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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CytoSport Inc. v. Personal

Case No. D2008-0976

1. The Parties

The Complainant is CytoSport Inc., Benicia, California, United States of America, represented by Thorpe North & Western, United States of America.

The Respondent is Personal, Bethel, Vermont, United States of America, represented by Jacques Leduc, United States of America.

2. The Domain Name and Registrar

The disputed Domain Name <monsterfood.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2008. On June 30, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 30, 2008, the Registrar transmitted by email to the Center its verification response, correcting the name shown for the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 3, 2008 providing also an amended Complaint in electronic format, as requested by the Center. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2008. The Response was filed with the Center on July 22, 2008.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 30, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Complainant subsequently submitted a Reply on July 30, 2008, and the Respondent submitted a Response to Complainant’s Reply on July 31, 2008.

4. Factual Background

The Complainant is a California corporation that manufactures and markets nutritional supplements. According to the Complaint, these include a powdered whey product branded MONSTER FOOD that is designed to be mixed with beverages. The Complaint states that this mark has been used continuously since “at least as early as 1999” and that MONSTER FOOD products have been “sold extensively” throughout the United States of America and Europe. The Complaint includes no evidence to support these statements, however. The Complainant’s website at “www.cytosport.com” lists several products labeled MONSTER MILK, but the Panel could find no mention on the website of a product labeled MONSTER FOOD.

According to records submitted with the Complaint or found on the online database of the United States Patent and Trademark Office, a design mark featuring a man with exaggerated muscles and the words “MONSTER FOOD” in stylized letters was registered on November 23, 2004 to TKE, Inc. of Corinth, Mississippi (United States Trademark Registration No. 2904119). The registration shows that TKE, Inc. claimed first use in commerce on June 1, 1999, in association with a “whey protein blend in a powdered drink mix form for use as a nutritional supplement”. TKE, Inc. recently assigned this trademark to the Complainant on May 14, 2008; the assignment was recorded on May 19, 2008. Even more recently, on July 17, 2008, the Complainant applied for registration of MONSTER FOOD as a standard character mark associated with dietary and nutritional supplements (United States trademark registration application serial no. 77524695); that application is pending.

The Registrar’s WHOIS database names the registrant as “Personal”, with a mailing address in Bethel, Vermont identical to that given for the administrative and technical contact, Jacques Leduc. Mr. Leduc submitted the Response to the Complaint, giving his name and coordinates for the Respondent’s contact information and authorized representative. There is no indication that the registrant “Personal” is a natural person or legal entity, and Mr. Leduc will be considered the Respondent for purposes of this proceeding.

The Respondent registered the Domain Name on October 15, 2005. According to the Response, this was in connection with the Respondent’s purchase at auction of an “online restaurant ordering website”. Attached to the Response is a notification dated October 9, 2005 showing that Mr. Leduc had acquired through an eBay online auction a restaurant ordering website including AdSense (the pay-per-click advertising search engine service of Google, Inc.) and web hosting, for the sum of US $71. The Response attaches subsequent email correspondence between the Respondent and the seller concerning the transfer of control over this website, which was associated with the Domain Name.

A printout from the Internet Archive Wayback Machine (“www.archive.org”) is also attached to the Response, showing that the website associated with the Domain Name on May 27, 2006 allowed Internet users to search for, and link to, restaurants that accepted online orders for meals. The website features a drawing of a smiling alien or monster holding red peppers. The Internet Archive shows that by June 13, 2007, however, the Domain Name resolved to a free parking website “courtesy of GoDaddy.com” (the Registrar).

The Domain Name currently resolves to a free parking website with pay-per-click advertising links provided by Sedo. The “sponsored listings” include links to advertisers of nutritional and weight-loss products, diets, and organic foods, some of which may compete with the Complainant’s products. The website includes a search feature based on Sedo’s Internet advertising network, as well as an announcement that the Domain Name “may be for sale by its owner”, linking to Sedo’s domain name marketplace website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is identical to its MONSTER FOOD mark and that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant argues that the use of the Domain Name for a parking website that includes advertising for the Complainant’s products and competitors is illegitimate and reflects bad faith. The Complainant cites the Policy, paragraph 4(b)(iv), inferring that the Respondent registered and used the Domain Name in a bad-faith attempt to mislead Internet users and capitalize on a presumed association with the Complainant’s mark.

B. Respondent

The Respondent, who is not represented by counsel, observes that the Complainant only recently acquired the MONSTER FOOD trademark and that the Domain Name differs from the mark in omitting the space between the two words. The Respondent points to the original use of the Domain Name for a restaurant ordering website and states that he has invested time and money in new software code so that he can use the Domain Name for an improved restaurant ordering website later this year. He argues that the examples cited in the Complaint of advertising links to the Complainant and its competitors result from deliberately entering search terms on the parking website, not from a deliberate attempt on the part of the Respondent to display such advertising links.

The Respondent denies that he has profited from the free parking of the Domain Name while he prepares the new restaurant ordering website, and he denies any intent to capitalize on the MONSTER FOOD mark. He and the Complainant, he argues, are in “two completely separate businesses”.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Supplemental Filings

The Complainant submitted a Reply to the Response on July 30, 2008, and the Respondent submitted a Response to Complainant’s Reply on July 31, 2008.

