Complainant is The California Milk Processor Board of San Clemente, California, United States of America, represented by Sipara, United Kingdom of Great Britain and Northern Ireland.
Respondent is Cyril Ferrao of Leonia, New Jersey, 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 6, 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 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 Respondent of the Complaint, and the proceedings commenced on October 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2011. Respondent did not submit any formal response, however on November 9, 2011, Respondent sent an email to the Center, indicating, among other things, that he received the Complaint and notification of proceedings.
To assist in discussions respecting possible settlement between the parties, Complainant requested suspension of the proceedings on November 18, 2011. The Center notified suspension of the proceedings for a period of one month on November 21, 2011. On December 2, 2011, Complainant requested lifting of the suspension on the basis that negotiations were unsuccessful. The proceedings were reinstated and the Center notified Respondent’s default on December 7, 2011.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on December 20, 2011. 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. 4. Factual Background
Complainant owns numerous registered trademarks for the brand GOT MILK? including in classes 6 through 11, 14, 16, 18, 20 through 22, 24 through 28, and 30 under United States Trademark Registration No. 3730703, registered December 29, 2009. In the European Union, Complainant owns the GOT MILK? mark in classes 6, 9 through 11, 14, 16, 18, 20 through 22, 24 through 28, 30 and 35 under Community Registration No. 8527178, registered June 23, 2010.1
The disputed domain name was registered May 29, 2007, and routes to a parking page displaying advertising and links to commercial websites of third parties.2 5. Parties’ Contentions A. Complainant
Complainant makes the following factual averments:
“Since 1993, the GOT MILK? mark has been used to promote the consumption of cow’s milk. The Complainant’s first GOT MILK? television advertisement (1993) was named one of the ten best advertisements of all time in a USATODAY.com poll. In 2005, named GOT MILK? as the most culturally influential tagline since the advent of broadcast television. Recent campaigns have featured high profile celebrities such as David Beckham, Beyoncé Knowles, and Britney Spears, both in the United States and worldwide. According to , the estimated number of page views of the Complainant’s website exceeds 1.8m annually.”
Complainant’s legal allegations are set forth below.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s trademark since it incorporates the “GOT MILK?” mark in its entirety with the exception of the question mark, adding only the generic term “800,” which it takes to refer to toll-free telephone numbers in the United States of America.
With respect to rights and legitimate interests, Complainant avers that because it received no reply to a cease and desist letter sent to Respondent on September 7, 2011, “Complainant is unaware of, and unable to respond to, any claims by the Respondent to have any rights or legitimate interests in respect of the domain name.” Noting that the disputed domain name routes to a parking page containing links to commercial businesses, Complainant contends that “the 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’” (quoting Owens Corning v. NA, WIPO Case No. D2007-1143).
Addressing bad faith registration and use, Complainant alleges that Respondent has deliberately incorporated Complainant’s well-known trademark into a domain name without any right or plausible explanation. Complainant also alleges that Respondent intends to divert Internet traffic for commercial gain by creating a likelihood of confusion, which constitutes registration and use in bad faith under UDRP paragraph 4(b)(iv).
Complainant also contends that the following circumstances are further indications of bad faith: (1) Respondent’s use of the disputed domain name to generate revenue from click-through referrals, regardless of whether that revenue accrues to the benefit of Respondent or the registrar (citing Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912); and (2) Respondent’s failure to reply to Complainant’s September 7, 2011 cease and desist letter.
On the basis of the foregoing allegations, Complainant seeks transfer of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. In his email sent to the Center on November 9, 2011, however, Respondent contended that Complainant’s claim to trademarks in the phrase “Got Milk,” did not cover Respondent’s use of the term “800 Got Milk.”3 Respondent also wrote in the email that he had held the disputed domain name for many years and planned to use it for a business plan that he allegedly intended to create for a local milk distributor. 6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a).
Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a response, the Panel may accept as true the reasonable factual allegations in the Complaint. See, e.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
Panels disregard the domain name suffix in evaluating identity or confusing similarity. E.g., VAT Holding AG v. VAT.com,WIPO Case No. D2000-0607; Shangri La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
Removing the suffix, the disputed domain name wholly incorporates the GOT MILK trademark with the exception of the question mark, and adds only the generic term “800.” This Panel joins others that have concluded that the omission of the question mark from Complainant’s trademark is a trivial change for purposes of determining confusing similarity under the Policy. See The California Milk Processor Board v. Fernando Howard, WIPO Case No. D2011-1025 (); The California Milk Processor Board v. Mattia Fraulini,WIPO Case No. D2011-1077 ().
The Panel thus concludes that the addition of the “800” term does not negate the confusion created by Respondent’s virtually complete inclusion of Complainant’s mark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov,WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc.,WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629.
The Panel finds, therefore, that the disputed domain name is confusingly similar to Complainant’s marks and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
Respondent’s website is used to display links to third-party websites promoting products and services of others. By diverting traffic to third parties and their products, the Panel finds that Respondent uses Complainant’s marks for its own commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd, WIPO Case No. D2006-1079.
On the record before it, the Panel finds no indication that Respondent has authorization to use the GOT MILK? mark in its domain name and or that Respondent is commonly known by the disputed domain name. Respondent is seeking to attract Internet users through Complainant’s mark for Respondent’s own commercial purposes.
The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784. The Panel also finds there is no bona fide offering of goods or services by Respondent.
Filing no response, Respondent has not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including a lack of conceivable good faith uses for the disputed domain name and a respondent’s failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Both bad faith registration and bad faith use must be established under the third element of paragraph 4(a) of the Policy. E.g., id.
Complainant has provided evidence of the ongoing use of its trademark for a number of years, including in the United States, Respondent’s home country. The Panel finds that Respondent registered the disputed domain names with awareness of Complainant’s mark. The Panel concludes that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark. The Panel rules, therefore, that Respondent registered the domain names in bad faith. See, e.g., Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (disputed domain name “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
As explained below, the Panel also concludes that the circumstances show bad faith use of the disputed domain name by Respondent.
First, the Panel agrees with Complainant that Respondent’s use of the disputed domain name (which is confusingly similar to Complainant’s trademark) to generate revenue from click-through referrals constitutes bad faith use. See e.g., Villeroy & Boch AG v. Mario Pingerna, supra. Second, Respondent’s failure to reply to Complainant’s September 7, 2011 letter and Respondent’s decision to refrain from submitting a Response to the Complaint are further indications of bad faith.4
Finally, the Panel agrees that under the circumstances, there is no conceivable good faith use for the disputed domain name by Respondent.5 See Cellular One Group v. Brien,WIPO Case No. D2000-0028; Telstra Corp., supra. Cf. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra.
The Panel therefore concludes that, under the circumstances, the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Dated: January 2, 2012
1 The United States registration covers the phrase only for lower case usage in a particular letter font, while the Community word mark registration has no such limitation.
2 A copy of the web page is annexed to the Complaint. The Panel has also viewed on the Internet the pages to which the disputed domain name resolves and finds them to be consistent with the annexed copy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.5.
3 Respondent’s email omitted the question mark from Complainant’s registered trademark.
4 The day after the deadline for Response to the Complaint, Respondent did send an email to the Center, as described above. Under the circumstances, the Panel finds that Respondent’s self serving representations in the email are not credible. Respondent’s email did not in any case address the Complaint’s allegations or provide evidence relevant to any determination under the Policy.
5 While one might conceive of fair comment uses for a domain name, in this instance, Respondent received the Complaint and did not indicate in response any plans or intentions to use the site for criticism or political speech.
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