” TLD and states that he registered the disputed domain name in accordance with those policies. In particular, he states that he registered the disputed domain name in his capacity as a citizen of Quebec and with the intention of benefitting the Quebec community.

The Respondent states that he was aware of the Complainant’s green logo from Yamaha clothing which was sold at the store at which he works. He states he had always found the MONSTER ENERGY logo to be cool, although without knowing exactly what the Complainant did. Based on the fact that the Yamaha shirts included a number of different logos including MONSTER ENERGY, he decided to create a website linked to the disputed domain name <monsterenergy.quebec> to sell this clothing in Quebec. The website would have included pictures of Yamaha products with images of logos of several products.

The Respondent contends that his website would not have been confused with the Complainant’s “high premium” website.

The Respondent disputes the Complainant’s evidence concerning its reputation. He states that much of this is based on historical and data that, for example, only a very small proportion of the Complainant’s Facebook users would have come from Quebec.

The Respondent refers to authorities including Chocolat Lamontagne Inc. v. Mood Consulting Group, Inc.,2010 QCCS 3301 (Superior Court of Quebec) and submits that a company is entitled to use the trademark of a competitor to attract potential customers to its website in order to offer greater consumer choice.

The Respondent states that the disputed domain name had been available for almost two years before he purchased it but the Complainant did not purchase it in that period. Since the Respondent bought the disputed domain name in good faith on a “first come first served” basis, he should not be required to transfer it to the Complainant free of charge as demanded.

The Respondent argues that the terms “monster” and “energy” are descriptive. He states that while the Complainant is entitled to use a generic and descriptive name, it cannot complain if competitors use a similar expression.

The Respondent states that he was not aware that he had only a limited time to construct a website. He is a Quebec resident and store owner who bought the disputed domain name in good faith for the purposes of an interesting project. The company for which he works is a Yamaha dealer in Canada and it appears that the Complainant and Yamaha had a deal together.

The Respondent states that, after receiving several emails from the Complainant’s lawyers demanding the transfer of the disputed domain name, he eventually offered to abandon his project and sell the disputed domain name to the Complainant for a reasonable sum. He denies that he did do so in bad faith. Furthermore, he contends that the offer was made on a “without prejudice” basis for settlement purposes and should have remained confidential.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of registrations for the trademark MONSTER ENERGY in numerous jurisdictions throughout the world including Canada. The disputed domain name <monsterenergy.quebec> is identical to the Complainant’s trademark save for the gTLD “.quebec”. While the TLD is typically to be ignored for the purposes of assessing confusing similarity, the Panel finds that it does not serve in any event to distinguish the disputed domain name from the Complainant’s trademark. The TLD is a geographic identifier and, in the view of the Panel, the disputed domain name may be understood as denoting the use of the Complainant’s trademark in that geographical area. The Panel therefore finds that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel finds that the Complainant did not authorize the Respondent to use its MONSTER ENERGY trademark and that the Respondent has not commonly been known by a name corresponding to the disputed domain name.

The Respondent’s case is that he is a Yamaha clothing dealer and that Yamaha has a commercial tie-up with the Complainant, such that its MONSTER ENERGY trademark and logo appear on Yamaha clothing. The Respondent states that he registered the disputed domain name for the purposes of a website offering that clothing for sale from his shop in Quebec.

In certain circumstances, it is permissible for a supplier of goods or services to make use of a domain name which incorporates another party’s trademark, even without the authorization of the trademark owner. Those circumstances are, however, limited (see paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). In essence, the supplier must use the disputed domain name actually to sell the trademark owner’s goods or services, and only the trademark owner’s goods or services, and must make clear its relationship (or lack thereof) with the trademark owner.

In the view of the Panel, the Respondent has not established rights or legitimate interests in the disputed domain name on the basis described above. First and foremost, the Respondent has neither actually used the disputed domain name in the stated manner nor made any demonstrable preparations to do so. In any event, on the Respondent’s own case, his intention appears to have been to use the disputed domain name to sell Yamaha goods, not the Complainant’s, and while these goods may bear the Complainant’s MONSTER ENERGY trademark and logo, they also apparently include the marks and logos of other sponsors. In the circumstances, even if the Respondent had used or made demonstrable preparations to use the disputed domain name in the manner he intended, the Panel would not find that this would give rise to rights or legitimate interests in respect of the disputed domain name for the purposes of the Policy.

There being no other evidence of any rights or legitimate interests on the Respondent’s part, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

It is clear from the Respondent’s own submissions that he registered the disputed domain name in the knowledge of the Complainant’s trademark MONSTER ENERGY and with the intention of making reference to that trademark.

The disputed domain name consists of the Complainant’s trademark in its entirety, together with the gTLD “.quebec”. The Panel accepts the Complainant’s evidence that its trademark MONSTER ENERGY is widely known throughout the world, including Canada, as denoting the Complainant and its products and finds that Internet users would be liable to believe that the disputed domain name was owned, operated or approved by the Complainant as a site relating to the sale of its products in Quebec. The Respondent having failed to establish rights or legitimate interests in the disputed domain name under the criteria discussed above, the Panel finds that the Respondent’s registration and use of the disputed domain name were inherently misleading and took unfair advantage of the reputation and goodwill attaching to the Complainant’s trademark.

With regard to the specific arguments raised by the Respondent:

(a) While the Panel notes the Respondent’s claim to have registered the disputed domain name in accordance with the “.quebec” General Registration Policies, those policies require that the registration and use of a domain name be conducted in good faith and also incorporate the UDRP as the governing policy in the case of relevant disputes.

(b) While the terms “monster” and “energy” may be individually generic or descriptive, the Panel has found that the Complainant has trademark rights in respect of the terms in combination and that the Complainant’s MONSTER ENERGY trademark has become widely recognized throughout the world as designating the Complainant and its products.

(c) Where a respondent registers a domain name in bad faith, it generally does not assist the respondent to argue that the disputed domain name was freely available for registration and that the complainant could have registered it at an earlier time.

(d) Nor does the Panel accept the argument that a “competitor” of a trademark owner may legitimately make use of the relevant trademark in order to attract customers and offer consumer choice. If and to the extent that this may be the law of Quebec (about which the Panel reaches no conclusions) it does not reflect the UDRP and the body of cases decided under it.

The Panel does not consider the issues of whether or not the Respondent’s “without prejudice” correspondence should be deemed inadmissible, and whether or not the Respondent’s offer to sell the disputed domain name was of itself indicative of bad faith, to be determinative factors in this case.

The Panel accepts the Complainant’s submission that the Respondent’s passive use of the disputed domain name does not preclude a finding of bad faith in all the circumstances of the case (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Panel finds in all the circumstances that the disputed domain name has been registered and is being used 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 <monsterenergy.quebec> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: August 5, 2016

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