Monster Energy Company, a Delaware Corporation v. huang taohai
Claim Number: FA1202001430315
Complainant is Monster Energy Company, a Delaware Corporation (“Complainant”), represented by Lynda Zadra Symes of Knobbe Martens Olson & Bear LLP, California, USA. Respondent is huang taohai (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <monsterenergylogo.com>, registered with eNom, Inc.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 17, 2012; the National Arbitration Forum received payment on February 17, 2012.
On February 21, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <monsterenergylogo.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 February 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 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@monsterenergylogo.com. Also on February 28, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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 March 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 made the following submissions:
1. Complainant is in the business of designing, creating, developing, marketing and selling beverages and clothing in the United States and internationally.
2. Complainant owns trademark registrations for its MONSTER ENERGY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,044,315 registered January 17, 2006) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 5,447,960 registered May 28, 2009) ( collectively “the MONSTER ENERGY mark”).
3. Complainant uses the MONSTER ENERGY mark in connection with beverages, nutritional supplements, clothing and accessories.
4. Respondent’s disputed domain name is confusingly similar to Complainant’s MONSTER ENERGY mark.
5. Respondent has no rights or legitimate interests in the disputed domain name and in particular has not used the disputed domain name with a bona fide offering of goods or services and is not commonly known by the disputed domain name.
6. The Respondent has registered and used the disputed domain name in bad faith. In particular, the disputed domain name resolves to a website that disrupts Complainant’s business and attracts consumers for commercial gain.
7. Respondent has actual and constructive knowledge of Complainant’s MONSTER ENERGY mark.
8. Respondent has engaged in a pattern of registering domain names incorporating Complainant’s trademarks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complaint is a company registered in Delaware, USA and engaging in the business of designing, creating, developing, marketing and selling of beverages and clothing and accessories in the United States and internationally. It has been in this business since prior to the year 2002 and has marketed its products under the MONSTER ENERGY trademarks since at least that year.
2. It is very successful, selling more than 1.5 million cans of drink per year and deriving more than $3 billion per year in sales.
3. Complainant owns trademark registrations for its MONSTER ENERGY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,044,315 registered January 17, 2006) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 5,447,960 registered May 28, 2009) ( collectively “the MONSTER ENERGY mark”).
4. Complainant is the registrant of several domain names including <monsterenergy.com> which it uses for a website in the conduct of its business.
5. Respondent is domiciled in China where Complainant has a registered trademark for MONSTER ENERGY particularized above.
6. Respondent registered the disputed domain name on July 2, 2011 and has linked it to a website which is similar in colour and appearance to Complainant’s official website at <monsterenergy.com> and which offers for sale counterfeit versions of Complainant’s merchandise including clothing and caps, without permission or authority from Complainant.
7. Respondent was involved in a previous UDRP proceeding, Hanson Beverage Co. v. huang shouhai, FA 1408871 (Nat. Arb. Forum Nov. 7, 2011) ,Hanson Beverage Co being the previous name of Complainant and huang shouhai being an alternative name of Respondent, where huang shouhai registered the domain name <shopmonsterenergy.com> and was ordered to transfer it to Complainant for breach of the UDRP.
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.
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."
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 provides the Panel with evidence of its USPTO trademark registrations for its MONSTER ENERGY mark (e.g., Reg. No. 3,044,315 registered January 17, 2006) and provides the Panel with evidence of its SAIC trademark registrations for its MONSTER ENERGY mark (e.g., Reg. No. 5,447,960 registered May 28, 2009) in China, where Respondent is domiciled. The Panel finds that Complainant’s USPTO and SAIC trademark registrations are evidence that Complainant holds rights in its MONSTER ENERGY mark for the purposes of Policy ¶ 4(a) (i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”); see also 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 then contends that Respondent’s <monsterenergylogo.com> domain name is confusingly similar to Complainant’s MONSTER ENERGY mark. The Panel notes that the disputed domain name incorporates Complainant’s entire mark, adds the generic term “logo” and contains the generic top-level domain (“gTLD”) “.com.” The Panel agrees with Complainant in that submission and finds that Respondent’s <monsterenergylogo.com> domain name is confusingly similar to Complainant’s MONSTER ENERGY mark under Policy ¶ 4(a)(i). This is particularly so, as it is well established that the addition of a word such as “logo”, which is a reference to an essential element of the marketing activities of most companies in identifying their presence to consumers, does not distinguish a domain name from a trademark but creates a confusing similarity between the two. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Napster, Inc. v. Mededovic, D2005-1263 (WIPO Jan. 17, 2006) (finding confusing similarity where “[t]he disputed domain name comprises the highly distinctive NAPSTER trademark itself, combined with the suffix “togo.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Accordingly, Complainant has established the first of the three elements that it must prove.
