national arbitration forum

 

DECISION

 

Monster Energy Company v. Giordano Marcello Costanzi Contreras

Claim Number: FA1207001452772

 

PARTIES

Complainant is Monster Energy Company (“Complainant”), represented by Lynda Zadra Symes of Knobbe Martens Olson & Bear LLP, California, USA.  Respondent is Giordano Marcello Costanzi Contreras (“Respondent”), Chile.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <monsterenergychile.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

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

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2012; the National Arbitration Forum received payment on July 10, 2012.

 

On July 11, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <monsterenergychile.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name.  Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 July 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 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@monsterenergychile.com.  Also on July 16, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration 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 August 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

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

  1. Complainant has rights in the MONSTER ENERGY mark which it uses in connection with beverages, clothing, accessories, and related goods;
  2. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registrations for the MONSTER ENERGY mark (e.g., Reg. No. 3,044,315 registered January 17, 2006);
  3. Complainant is the owner of the Chilean Intellectual Property Registry (“IPR”) registrations for the MONSTER ENERGY mark (e.g., Reg. No. 804,906 registered January 4, 2008);
  4. The <monsterenergychile.com> domain name is confusingly similar to the MONSTER ENERGY mark;
  5. Respondent is not commonly known by the <monsterenergychile.com> domain name;
  6. The <monsterenergychile.com> domain name resolves to a website which sells counterfeit merchandise of Complainant’s including clothing and hats;
  7. The <monsterenergychile.com> domain name is disruptive to Complainant’s business;
  8. The disputed domain name attracts, for commercial gain, Internet users to the <monsterenergychile.com> domain name by creating a likelihood of confusion;
  9. At the time of registration of the <monsterenergychile.com> domain name, Respondent must have known of Complainant and its rights in the MONSTER ENERGY mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Monster Energy Company, is in the business of designing, creating, developing, marketing, and selling beverages.  Complainant has rights in the MONSTER ENERGY mark which it uses in connection with beverages, clothing, accessories, and related goods. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registrations for the MONSTER ENERGY mark (e.g., Reg. No. 3,044,315 registered January 17, 2006). Complainant is the owner of the Chilean Intellectual Property Registry (“IPR”) registrations for the MONSTER ENERGY mark (e.g., Reg. No. 804,906 registered January 4, 2008).

 

Respondent, Giordano Marcello Costanzi Contreras, registered the <monsterenergychile.com> domain name on October 24, 2011. The <monsterenergychile.com> domain name resolves to a website which sells counterfeit merchandise of Complainant’s including clothing and hats.

 

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:

 

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

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

(3)  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 representations 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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the 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 mark which it uses in connection with beverages, clothing, accessories, and related goods. Complainant owns USPTO registrations for the MONSTER ENERGY mark (e.g., Reg. No. 3,044,315 registered January 17, 2006) and Chilean IPR registrations for the MONSTER ENERGY mark (e.g., Reg. No. 804,906 registered January 4, 2008). Registration of a mark with a federal trademark authority is evidence of having rights in a mark for purposes of the Policy. See  AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the MONSTER ENERGY mark pursuant to Policy ¶ 4(a)(i).

 

Respondent’s <monsterenergychile.com> domain name is confusingly similar to the MONSTER ENERGY mark. Respondent’s addition of the geographic term “chile” does not create a distinction between the <monsterenergychile.com> domain name and the MONSTER ENERGY mark. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Respondent’s removal of the space in Complainant’s mark and addition of the generic top-level domain (“gTLD”) “.com” fail to make any substantive change to Complainant’s mark that would have an impact on a Policy ¶ 4(a)(i) analysis. 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 and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <monsterenergychile.com> domain name is confusingly similar to the MONSTER ENERGY mark under Policy ¶ 4(a)(i).

 

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).

 

Respondent is not commonly known by the <monsterenergychile.com> domain name. Respondent is not licensed or otherwise authorized to use the MONSTER ENGERY mark, and Complainant has no agreement with Respondent to be a distributor or reseller of Complainant’s products. Additionally, the WHOIS record for the <monsterenergychile.com> domain name lists “Giordano Marcello Costanzi Contreras” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <monsterenergychile.com> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Respondent’s use of the <monsterenergychile.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <monsterenergychile.com> domain name resolves to a website where Respondent offers for sale counterfeit versions of Complainant’s products, including clothing and hats. In C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011), the panel held that the sale of counterfeit products on a disputed domain name did not give the respondent rights or legitimate interests in the domain name. Therefore, the Panel finds that Respondent is using the <monsterenergychile.com> domain name for neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

Registration and Use in Bad Faith

 

Respondent’s <monsterenergychile.com> domain name is disruptive to Complainant’s business and thus demonstrates Respondent’s bad faith. Respondent sells counterfeit versions of Complainant’s products through the <monsterenergychile.com> domain name. The domain name diverts business from Complainant to Respondent thus generating reputational risks and potentially causing a loss of customers. Bad faith is often evidenced by disruption due to the sale of counterfeit products. See Brainetics, LLC v. Zhang, FA 1389740 (Nat. Arb. Forum June 22, 2011) (“The Panel finds that respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products constitutes bad faith registration and use under Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent registered and is using the <monsterenergychile.com> domain name disruptively, and thus in bad faith, under Policy ¶ 4(b)(iii).

 

Respondent’s disputed domain name attempts to attract, for commercial gain, Internet users by creating a likelihood of confusion as to the source of the <monsterenergychile.com> domain name. The disputed domain name resolves to a website where Respondent sells clothing and hats that are actually counterfeit versions of Complainant’s MONSTER ENERGY branded products. Respondent’s use of the MONSTER ENERGY mark is a clear attempt to associate with Complainant and the trademark-branded products. Therefore, the Panel finds that Respondent registered and is using the <monsterenergychile.com> domain name in bad faith under Policy ¶ 4(b)(iv). See CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (finding that where a respondent benefits from the confusion caused by the registration and use of a confusingly similar domain name by selling counterfeit versions of the complainant’s goods and services is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)).

 

Respondent’s bad faith is clear because of Respondent’s knowledge of Complainant at the time the <monsterenergychile.com> domain name was registered. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration; see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

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

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  August 21, 2012

 

 

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