Monster Energy Company v. huang shou
Claim Number: FA1209001462461
Complainant is Monster Energy Company (“Complainant”), represented by Lynda Zadra Symes of Knobbe Martens Olson & Bear LLP, California, USA. Respondent is huang shou (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <monsterenergycaps.com>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2012; the National Arbitration Forum received payment on September 12, 2012.
On September 13, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <monsterenergycaps.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 September 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 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@monsterenergycaps.com. Also on September 14, 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 October 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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
Complainant develops and markets the MONSTER and MONSTER ENERGY line of beverages and has used the MONSTER ENERGY mark since 2002. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MONSTER ENERGY mark (e.g., Reg. No. 3,057,061 registered February 7, 2006). Complainant also owns trademark registrations for its MONSTER ENERGY mark with numerous other international agencies, such as with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 5,447,960 registered May 28, 2009), the Intellectual Property Corporation of Malaysia (“MyIPO”) (e.g., Reg. No. 6,002,286 registered July 21, 2009), and the Intellectual Property Office of New Zealand (“IPONZ”) (e.g. Reg. No. 742,904 registered September 5, 2005). See Exhibit D. The MONSTER ENERGY mark is recognized by consumers as the source of beverages such as Monster Assault, Monster Khaos, Monster Ripper, Monster Mixxd, and Monster Rehab. Complainant’s MONSTER beverages include non-carbonated energy drinks, dairy-based coffee energy drinks, and five-ounce “super concentrated” energy drinks. Complainant sells its products in the United States and in countries throughout the world, using its MONSTER ENERGY marks. Complainant uses its MONSTER ENERGY mark on clothing, including tee-shirts, hooded sweatshirts, jackets, bandanas, sweatbands, and headgear. Complainant’s sales worldwide exceed one billion cans of MONSTER ENERGY drinks per year and it has established its brand as the best-selling energy drink in the United States by volume. Complainant uses substantial resources to market and promote its products through online and print media, as well as through athlete sponsorship, music festival sponsorship, and other promotions. Complainant owns the <monsterenergy.com> domain name, at which the MONSTER ENERGY mark is prominently displayed.
Respondent registered the <monsterenergycaps.com> domain name on July 27, 2011, and uses the domain name to sell counterfeit merchandise, such as clothing and hats, using the MONSTER ENERGY mark. See Annex L. Respondent is engaged in a pattern of registering domain names incorporating Complainant’s mark and is “clearly aware” of Complainant and its business. Respondent is not authorized to use any of Complainant’s trademarks and is not a licensed distributor or reseller of Complainant’s products. Respondent uses the <monsterenergycaps.com> domain name to attract Internet users in order to make a commercial gain. The <monsterenergycaps.com> domain name is confusingly similar to Complainant’s MONSTER ENERGY mark. Respondent lacks rights or legitimate interests in the disputed domain name and fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent links the disputed domain name to a website that attempts to pass itself off as Complainant’s. Respondent is not commonly known by the <monsterenergycaps.com> domain name. Respondent disrupts Complainant’s business by diverting customers away from Complainant’s website and luring Internet users to Respondent’s website, where Respondent makes a commercial gain from selling counterfeit products bearing Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its MONSTER ENERGY mark.
2. Respondent’s <monsterenergycaps.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
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 claims to have rights in its MONSTER ENERGY mark through its multiple international trademark registrations with agencies that include the USPTO (e.g., Reg. No. 3,057,061 registered February 7, 2006), the SAIC (Reg. No. 5,447,960 registered May 28, 2009), MyIPO (e.g., Reg. No. 6,002,286 registered July 21, 2009), and IPONZ (e.g. Reg. No. 742,904 registered September 5, 2005). The Panel determines that Complainant’s various trademark registrations establish Complainant’s rights in the MONSTER ENERGY mark under Policy ¶ 4(a)(i). See Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities . . . including the State Intellectual Property Office of the People’s Republic of China . . . and the United States Patent and Trademark Office . . .”).
