Monster Energy Company v. JL Beverage Company / Johnny Love Vodka
Claim Number: FA1505001619081
Complainant is Monster Energy Company (“Complainant”), represented by Lynda Zadra-Symes of Knobbe Martens Olsen & Bear LLP, California, USA. Respondent is JL Beverage Company / Johnny Love Vodka (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <monsterenergy.net> and <monsterenergydrink.net>, registered with GoDaddy.com, LLC.
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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 12, 2015; the Forum received payment on May 12, 2015.
On May 13, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <monsterenergy.net> and <monsterenergydrink.net> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 2015 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@monsterenergy.net, postmaster@monsterenergydrink.net. Also on May 20, 2015, 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.
A timely Response was received and determined to be complete on June 9, 2015.
On June 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mark McCormick as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the MONSTER ENERGY mark through its pervasive registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,044,315, registered January 17, 2006), establishing its rights in the mark under the Policy. Respondent’s <monsterenergy.net> and <monsterenergydrink.net> domain names are confusingly similar to the mark as the names merely add the “.net” generic top-level domain (“gTLD”) as a suffix, eliminate spacing between words, and the <monsterenergydrink.net> domain name merely incorporates the term “drink” which is descriptive of Complainant’s business.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names. Further, pursuant to Complainant’s Annex P, the resolving pages of the disputed domain names do not advertise any goods or services and therefore do not constitute a bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent has demonstrated a pattern of bad faith domain name registrations, as per Complainant’s Attached Annex Q. Next, Respondent’s inactive holding of the <monsterenergy.net> and <monsterenergydrink.net> domain names, along with its actual and/or constructive knowledge of the MONSTER ENERGY mark evidences bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent’s argument turns on the agreement located at Respondent’s Attached Annex B. Pursuant to this exhibit, Complainant and Respondent entered into a “Domain Name Assignment Agreement” whereas Complainant had ten (10) full calendar days to complete the transfer. According to Respondent, it furnished the access codes and unlocked the domains per the agreement, and at that point the responsibility lay with Complainant to complete the transfer, which it failed to do, resulting in breach of the agreement and therefore a waiver of its rights in the disputed domain names. Thus, Respondent maintains that it has satisfied each prong of the Policy.
Complainant owns the MONSTER ENERGY mark through registration with the USPTO as early as January 27, 2006. Respondent is not commonly known by the disputed domain names which entirely incorporate Complainant’s mark. Respondent had actual knowledge of Complainant’s prior use of its mark at the time of its registration of the disputed domain names. Respondent has not used the disputed domain names in connection with an active website. The record shows in Complainant’s attached Annex Q that Respondent has registered other domain names which appear to infringe on the rights of the companies that own the rights to marks included in the registered marks, including the Red Bull company that markets an energy drink.
The parties entered a “Domain Name Assignment Agreement,” dated October 28, 1984, in which Respondent agreed to assign the disputed domain names to Complainant in exchange for a release of claims by Complainant. The agreement was not implemented because during the ten-day period for transfer of the domain names Respondent did not reply to a request by Complainant’s domain name administrator requesting its confirmation of the transfer. Respondent instead contends Complainant “breached” the agreement and waived its rights in the domain names by failing to complete the transfer within the ten-day period.
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.
Complainant owns the MONSTER ENERGY mark through multiple registrations with the USPTO. Complainant has thus established its rights in the mark under Policy ¶4(a)(i). See U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003). No doubt exists that the disputed domain names are confusingly similar to Complainant’s mark because the names merely add the “.net” gTLD suffix, eliminate spaces between words and add the descriptive word “drink” in the domain name < <monsterenergydrink.net>. Those alterations have no material effect on the confusing similarity of the disputed domain names to Complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001).
Complainant has established the confusing similarity of the domain names within the meaning of Policy ¶ 4(a)(i).
Because Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, the burden shifts to Respondent to show it does have rights or legitimate interests in Complainant’s mark. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Respondent has not met its burden. Respondent has a business called “JL Beverage Company” which is listed as registrant of the domain names and is not commonly known by the disputed domain names. In fact, Respondent has not used them for any active purpose. The failure to make active use of the domain names is not a bona fide offering of goods or services and is not a legitimate noncommercial or fair use of the domain names. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004). The record contains no evidence that Respondent has any rights or legitimate interests in the domain names within the standard in Policy ¶4(a)(ii).
Respondent’s multiple registrations of infringing domain names supports a finding of bad faith in its registration and use of the disputed domain names in this case. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003). Respondent’s inactive holding of the domain names for a number of years also supports a holding that its registration and use has been in bad faith. See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006).
The panel finds that Respondent registered and used the domain names in bad faith within the meaning of Policy ¶4(a)(iii).
Reverse Domain Name Highjacking
Respondent alleges Complainant waived its rights to transfer of the domain names by breaching the parties’ assignment agreement. According to Respondent, Complainant through the present action is seeking to wrest the domain names from Respondent after having given up its rights to their transfer. The panel finds, however, that the parties’ assignment agreement was never implemented and finds nothing in the record to show any act by Complainant that can fairly be characterized as a voluntary and intentional relinquishment of its rights. In fact, the record shows persistent and repeated unsuccessful efforts by Complainant to obtain Respondent’s cooperation with the implementation of the assignment agreement. Instead, the record shows Complainant has not engaged in reverse domain name highjacking and has in these actions satisfied all of the required elements of Policy ¶ 4. Respondent has therefore not established his claim of reverse domain highjacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001).
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <monsterenergy.net> and <monsterenergydrink.net> domain names be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: June 29, 2015
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