The Complainant is The California Milk Processor Board of San Clemente, California, United States of America, represented by Sipara, United Kingdom.
The Respondent is Center Ring Productions, LLC of Rochester Hills, Michigan, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2011. On October 6, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On October 6, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2011. The Response was filed with the Center on November 7, 2011.
The Center appointed Richard G. Lyon as the sole panelist in this matter on November 17, 2011. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a nonprofit organization, formed in 1993, that is funded by private California dairy processors and administered by a California state agency. Its purpose is to promote the consumption of cow’s milk through marketing, advertising, promotion and public relations. The Complainant is best known for an advertising campaign featuring the phrase “Got Milk?”, which commenced in 1993. This marketing program was and remains enormously popular in the United States of America. It has won many advertising awards, and often features top celebrities and sports stars. The Complainant holds many trademarks for GOT MILK? in the United States of America and around the world.
The Respondent is owned by Mr. John Milke (pronounced MIL-ke), who is listed as the administrative and technical contact for the disputed domain name in the publicly available “whois” data base. Mr. Milke created the disputed domain name on August 2, 2010. Currently the disputed domain name resolves to a registrar-generated page of click-through hyperlinks, some of which refer to milk or milk products.
The Complainant sent the Respondent a cease-and-desist letter on September 14, 2011, but received no reply. 5. Parties’ Contentions A. The Complainant contends as follows:
1. The disputed domain name differs from the Complainant’s famous mark only by omission of the question mark and the addition of the letter ‘e’ at the end. The lack of the question mark may be due to the fact that this symbol is not available in domain names; the additional ‘e’ at the end does not obviate confusion.
2. The Complainant has not authorized the Respondent to use its trademark. While use of a domain name for a parking page is not by itself illegitimate, “use of a domain name which is nearly identical to the Complainant’s brand does not provide a legitimate interest in that domain name under the Policy, as it is highly likely to have been registered “in the hope and expectation” of attracting traffic from “Internet users searching for information about the business activities of the trademark owner” (Owens Corning v. NA,WIPO Case No. D2007-1143).”
3. The Respondent’s bad faith in registration and use of the disputed domain name is demonstrated by the following: the use of the Complainant’s famous mark bears no relationship to the site; “[the disputed domain name] incorporates a well-known trademark into a domain name with no plausible explanation for having done so; ” the Complainant’s GOT MILK? Mark and advertising campaign are distinctive and well-known in the United States of America and the Respondent, who resides in the United States of America, may be presumed to be aware of them; and the Respondent failed to reply to the Complainant’s cease-and-desist letter. That the click-through hyperlinks may have been placed by the registrar rather than the Respondent does not “alter the impact on the Complainant from the standpoint of prospective customers.” B. The Respondent contends as follows:
Underpinning each of the Respondent’s contentions is the fact that its principal’s surname is Milke.
1. This accounts for inclusion of that surname in the disputed domain name. The Respondent had no intention to misuse or tarnish the Complainant’s mark; “it is the Respondent’s surname and nothing more.”
2. The Respondent is commonly known by his surname, Milke. All use of the disputed domain name has been non-commercial. It has never been used to sell anything, but only for email within the Respondent’s family.
3. The facts stated above demonstrate no bad faith in the registration or use of the disputed domain name. 6. Discussion and Findings A. Rights or Legitimate Interest. Paragraph 4(c) of the Policy provides in pertinent part:
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
Here, the Respondent is a corporation owned by Mr. John Milke, who in his certified Response states that he selected the disputed domain name because the operative portion is his surname. It is difficult to conceive of a better means of establishing that one is “commonly known” by a word than by showing that the word is his family name. Mr. Milke has been commonly known by that word all his life.