The Complainant reacts to the history of the Domain Name recounted by the Respondent by arguing that (a) the party from whom the Respondent acquired the Domain Name was attempting to “generate value from Complainant’s trademark” by auctioning it on eBay, and (b) the Respondent’s use of the Domain Name infringes on the Complainant’s trademark rights and cannot, therefore, be legitimate. The Respondent counters that the background of the Domain Name is not new information and once again denies bad faith in acquiring and using the Domain Name.

The Policy is designed to provide an expeditious and economical administrative remedy in appropriate domain name disputes. There is no provision for discovery or hearings as in judicial proceedings and formal arbitration. Consequently, the time periods allowed for pleading and decision are short, and neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the Panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition”. Therefore, UDRP Panels are typically reluctant to countenance delay through additional rounds of pleading and typically accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to new arguments.

The Panel has reviewed the parties’ very brief supplemental filings (less than two pages each) and accepts them as part of the record to the extent that they concern the factual history concerning the Respondent’s acquisition and use of the Domain Name.

B. Identical or Confusingly Similar

The Complainant currently owns the registered MONSTER FOOD trademark. The omission of a space between the words in the Domain Name is not distinctive, because the DNS (domain name system) does not permit spaces in URLs. Thus, the Panel concludes that the Domain Name is at least confusingly similar to the Complainant’s mark, satisfying the first element of the Complaint.

C. Rights or Legitimate Interests

The Respondent does not claim a relationship with the Complainant or dispute the Complainant’s assertion that it has not authorized the Respondent to use its MONSTER FOOD mark.

The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name, and the Respondent relies on the first of these:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”.

The Respondent asserts that its intention was to use the Domain Name to operate a restaurant ordering website, which is what he purchased on eBay. There is evidence in the record that he did so for some time in 2006. The Complainant argues that this cannot be considered a legitimate use, because it would be infringing. This conclusion is hardly self-evident; the Complainant’s trademark was for a nutritional supplement, while the Respondent was offering access to restaurant menus and online ordering facilities.

The Respondent has not provided further evidence of “demonstrable preparations” to support his stated plans of re-launching a restaurant ordering website in 2008. In light of the Panel’s conclusions concerning the third element of the Complaint, however, it is not necessary to determine whether the Respondent’s assertions, combined with his earlier use of the Domain Name for a restaurant website, demonstrate a legitimate interest in the Domain Name.

D. Registered and Used in Bad Faith

The Complainant argues that the Respondent’s (and his predecessor’s) intent was to mislead Internet users for commercial gain, citing the Policy, paragraph 4(b)(iv), which gives the following as an instance of bad faith:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Here is the Complainant’s reasoning:

“Due to the extensive sales of MONSTER FOOD across the United States and Britain, it is apparent that Respondent knew of the MONSTER FOOD mark and intentionally registered the mark in the hopes of monetizing its market value. No other conclusion may be reached other than that Respondent intentionally attempted to attract Internet users to its website for financial gain.”

The Respondent denies that this was his intent. The Domain Name, after all, consists of the common English words “monster” and “food”, which could conceivably be used in many ways relevant to the generic meaning of those words – including association with a multi-state restaurant ordering website such as the Respondent operated in 2006 and claims to be rebuilding.

The Complainant’s design mark uses these two common words in connection with a distinctive “monster” drawing. The Complainant has not established in these proceedings that the words alone are highly distinctive and associated with the Complainant’s products, and it has only applied for registration of a standard character mark within the past month. The Complainant has not, in fact, furnished evidence that it labels any product with the registered design mark or the words MONSTER FOOD. Further, it has not furnished evidence of the allegedly “extensive sales” under that mark by TKE, Inc., from which the Complainant acquired the mark three months ago.

In the Panel’s view, bad faith registration cannot be presumed on the available record here, for the following reasons:

- the Respondent furnishes evidence of historical use relevant to a generic meaning of the Domain Name and supporting his statement of intent;

- the Complainant’s trademark is a design mark incorporating common words;

- there is no evidence of the fame of the mark or the extent of sales and advertising using the mark, by either the Complainant or its predecessor in interest; and

- there is no other compelling evidence supporting the Complainant’s inference that the Respondent most likely was aware of the mark and sought to exploit it illegitimately.

The fact that the Complainant has a registered design mark in the country in which the Respondent resides is not, alone, sufficient to establish the likelihood that the Respondent was aware of the mark and registered the Domain Name to take advantage of it. To infer bad faith, the evidence must support the probability that the Respondent had the mark in contemplation. See, e.g., The Carphone Warehouse Limited and The Phone House B.V. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2008-0483:

“For the Complainants to succeed on this part of the Complaint, they must persuade the Panel that, in registering the remaining Domain Names, the Respondent was targeting the Complainants and their marks, or at least had the Complainants or their marks in mind and intended to derive commercial or other benefits, not from the attractiveness of the remaining Domain Names as close approximations of common descriptive expressions, but from their value as close approximations of the Complainants’ trade marks.”

The Panel finds insufficient evidence of such targeting in the current proceeding. The Panel concludes, therefore, that here the third element of the Complaint has not been established.

7. Decision

For all the foregoing reasons, the Complaint is denied.

W. Scott Blackmer
Sole Panelist

Dated: August 18, 2008