WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Monster Energy Company v. Registration Private, Domains By Proxy, LLC
Case No. D2018-2817
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 Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States.
2. The Domain Name and Registrar
The disputed domain name <monsterenergy.page> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2018. On December 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 2019, 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 13, 2018, 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 19, 2018.
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 December 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2019. On January 7 and January 9, 2019, the Center received two email communications from an individual purporting to be the Respondent.
The Center appointed William R. Towns as the sole panelist in this matter on January 23, 2019. 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, headquartered in Corona, California, sells energy drinks, beverages, and nutritional supplements under its MONSTER ENERGY mark. The Complainant has used the MONSTER ENERGY mark in the United States since as early as 2002, internationally since 2003, and is the owner numerous of trademark registrations for its MONSTER ENERGY marks issued in the United States and in numerous other countries. The earliest of the Complainant’s MONSTER ENERGY marks was registered by the United States Patent and Trademark Office (USPTO) on January 17, 2006, and February 7, 2006.1
The Complainant’s MONSTER ENERGY mark has been recognized in UDRP panel decisions as a distinctive indicator of source and a well-known mark.2 The Complainant has provided evidence of the extensive promotion and marketing of the MONSTER ENERGY mark. Sales of MONSTER ENERGY drinks since 2002 have generated more than USD 23 billion in gross sales.
The Respondent registered the disputed domain name <monsterenergy.page> on October 11, 2018, according to the Registrar’s WhoIs records. The WhoIs-listed registrant is a privacy or proxy registration service affiliated with the Registrar. As noted above, however, the Center received two communications on January 7 and January 9, 2019, from an individual purporting to have registered the disputed domain name. In the first of these communications the individual disclosed making an offer to sell the disputed domain name to the Complainant. In a subsequent email received by the Center the individual professed to be a “huge fan of Monster,” stating he had hoped to transfer the disputed domain name to the Complainant in exchange for a tour of the Complainant’s headquarters. It appears from the record that the disputed domain name has been passively held since its registration by the Respondent.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name is identical to its MONSTER ENERGY mark. The Complainant asserts that MONSTER ENERGY is a well-known mark and cites decisions in which UDRP panels have found domain names consisting of “monsterenergy” to be identical to the Complainant’s MONSTER ENERGY mark, when disregarding the generic Top-Level Domain (“gTLD”). The Complainant maintains that Internet consumers encountering the disputed domain name are likely to expect it to be associated with a website offering the Complainant’s products.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that the Respondent has not been commonly known by the disputed domain name and has not been authorized, licensed or otherwise permitted to use the Complainant’s MONSTER ENERGY mark. The Complainant observes 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 a legitimate noncommercial or other fair use of the disputed domain name. According to the Complainant, the Respondent has passively held the disputed domain name since its registration.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent registered the disputed domain name long after the Complainant’s MONSTER ENERGY mark, first registered in 2006, had become well-known in the United States and internationally. Given the Complainant’s numerous registrations of the MONSTER ENERGY mark and its extensive international reputation, the Complainant argues there is no plausible situation in which the Respondent would have been unaware of the Complainant and the well-known MONSTER ENERGY mark. In view of the foregoing, the Complainant submits that the Respondent’s passive holding of the disputed domain name evinces the Respondent’s bad faith registration and use. The Complainant further observes that marks with a high degree of inherent or acquired distinctiveness are entitled to a greater scope of protection.
B. Respondent
The Respondent did not reply to the Complainant’s contentions. As noted earlier, however, the Center received two communications from an individual claiming to have registered the disputed domain name. In one communication the individual disclosed that he had offered to sell the disputed domain name to the Complainant and had invited negotiations, which the Complainant declined. In another email directed to the Center following the commencement of proceedings, the individual professed to be a “huge fan of Monster.” The individual denied bad faith when registering the disputed domain name, stating he had hoped to transfer the disputed domain name to the Complainant in exchange for a tour of the Complainant’s headquarters.
6. Preliminary Issue: Respondent Identity
Paragraph 1 of the Rules defines the respondent as “the holder of a domain name registration against which a complaint is initiated.” In many instances, however, the WhoIs-listed registrant is a “privacy” or “proxy” registration service. Paragraph 4(b) of the Rules provides that updates to the respondent’s data, including a request by a privacy or proxy provider to reveal the underlying customer data, must be made before the two (2) business day period concludes or before the Registrar verifies the information requested and confirms the Lock to the UDRP Provider, whichever occurs first. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.4 .
