Monster Energy Company v. chai vea
Claim Number: FA1212001476097
Complainant is Monster Energy Company (“Complainant”), represented by Lynda Zadra-Symes of Knobbe Martens Olson & Bear LLP, California, USA. Respondent is chai vea (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <monsterenergys.com>, registered with GODADDY.COM, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 14, 2012; the National Arbitration Forum received payment on December 14, 2012.
On December 18, 2012, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <monsterenergys.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 GODADDY.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 December 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2013 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@monsterenergys.com. Also on December 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 January 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant creates, develops, markets, and sells beverages under the MONSTER ENERGY mark.
Complainant has registered the MONSTER ENERGY mark with numerous trademark authorities, including the United States Patent and Trademark Office (“USPTO”) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 5,447,961 registered May 28, 2009).
Respondent’s <monsterenergys.com> domain name is confusingly similar to Complainant’s MONSTER ENERGY mark.
The registrant information for the at-issue domain name changed from “Domains by Proxy” to “chai vea” shortly after the Complaint was submitted in an attempt to disrupt the proceedings.
Respondent is not commonly known by the <monsterenergys.com> domain name.
Complainant has not authorized or licensed Respondent to use Complainant’s MONSTER ENERGY mark for any purpose.
The <monsterenergys.com> domain name resolves to a site that sells counterfeit versions of Complainant’s MONSTER ENERGY-branded merchandise, including clothing and hats. The website’s content did not change despite the change in nominal registrants.
Respondent’s website is designed to look very similar to Complainant’s <monsterenergy.com> and <monsterarmy.com> sites, and features the same general layout and athlete highlights while making prominent use of Complainant’s MONSTER ENERGY mark throughout.
Respondent must have known of Complainant’s rights in the MONSTER ENERGY mark on the date Respondent registered the <monsterenergys.com> domain name.
Respondent is clearly aware of Complainant and its business, as Respondent’s website lists several athletes sponsored by Complainant and refers to Complainant’s MONSTER ARMY athletic sponsorship program.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO and SAIC for its MONSTER ENERGY marks.
Complainant’s trademark rights in MONSTER ENERGY predate Respondent’s registration of at-issue domain name.
At the time the Complaint was filed WHOIS information identified “Domains by Proxy” as Respondent. Shortly thereafter registration transferred to “chai vea”.
Respondent is not authorized to use Complainant’s trademarks.
Respondent’s at-issue domain name addresses a website designed to look very similar to Complainant’s <monsterenergy.com> and <monsterarmy.com> sites. The <monsterenergys.com> website makes prominent use of Complainant’s MONSTER ENERGY mark throughout and offers counterfeit Complainant branded merchandise.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates rights in the MONSTER ENERGY mark pursuant to Policy ¶ 4(a)(i) based on its registration of the mark with numerous trademark authorities, including the USPTO and the SAIC. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <monsterenergys.com> domain name is confusingly similar to Complainant’s MONSTER ENERGY trademark. To form the at-issue domain name Respondent merely adds an “s” to Complainant’s MONSTER ENERGY mark. This change is insufficient to distinguish the domain name from the mark under Policy ¶ 4(a)(i). The domain name also omits the space between the two terms in Complainant’s mark and affixes the generic top-level domain, “.com.” These alterations are likewise insufficient to distinguish the at-issue domain name from Complainant’s trademark under the Policy. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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)).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Current WHOIS information identifies the <monsterenergys.com> domain name’s registrant as “chai vea” and there is no evidence before the Panel which suggests that Respondent is known by the at-issue domain name notwithstanding the contrary indication in the WHOIS record. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s use of the <monsterenergys.com> domain name to sell counterfeit versions Complainant’s MONSTER ENERGY-branded products is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Respondent’s use of a confusingly similar domain name to divert Internet users to Respondent’s own commercial website likewise does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the at-issue domain name under the Policy. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstances are present and there is non-Policy ¶4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent’s use of the <monsterenergys.com> domain name in connection with the sale of counterfeit versions of Complainant’s goods demonstrates bad faith registration and use of the at-issue domain name. Using the domain name in this manner disrupts Complainant’s business pursuant to Policy ¶ 4(b)(iii) because it creates reputational risks to Complainant and is designed to result in a loss of Complainant’s customers. See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Respondent profits, or attempts to profit, by creating a likelihood of confusion between Complainant’s marks and Respondent’s <monsterenergys.com> website. Respondent realizes, or attempts to realize, commercial gain by using the website to support the improper sale of counterfeit merchandise. Respondent is intent on drawing traffic to its site by creating confusion as to the website’s association with Complainant. Respondent’s selection of a confusingly similar domain name and its scheme to confuse the <monsterenergys.com> website with Complainant’s official websites are motivated by the prospect of improper commercial gain. These circumstances demonstrate bad faith registration and use under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Finally, Respondent registered the at-issue domain name about ten years after Complainant had begun using the MONSTER ENERGY mark, and long after Complainant’s mark had become well-known. Respondent was thus clearly aware of Complainant and its business at the time it registered the at-issue domain name. That Respondent’s website lists several athletes sponsored by Complainant and refers to Complainant’s MONSTER ARMY athletic sponsorship program also urges a finding that Respondent had knowledge of Complainant and its trademarks at the time the domain name was registered. Registering a confusingly similar domain name with knowledge of another’s rights therein shows that Respondent registered the <monsterenergys.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <monsterenergys.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 24, 2013
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