Monster Energy Company v. Argo Wibowo
Claim Number: FA1207001452773
Complainant is Monster Energy Company (“Complainant”), represented by Lynda Zadra Symes of Knobbe Martens Olson & Bear LLP, California, USA. Respondent is Argo Wibowo (“Respondent”), represented by Joseph Lightfoot, Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <monsterenergydrink.com>, registered with Moniker Online Services LLC.
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.
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 12, 2012, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <monsterenergydrink.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 July 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@monsterenergydrink.com. Also on July 19, 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 10, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,044,315 filed May 23, 2003; registered January 17, 2006) and other trademark authorities for the MONSTER ENERGY mark. Complainant’s MONSTER ENERGY products are heavily marketed and sold to consumers worldwide, having been launched in 2002.
Respondent, Argo Wibowo, registered the <monsterenergydrink.com> domain name in May 2004. Respondent’s domain name resolves to a website that features sponsored links to Complainant’s competitors, which generate revenue for Respondent.
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.”).
Complainant asserts that it has protectable rights in the MONSTER ENERGY mark under Policy ¶ 4(a)(i). Complainant owns numerous trademark registrations with the USPTO (e.g., Reg. No. 3,044,315 filed May 23, 2003; registered January 17, 2006), and other trademark authorities, for the MONSTER ENERGY mark. The Panel finds the Complainant has established rights in the MONSTER ENERGY mark under Policy ¶ 4(a)(i), regardless of Respondent’s location, which date back to the original filing date with the USPTO of May 23, 2003. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Further, Complainant contends that Respondent’s <monsterenergydrink.com> domain name is confusingly similar to the MONSTER ENERGY mark, only adding the generic term “drink” and the generic top-level domain (“gTLD”) “.com.” The Panel notes that the disputed domain name also removes the space from the mark and that the term “drink” is actually descriptive of Complainant’s products. Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). 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)); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).
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).
Complainant contends that Respondent, “Argo Wibowo” per the WHOIS information, is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests in the domain name. Complainant also contends that it has not licensed or authorized Respondent’s use of the disputed domain name. Based upon the WHOIS information and all other evidence on record, the Panel finds that Respondent is not commonly known by the <monsterenergydrink.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).
Complainant contends that Respondent’s disputed domain name resolves to a website that features sponsored links to Complainant’s competitors which generate revenue for Respondent. The Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant asserts that Respondent is using the disputed domain name to perpetuate a fraud on innocent Internet users who believe they are dealing with Complainant. Complainant also argues that Respondent purports to pay individuals to wrap their vehicles with advertising for Complainant and Respondent then sends them a check which is not good and is returned. Complainant contends that Respondent then asks those consumers to wire $1,000 of the check that they receive as payment to Respondent before the individual is notified by their bank that the check was not valid. Complainant claims that Respondent does this by using the e-mail address containing the “@monsterenergydrinks.com” e-mail. Complainant notes that it has received at least one complaint from a consumer that Respondent had tricked through this scheme. The Panel finds that Respondent’s use of the disputed domain name for a fraudulent purpose, while posing as Complainant, is evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Complainant asserts that Respondent’s use of the disputed domain name to host competing pay-per-click advertisements is disruptive to Complainant’s business and is evidence of bad faith. Prior UDRP panels have found that, where a respondent’s domain name resolves to a website featuring third-party links to a complainant’s competitors, bad faith disruption exists. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). Accordingly, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iii).
Further, Respondent’s presumed receipt of click-through fees in association with the resolving website’s content is also evidence of bad faith. Complainant contends that Respondent uses the MONSTER ENERGY mark to confuse Internet users regarding Complainant’s involvement with the website. Respondent is using Complainant’s mark in order to create Internet user confusion regarding Complainant’s affiliation with the website and business activities, therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant also contends that Respondent registered and is using the disputed domain name in bad faith because it had prior knowledge of Complainant and its rights in the MONSTER ENERGY mark. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the MONSTER ENERGY mark prior to registering the disputed domain name; therefore, bad faith registration exists under Policy ¶ 4(a)(iii). See Gruner + Jahr Printing & Publ’g Co. v. 2 Ergo Ltd., FA 214463 (Nat. Arb. Forum Jan. 27, 2004) (“Even if [constructive knowledge] were applicable to cases under the Policy, Complainant cannot rely, in relation to activities of non-U.S. persons outside the U.S., on constructive notice under U.S. trademark law arising out of registration of its U.S. marks.”); 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).
Further, Complainant argues that Respondent is using the disputed domain name and Complainant’s marks in bad faith in order to defraud individuals who believe that they are signing up to advertise for Complainant. As noted above, Complainant contends that Respondent is using the disputed domain name to send out fraudulent e-mail correspondence to Internet users inquiring about advertising for Complainant’s products. Complainant asserts that Respondent then sends a bad check to those that wish to sign up for the program and ask for a payment from that money before the users find out from their banks that the check is bad. Complainant notes that it has been contacted at least once by a consumer that was injured as a result of Respondent’s scheme. The Panel finds that Respondent’s fraudulent activities with the disputed domain name, while purporting to be Complainant, are further evidence of Respondent’s bad faith registration and use of the <monsterenergydrink.com> domain name under Policy ¶ 4(a)(iii). See Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use).
Lastly, Complainant argues that Respondent has engaged in cyberflight by changing the WHOIS information from the privacy shield “Moniker Privacy Services” to “Argo Wibowo” after it received notice of this UDRP proceeding. Cyberflight is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Medco Health Solutions, Inc. v. Whois Privacy Protection Serv., Inc., D2004-0453 (WIPO Aug. 25. 2004) (holding the respondent’s efforts to disguise its true identity an example of bad faith conduct).
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 <monsterenergydrink.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 23, 2012
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