WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CytoSport Inc. v. MarketingExperts, Inc.

Case No. D2008-1111

1. The Parties

The Complainant is CytoSport Inc, Benicia, California, United States of America, represented by Thorpe North & Western, United States of America.

The Respondent is MarketingExperts, Inc., Cheyenne, Wyoming, United States of America.

2. The Domain Name and Registrar

The disputed domain name <monstermilk.com> is registered with eNom Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2008. On July 23, 2008, the Center transmitted by email to eNom Inc. a request for registrar verification in connection with the domain name at issue. On July 23, 2008, eNom Inc. 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26 2008.

The Center appointed William R. Towns as the sole panelist in this matter on September 5, 2008. 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 manufactures and markets nutritional and dietary supplements, including a powdered nutritional supplement in drink mix form sold under the brand MONSTER FOOD. The Complainant is the owner by assignment of the United States trademark registration for MONSTER FOOD.¹ The mark has been used in the United States and Europe in connection with the goods for which it was registered since as early as 1999.

The Respondent registered the disputed domain name <monstermilk.com> on March 11, 2003. The Respondent has used and at the time of the filing of the Complaint continued to use the disputed domain name in connection with a website at “www.monstermilk.com”, offering for sale a variety of goods and services, including nutritional and dietary supplements, through advertising links to various merchants or suppliers. The disputed domain name is currently being used to redirect Internet visitors to the online store of “www.Bodybuilding.com”, where numerous brands of dietary and nutritional products are offered for sale.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that its products sold under the MONSTER FOOD mark have been very successful are have been sold extensively in the United States and Europe since 1999. According to the Complainant, the disputed domain name <monstermilk.com> is confusingly similar to its MONSTER FOOD mark. The Complainant alleges that the Respondent selected the disputed domain name because of its confusing similarity with the Complainant’s mark, noting that the products offered on the Respondent’s website are strongly related and in some instances identical to the products sold by the Complainant under its MONSTER FOOD mark.

The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent has not been commonly known by the domain name and is using the misleadingly similar domain name to divert Internet users to the Respondent’s website for commercial gain. The Complainant asserts that the use of the disputed domain name in connection with advertising and sponsored links to other websites offering for sale products that compete directly with those of the Complainant does not constitute a bona fide offer of goods or services under the Policy.

The Complainant argues that the Respondent registered and is using the disputed domain name in a bad faith attempt to exploit and profit from the goodwill developed in the Complainant’s MONSTER FOOD mark. According to the Complainant, the Respondent must have been aware of the Complainant and its MONSTER FOOD mark when the Respondent registered the disputed domain name in 2003, given the successful international sales and promotion of the Complainant’s mark since 1999, and no conclusion can be reached other than that the Respondent intentionally attempted to attract Internet users to its website for financial gain, by creating a likelihood of confusion with the Complainant’s mark. The Complainant asserts that Internet visitors to the Respondent’s website are immediately directed to numerous other sponsored links, some of which offer products competing directly or indirectly with the Complainant’s products.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See inter alia Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

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

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <monstermilk.com> is confusingly similar to the Complainant’s MONSTER FOOD mark for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. See also Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. The Complainant’s mark and the disputed domain name are similar in overall appearance, sound and meaning. Both are comprised of the initial word “monster” followed by a second four-letter word denoting food or drink. In addition, the context of the Respondent’s use of the disputed domain name does not serve to dispel the confusing similarity. See, e.g., Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made by the Complainant. It is uncontested that the Respondent has not been authorized to use the Complainant’s mark or to appropriate the mark for use with domain name. The disputed domain name has been used by the Respondent to divert Internet users to a website containing advertising links to other websites, including websites offering products that compete directly or indirectly with those of the Complainant.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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 Respondent has not submitted a formal Response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.² In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy.

The Respondent has used the disputed domain name in connection with a website offering for sale through advertising links products that compete with those of the Complainant. These links serve no apparent purpose other than the generation of pay-per-click revenue. The registration and use of a domain name that is confusingly similar to the Complainant’s mark to generate advertising revenue does not constitute use of the domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; ACCOR v. Steve Kerry/North West Enterprise, Inc., WIPO Case No. D2006-0649. See also HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. There is no evidence that the Respondent has ever been commonly known by the disputed domain name, and the Respondent plainly cannot assert in the circumstances of this case that a non commercial or fair use of the domain name is being made under paragraph 4(c)(iii) of the Policy.

Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

In this case, the totality of circumstances demonstrates the Respondent’s bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is a reasonable inference from the circumstances reflected in the record of this particular case that the Respondent was well aware of the Complainant and its MONSTER FOOD mark at the time the Respondent registered the disputed domain name, and the record amply supports the conclusion that the Respondent registered the disputed domain name with the bad faith intent to profit from and exploit the Complainant’s mark.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <monstermilk.com> be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: September 19, 2008

¹ The United States Patent and Trademark Office (USPTO) issued trademark registration no. 2,904,119 for MONSTER FOOD to the original applicant, TKE, Inc., on November 23, 2004. The assignment of the mark to the Complainant was recorded by the USPTO on May 14, 2008.

² Some panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.