It is now well established that 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.”).
Applying that principle, the Panel finds that Complainant has made out such a prima facie case. The prima facie case is based on the following considerations:
(a) Respondent has chosen as its domain name Complainant’s MONSTER ENERGY mark and has embodied the whole of the mark in the domain name, adding only the generic word “ logo” and the generic Top Level Domain “.com”;
(b) Respondent has then linked the domain name to a website carrying Complainant’s name and trademark in several places, with the same colours and presentation as Complainant’s official website and promoting and selling counterfeit goods such as clothing and hats of the same sort as that legitimately offered by Complainant , thus giving the false impression to internet users that the disputed domain name is an official domain name of Complainant and that it has led to an official website of Complainant selling Complainant’s goods.
(c) the use of Complainant’s MONSTER ENERGY mark in the manner just described has clearly been undertaken without the knowledge or approval of Complainant.
(d) Complainant also claims that Respondent is not commonly known by the <monsterenergylogo.com> domain name pursuant to Policy ¶ 4(c) (ii). In that regard Complainant relies on the evidence of the WHOIS information on the disputed domain name. The Panel notes that the WHOIS information identifies “Huang Taohai” as the registrant of the <monsterenergylogo.com> domain name. The Panel also notes that the original WHOIS information identified “Huang Shouhai” as the registrant of the disputed domain name. Complainant then contends that Respondent is not affiliated, connected or associated with Complainant and Complainant did not authorize Respondent’s use of Complainant’s MONSTER ENERGY mark. The Panel further notes that Respondent did not respond to this case and did not contradict any of the evidence in the record. Consequently, the Panel determines that Respondent is not commonly known by the <monsterenergylogo.com> domain name pursuant to Policy ¶ 4(c) (ii) and that this negates one of the other grounds on which it is sometimes contended that a registrant has a right or legitimate interest in the domain name at issue. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).
(e) Complainant also argues that Respondent’s <monsterenergylogo.com> domain name resolves to a website that offers counterfeits of Complainant’s products without authorization and that Respondent commercially benefits from the sale of these products by capitalizing on the goodwill associated with Complainant’s MONSTER ENERGY mark. Past panels have found that the sale of goods and services similar to those offered by Complainant is evidence that Respondent is not making a bona fide offering of goods or services or a noncommercial or fair use of the disputed domain name. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”). After examining Complainant’s screen shots, the Panel finds that Respondent’s use of the disputed domain name to sell counterfeit products is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <monsterenergylogo.com> domain name.
All of those matters go to make up the prima facie case. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against him, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has also been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant relies on Policy ¶ 4(b) (ii) and submits that Respondent has registered and used the disputed domain name in bad faith as he has registered the domain name to prevent Complainant from reflecting its MONSTER ENERGY mark in a corresponding domain name and that Respondent has engaged in a pattern of such conduct. To establish that, Complainant further argues that Respondent changed the registrant information for the disputed domain name from “Huang Shouhai” to “Huang Taohai.” Complainant argues that the two are the same entity as the same e-mail address is used to contact both entities. The conclusion Complainant draws is that “Huang Shouhai” was a respondent in a previous case with Complainant in which the UDRP panel ordered that the domain name at issue be transferred to Complainant and that this shows the bad faith proclivity of Respondent in registering and using the trademarks of other parties. See Hanson Beverage Co. v. huang shouhai, FA 1408871 (Nat. Arb. Forum Nov. 7, 2011). The Panel determines that Respondent and “Huang Shouhai” are the same entity and the Panel finds that Respondent’s current and prior attempts to register disputed domain names containing Complainant’s mark are evidence that Respondent registered and uses the <monsterenergylogo.com> domain name as a part of a pattern of bad faith registration and use under Policy ¶ 4(b) (ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004) (“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)]. The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”).The Panel agrees with these submissions of Complainant and finds that the ground of registration and use of the disputed domain name in bad faith within the meaning of Policy ¶ 4(b) (ii) has thus been made out.