In the circumstances of this case adding the word got, as a mere prefix, to his surname does not, in the Panel’s assessment, take the Respondent outside the safe harbor of paragraph 4(c)(ii). Had the Respondent used the disputed domain actively to compete with the Complainant, there might be an argument that there needed to be proof that Mr. Milke had been commonly known by the entire phrase. The Complainant’s mark is extremely well known in the United States, and this is one of the rare cases in which the renown of the mark and the location of the parties might justify an inference that the Respondent chose the disputed domain name to profit from the coincidence of the similarity between his surname and the dominant feature of the mark. That is not this case, however. The record indicates that Mr. Milke chose the disputed domain name for personal use for an email within his family. The Respondent made no commercial use of the disputed domain name; its only use was registrar-generated hyperlinks, and those not directly competitive with the Complainant or its members. Paragraph 4(c)(ii) has no qualifier, and in these circumstances the Panel will not infer one. In a Policy proceeding the Complainant must establish that the Respondent lacks rights or legitimate interests in the disputed domain name, not that the Complainant’s rights are “superior” or of longer standing. Telephone and Data Systems, Inc. v. Protected Domain Services – Customer ID: NCR-813584 / Daniel Wang,WIPO Case No. D2011-0435; Credit Europe Bank N.V. v. Peter Yu,WIPO Case No. D2010-0737 (concurring opinion). Without direct proof of intentional and active cybersquatting – certainly not present in this case – the Respondent’s use of his surname as the dominant feature of a non-commercial website keeps him within paragraph 4(a)(ii)’s safe harbor.
As the requirements of paragraph 4(a) of the Policy are conjunctive, the Complainant’s failure to carry its evidentiary burden on paragraph 4(a)(ii) results in a denial of the Complaint. The Panel does note that the Complainant has offered no proof that the Respondent selected the disputed domain name to target the Complainant, ordinarily a requirement of showing registration in bad faith. B. Reverse Domain Name Hijacking
As the Complainant argues, paragraph 4(a)(ii) requires proof of a negative. Again as the Complainant has argued, a consensus has evolved as to how this is done:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [see also paragraph 4.6 below in relation to respondent default]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1).
A complainant almost always makes his prima facie case by showing that he has never authorized the respondent’s use of his marks and that the respondent has never been commonly known by the disputed domain name. This latter statement addresses the express provisions of paragraph 4(c)(ii) of the Policy.
Here the Complainant makes the first but not the second standard recital, and in its discussion of paragraph 4(a)(ii) does not even address the consequences of Mr. Milke’s surname. That is not because it was unaware of that fact; when discussing bad faith the Complaint states: “An individual at the Respondent has the surname ‘Milke’ but that has no obvious connection or justification for registering ‘gotmilke’ as the string of the domain other than to benefit from a connection with the Complainant.” This statement in the Panel’s view is an obvious non sequiter; choosing a domain name with one’s surname is an obvious alternative. Compare The Institute of Electrical and Electronics Engineers, Incorporated v. IARAS / Administration IARAS,WIPO Case No. DAM2010-0001, in which this Panel found it just as probable that the respondent selected the disputed domain name because it matched exactly the respondent’s initials than to take advantage of the complainant’s mark, a mark far more distinctive than the one at issue in the present case. It also ignores the fact that the Respondent’s actual use in no way took advantage of the Complainant’s mark.
After more than a decade of precedent in UDRP proceedings, this Panel believes that “any complainant, and even more so any professional representative of a complainant, should be at least minimally versed in the Policy, the Rules, their scope, and their limits. It is no excuse that a party or its representative is unfamiliar with clear Policy precedent, much less the clear language of the Policy and the Rules themselves.” Credit Europe Bank N.V. v. Peter Yu, supra, (concurring opinion). So he finds it troubling that the Complainant, represented by counsel, so casually elides an express Policy provision, paragraph 4(c)(ii). In the Panel’s opinion this Complaint would not pass muster under Rule 11 of the United States Federal Rules of Civil Procedure, which treats counsel’s signature on a pleading as his certification, “formed after an inquiry reasonable in the circumstances “that the claims, defenses, and other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law . . .” Similarly it is inconsistent with the Complainant’s (or its representative’s) certification, required by paragraph 3(b)(xiv) of the Rules, that “that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate, . . .”
Because there is some basis (albeit slight) that including the Complainant’s entire “gotmilk” mark into the disputed domain name was unjustified and might remove paragraph 4(c)(ii)’s protection, the Panel will not find reverse domain name hijacking in this case. He does find that the Complaint “was brought primarily to harass the domain-name holder,” Rules, paragraph 15(e), and accordingly admonishes the Complainant’s counsel that in future cases he should do his homework before filing. 7. Decision
For all the foregoing reasons, noting also the above finding and admonition, the Complaint is denied.
Richard G. Lyon
Sole Panelist
Dated: December 1, 2011
Full & Egal Universal Law Academy