Complainant asserts that the <monsterenergycaps.com> domain name is confusingly similar to its MONSTER ENERGY mark, pointing out the additions of the generic term “caps” and the generic top-level domain (“gTLD”) “.com” do not add any distinguishing characteristics to the domain name. The Panel observes that the disputed domain name does not include the space between the words of the MONSTER ENERGY mark. The Panel finds that the <monsterenergycaps.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) because the domain name uses the entire mark without the space, adding only a generic term and a gTLD. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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 alleges that Respondent is not commonly known by the <monsterenergycaps.com> domain name, citing the WHOIS record for the domain name, which identifies the registrant as “huang shou.” Complainant argues that the registrant name presents no similarity to the disputed domain name. The Panel determines that Respondent’s registrant information does not indicate that Respondent is commonly known by the disputed domain name and as a result, Respondent lacks rights and legitimate interests in the <monsterenergycaps.com> domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent uses the <monsterenergycaps.com> domain name to sell counterfeit items that appear to be produced by Complainant, such as clothing and hats. Complainant argues that Respondent’s use of Complainant’s mark in a domain name to host a competing website for profit is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. In eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007), the panel found that selling counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. The Panel concludes that Respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products does not constitute 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).
Complainant argues that Respondent uses the <monsterenergycaps.com> domain name to give website visitors the false impression that the website belongs officially to Complainant and sells authorized goods. Complainant contends that Respondent’s resolving website looks nearly identical to Complainant’s official website, displays Complainant’s MONSTER ENERGY mark, and uses Complainant’s color scheme. The Panel determines that Respondent attempts to pass itself of as Complainant by using Complainant’s distinguishing marks and colors at its own website and finds that such activity is evidence that Respondent does not make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ (c)(iii). See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Complainant contends that Respondent has a pattern of registering domain names that use Complainant’s marks. Complainant provides evidence that Respondent was previously ordered to transfer the <shopmonsterenergy.com> and <monserenergylogo.com> to Complainant in previous UDRP actions. See Hansen Beverage Co. v. shouhai, FA1308871 (Nat. Arb. Forum Nov. 7, 2011); see Lso Monster Energy Co. v. taohai, FA 1430315 (Nat. Arb. Forum March 30, 2012). See Annexes G and H. The Panel notes that the respondent named in in Lso Monster Energy Co. v. taohai has a different name than the respondent in Beverage Co. v. shouhai and in the present action, and therefore declines to find that Respondent has a pattern of bad faith registration and use under Policy ¶ Complainant asserts that Respondent “generates reputation risks and causes potential loss of customers” by diverting business away from Complainant’s website and to Respondent’s website. The panel in Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008), stated that the respondent’s sale of counterfeit versions of the complainant’s goods constituted disruption to the complainant’s business and provided evidence of bad faith registration and use. The Panel finds that Respondent’s bad faith registration and use of the <monsterenergycaps.com> domain name under Policy ¶ 4(b)(iii) is demonstrated by Respondent’s disruption of Complainant’s business by selling counterfeit products purporting to be Complainant’s.
Complainant argues that Respondent registered and uses the <monsterenergycaps.com> domain name for the bad faith purpose of misdirecting potential customers of Complainant’s business in order to make a commercial profit from the sale of counterfeit goods. The panel in H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009), stated that the respondent’s sale of counterfeit goods created a likelihood of confusion to Internet users as to complainant’s affiliation with the disputed domain name and allowed the respondent to make a profit as a result of the confusion. The Panel determines that Respondent registered and uses the <monsterenergycaps.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent makes a commercial gain by confusing consumers and attracting Internet traffic to the website.
Complainant argues that Respondent copies Complainant’s website by using Complainant’s marks and trade dress throughout the resolving website. The Panel notes that Complainant provides evidence showing Respondent’s use of the website, which claims “The Monster can support athletes so they can make a career out of their passion… Monster Energy T-Shirts are an energy drink brand which launched in 2002 by Hansen Natural.” See Annex M. The Panel concludes that Respondent attempts to pass itself off as Complainant by imitating Complainant’s website, including using Complainant’s mark and logo, which is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <monsterenergycaps.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 24, 2012
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