Secondly, Complainant argues that Respondent registered and is using the <monsterenergylogo.com> domain name for the purpose of disrupting Complainant’s business within the meaning of Policy ¶ 4(b)(iii) by diverting potential customers searching for Complainant’s MONSTER ENERGY products and websites to Respondent’s website and the counterfeit good offered for sale on that site. The website carries Complainant’s name and trademark in several places and carries the same colours and presentation as Complainant’s official website. The Panel notes that the counterfeit versions of Complainant’s products inevitably compete with Complainant’s actual products and hence diminish the sale of Complainant’s genuine products. The Panel finds that the sale of counterfeit products disrupts Complainant’s business and it therefore also finds that Respondent registered and uses the <monsterenergylogo.com> domain name in bad faith pursuant to Policy ¶ 4(b) (iii). See Skechers U.S.A., Inc. and Skechers U.S.A, Inc. II v. Zheng, FA 1388961 (Nat. Arb. Forum July 1, 2011) (finding that the respondent’s disputed domain name disrupted the complainant’s business and was evidence of bad faith registration and use where Internet users looking for the complainant’s website may instead find respondent’s website and purchase counterfeit goods on the disputed domain name); see also 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).”).
Thirdly, Complainant also argues that Respondent registered and uses the <monsterenergylogo.com> domain name for commercial gain by selling counterfeit products to Internet uses which creates a likelihood of confusion with Complainant’s MONSTER ENERGY mark. Complainant relies in this regard on the fact that Respondent’s website is very similar to Complainant’s official website because of the unauthorized use of Complainant’s registered marks and the offering for sale of products similar to its genuine products, which, in conjunction with the confusingly similar domain name, would lead consumers to believe that the website is operated by Complainant and that it is offering for sale genuine Monster Energy products. Past panels have found that creating a likelihood of confusion and profiting from that confusion is a violation of Policy ¶ 4(b) (iv). Those past decisions are applicable to the present case and, indeed, show that the present case is a case for the practical application of Policy ¶ 4(b) (iv) See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding the respondent registered and uses the disputed domain name in bad faith by selling counterfeit products and capitalizing on the likelihood on confusion); see also CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (finding bad faith registration and use of the domain name under Policy ¶ 4(b)(iv) 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). As the Panel determines that Respondent is attempting to create and profit from, Internet user confusion, the Panel concludes that Respondent registered and uses the <monsterenergylogo.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Fourthly, Complainant also asserts that its trademark registrations for the MONSTER ENERGY mark existed well before the registration of the disputed domain name. This fact, together with the fact that Complainant’s name and mark are well known in the community internationally and the subject of extensive marketing and advertising, enables the Panel to infer that when Respondent registered the disputed domain name, he probably knew of the MONSTER ENERGY mark and in effect copied it when he registered the domain name. As the Panel determines that Respondent had actual knowledge of the mark, it concludes that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a) (iii) as he registered the domain name with the intention of disrupting Complainant’s business. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arab. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); 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”).
Finally, having regard to the whole of the evidence, the Panel concludes that Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression. That is so because the MONSTER ENERGY trademark is so well-known, Respondent has used it without any authority in such a flagrant abuse of Complainant’s trademark rights involving the illegal acts of selling counterfeit goods and as there can be no legitimate reason why Respondent would have registered the disputed domain name and used it in the manner he has.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <monsterenergylogo.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: March 30, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page