national arbitration forum

 

DECISION

 

Monster Energy Company v. jintong wu

Claim Number: FA1205001445617

 

PARTIES

Complainant is Monster Energy Company (“Complainant”), represented by Lynda Zadra-Symes of Knobbe Martens Olson & Bear LLP, California, USA.  Respondent is jintong wu (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <monsterenergyblog.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on May 23, 2012; the National Arbitration Forum received payment on May 23, 2012.

 

On May 24, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arb-itration Forum that the <monsterenergyblog.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the Go-Daddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On May 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@monsterenergyblog.com.  Also on May 25, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 20, 2012, pursuant to Complainant's request to have the dispute decid-ed by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant has registered the MONSTER ENERGY trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,057,061, registered February 7, 2006);

 

Respondent registered the <monsterenergyblog.com> domain name on January 17, 2011;

 

Respondent’s <monsterenergyblog.com> domain name is confusingly similar to Complainant’s MONSTER ENERGY mark;

 

Respondent’s domain name previously resolved to a website offering counterfeit Monster Energy merchandise, including hats and clothing;

 

Respondent’s domain name currently resolves to an inactive website;

 

Complainant has never licensed or authorized Respondent to use the MONSTER ENERGY trademark;

 

Respondent has not been commonly known by the disputed domain name;

 

Respondent has not made a bona fide offering of goods or services or a legit-imate noncommercial or fair use of the disputed domain name;

 

Respondent’s registration and use of the disputed domain name disrupts Com-plainant’s business;

 

Respondent attracts Internet users to its website, for commercial gain, by creat-ing a likelihood of confusion with Complainant’s MONSTER ENERGY mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain name registered by Respondent is confusingly similar to a trade-mark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)  the same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

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

 

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

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed represent-ations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vert-ical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”

 

Identical and/or Confusingly Similar

 

Complainant has rights in the MONSTER ENERGY trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark auth-ority, the USPTO.  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a complainant had established rights in the GOOGLE mark through its holding of trademark registrations with the competent govern-mental authorities).

 

This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that of Respondent’s residence or place of business.  See, for example, Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in its mark in some jurisdiction). 

 

Turning then to the question of confusing similarity, we conclude that under Policy ¶ 4(a)(i) the <monsterenergyblog.com> domain name is confusingly similar to Complainant’s MONSTER ENERGY mark.  The domain name includes the entire mark, merely removing the space between the terms of the mark and adding the generic top-level domain (“gTLD”) “.com” along with the generic term “blog.”  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms of a mark and the addition of a gTLD do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i));  see also Am. Online, Inc. v. Karan-dish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark in forming a contested domain name does not sufficiently distinguish the domain name from the mark under Policy ¶ 4(a)(i)).

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):

 

Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

 

Complainant has made a sufficient prima facie showing under this head of the Policy.  Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name.  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name.  Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.

 

We begin by noting that Complainant contends, and Respondent does not deny,

that Respondent has not been commonly known by the disputed domain name, and that Complainant has never licensed or authorized Respondent to use its MONSTER ENERGY trademark.  Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “jintong wu,” which does not resemble the disputed domain name.  On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by  dis-puted domain names, and so had no rights to or legitimate interests in those domains under Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as other evidence in the record, gave no indication that that respondent was commonly known by those domains, and where a complainant had not author-ized that respondent to register a domain name containing its mark).

 

We next observe that Complainant also asserts, without objection from Respond-ent, that Respondent’s domain name previously resolved to a website offering counterfeit Monster Energy merchandise.  This is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).  See, for example, Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights or legitimate interests in a contested domain name under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where a respondent sold counterfeit versions of a complain-ant’s products in competition with that complainant’s business).

 

Complainant also contends, again without objection from Respondent, that Respondent’s domain name currently resolves to an inactive website.  Inactive use of a domain name, in the circumstances here presented, does not qualify as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legit-imate noncommercial or a fair use under Policy ¶ 4(c)(iii).  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that a respond-ent’s non-use of disputed domain names demonstrates that that respondent is not using them for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

The Panel therefore finds that Complainant has satisfied Policy¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

We are convinced from our review of the record that Respondent’s registration and use of the disputed domain name as alleged in the Complaint disrupts Com-plainant’s business.  This stands as evidence that Respondent both registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).  See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that a complainant’s business was disrupted by a respond-ent’s bad faith registration and use of a disputed domain name for the purpose of selling counterfeit products).

 

And, because it is apparent from the record that Respondent has attempted, by its employment of the contested domain name, to attract Internet users to its resolving website for commercial gain, by creating a likelihood of confusion among users as to the possibility of Complainant’s affiliation with the disputed domain name, in pursuit of its aim to sell counterfeit versions of Complainant’s goods, we are similarly convinced that this manner of operation constitutes evidence of bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv).  See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (finding that a re-spondent’s bad faith in selling of counterfeit products by the use of a domain name which was confusingly similar to the mark of a complainant created the likelihood of confusion among Internet users as to the possibility of that complainant’s affiliation with the disputed domain name, which allowed that respondent to profit from such confusion).

 

Respondent’s <monsterenergyblog.com> domain name currently resolves to an inactive website.  The failure to make an active use of the disputed domain name in the circumstances described in the Complaint demonstrates bad faith registra-tion and use of the domain name under Policy ¶ 4(a)(iii).  See, for example, Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (conclud-ing that a respondent’s failure to make active use of its disputed domain name after its registration indicated that that respondent had registered the domain name in bad faith).

 

For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the <monsterenergyblog.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  June 29, 2012

 

 

 

 

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