It has become routine for privacy or proxy registration services to disclose underlying customer data upon commencement of a UDRP proceeding. However, in this instance Registration Private, Domains By Proxy, LLC did not disclose to the Registrar any underlying customer data. In the absence of any such disclosure and without verification by the Registrar of the underlying customer data, the Panel concludes that the Respondent, Registration Private, Domains By Proxy, LLC, is the holder of the disputed domain name made the subject of this Complaint, correctly identified as the WhoIs-listed registrant, and properly named as the Respondent in the Complaint. See WIPO Overview 3.0, section 4.4.5.
In terms of underlying respondent identity, UDRP panels have treated privacy and proxy services as practical equivalents for purposes of the Policy. Accordingly, the fact that such services may be used to prevent a complainant and panel from knowing the identity of the underlying registrant does not prevent panel assessment of the UDRP elements. See WIPO Overview 3.0, section 3.6 and cases cited therein. The Panel further notes, in reference to paragraph 3.7.7.3 of the ICANN Registrar Accreditation Agreement, that as a WhoIs-listed registrant the privacy or proxy service may be subject to liability for any use of the disputed domain name when electing not disclose the contact information of the underlying beneficial registrant. See WIPO Overview 3.0, section 4.4.6 and cases cited therein.
7. 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”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id., at paragraph 170. 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 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 name is the sole remedy 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 a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP 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 view is that the burden of production shifts 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 <monsterenergy.page> is identical to the Complainant’s MONSTER ENERGY mark, a well-known mark in which the Complainant has demonstrated rights through extensive registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.3 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
In this case, the Complainant’s MONSTER ENERGY mark is clearly recognizable in the disputed domain name.4 Top Level Domains (“gTLDs”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD. 5 In this instance the disputed domain name is identical to the Complainant’s mark when disregarding the gTLD “.page” See, e.g., De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-1465 (<debeers.feedback> is identical to complainant’s DE BEERS mark).
Accordingly, the Panel finds 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 of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s MONSTER ENERGY mark. The Respondent notwithstanding has registered the disputed domain name, which is identical to the Complainant’s mark, and which upon registering the Respondent (or what appears to be the undisclosed domain name holder) sought to sell to the Complainant. The Respondent by all appearances has passively held the disputed domain name since its registration. The Respondent’s non-use of the disputed domain name in the circumstances of this case is an additional factor that underscores the Respondent’s lack of rights or legitimate interests in the disputed domain name. See “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a 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 disputed 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, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, 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.
It is evident from the record that the Respondent was aware of the Complainant and the Complainant’s well-known MONSTER ENERGY mark when registering the disputed domain name. The Panel finds that the Respondent more likely than not registered the disputed domain name in order to exploit or profit from the Complainant’s trademark rights, with the intention of selling the disputed domain name to the Complainant. The Panel considers the undisclosed domain name holder’s claim to have registered the disputed domain intending to transfer it to the Complainant in exchange for a tour of the Complainant’s headquarters to be a pretext. Although the Respondent for now is passively holding the disputed domain name, Internet users encountering the disputed domain name could easily expect that the disputed domain name would be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.
In light of the foregoing, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds 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 the respondent’s 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 is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes from the attendant circumstances that the Respondent registered the disputed domain name seeking to profit from and exploit the Complainant’s MONSTER ENERGY mark. The Respondent’s passive holding of the disputed domain name does not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, “the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” See also Red Bull GmbH v. Kevin Franke, WIPO Case No. D2012-1531.
The Panel considers the following circumstances to be indicative of the Respondent’s bad faith under Telstra Corporation Limited v. Nuclear Marshmallows, supra. The Complainant’s MONSTER ENERGY mark is distinctive and well known in the Complainant’s trade, and clear beyond cavil that the Respondent was aware of the Complainant and the Complainant’s well-known mark when registering the disputed domain name. In the attendant circumstances of this case, and absent any explanation from the Respondent, the Panel cannot conceive of any plausible good faith use of the disputed domain name that could be made by the Respondent.
8. 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.page> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: February 6, 2019
1 United States. Reg. No. 3044315, filed for May 23, 2003, and registered January 17, 2006; United States Reg. No. 3057061, filed for April 18, 2002, and registered February 7, 2006.