Complainant is The California Milk Processor Board of San Clemente, California, United States of America (“United States”) represented by Sipara, United Kingdom of Great Britain and Northern Ireland.
Respondent is Daniel Fabulic of Louisville, Kentucky, United States. 2. The Domain Name and Registrar
The domain name at issue, , is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2012. On March 20, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On March 22, 2012, GoD, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient in light of Complainant’s designation of a three member panel and failure to provide the names and contact details of three candidates as required by the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), paragraph 3(b)(iv), Complainant filed an amended Complaint on March 26, 2012.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2012. The Center received an email communication from Respondent on March 28, 2012, in which Respondent claimed not to be the registrant of the domain name at issue.
The Center appointed M. Scott Donahey, Sally M. Abel and Sandra J. Franklin as panelists in this matter on May 4, 2012. The Panel finds that it was properly constituted. Each member of 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 is a group of eleven California milk processors, whose purpose is to promote the consumption of milk. Complainant has registered the trademark GOT MILK? in numerous classes in the United States, the European Union, and numerous other countries around the world, the registrations dating to February 1999. Complaint, Annex 3 Complainant has extensively promoted its mark in media advertising campaigns, and the mark has been recognized as influential and effective by various media. Complaint, Annex 4.
Upon discovering that the domain name at issue, originally registered on January 13, 2012, accordingly to the publicly available WhoIs database, had been registered through the use of Domains By Proxy, a privacy service, Complainant contacted Domains By Proxy in an attempt to identify the actual registrant of the domain name at issue. Domains By Proxy responded by saying that it needed to contact the registrant and ask the registrant to contact Complainant directly and furnish to Domains By Proxy proof that the registrant had attempted to contact Complainant. When the registrant failed to supply proof of attempted contact to Domains By Proxy, Domains By Proxy identified the registrant to Complainant and furnished Complainant with the registrant’s contact information. Complainant used this information to formulate its Complaint in this matter. Complaint, Annex 1.
Respondent has used the domain name at issue to resolve to a parking page that contains links to companies offering dairy products and products which compete with cow’s milk for the consumer dollar. Complaint, Annex 5.
Counsel for Complainant sent a cease and desist letter dated February 6, 2012, to Respondent by United States Mail and by email, to which counsel received no response. Complaint, Annex 6. After the Center transmitted its Notification of Complaint and Commencement of the Proceedings to Respondent, the Center received the following email from Respondent: “To whom it might concern, Please be advised that the Domain Name in question does not belong to me. Sincerely, Daniel.” 5. Parties’ Contentions A. Complainant
Complainant alleges that the domain name at issue is confusingly similar to Complainant’s GOT MILK? trademark. Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name at issue, in that Respondent could not bring himself within any of the examples set forth in paragraph 4(c) of the Policy, and that counsel for Complainant requested in its cease and desist letter that Respondent inform counsel of any rights or legitimate interests Respondent claimed to have in the domain name at issue. Counsel received no response to this request. Finally, Complainant alleges that Respondent has registered and is using the domain name at issue in bad faith. B. Respondent
Respondent did not file a formal response to the Complaint. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the domain name at issue, consisting of Complainant’s distinctive trademark and the word “soy,” descriptive of a drink, soy milk, that may be a substitute for the product Complainant promotes under its mark, is confusingly similar to Complainant’s GOT MILK? trademark. EAuto, L.L.C. v. Triple S. Auto Parts d/b/a/ Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047 (). B. Rights or Legitimate Interests
The consensus view of UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of a domain name at issue is as follows:
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 an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of 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.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name at issue and Respondent not only has failed to assert any such rights, but also has denied being the registrant. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue. C. Registered and Used in Bad Faith
In the present case, Respondent has used the domain name at issue, including Complainant’s trademark, to resolve to a parking site that has links to drinks that may be substitutes for or directly competitive with the drink promoted by Complainant. Moreover, Respondent chose not to respond to the cease and desist letter and the communication from the privacy service, and did not respond to the Complaint in this matter other than to deny, without explanation as to why his name is listed as registrant of the domain name at issue in the WhoIs and in the records of the Privacy Service retained by the registrar, that he is the registrant. The above facts establish bad faith registration and use in that Respondent is attempting to attract for commercial gain, Internet users to a web site, by creating a likelihood of confusion with Complainant’s mark as to the source sponsorship, affiliation or endorsement of the web site or the products or services offered there under paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that Respondent has registered and is using the domain name at issue in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name at issue, , be transferred to Complainant.
M. Scott Donahey
Presiding Panelist
Sally M. Abel
Panelist
Sandra J. Franklin
Panelist
Dated: May 14, 2012
Full & Egal Universal Law Academy