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 Eli Tobias of Orlando, Florida, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2012. On March 29, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the Domain Name. On the same date, GoD, LLC 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 April 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 24, 2012.
The Center appointed Christopher S. Gibson, Richard W. Page and Angela Fox as panelists in this matter on May 22, 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 comprised of 11 fluid milk processors located in California. Established in 1993, Complainant's purpose is to promote milk consumption through advertising, marketing, promotion and public relations.
Complainant is the owner of numerous registrations in the United States, the European Union and numerous other countries for the GOT MILK? trademark.
The Domain Name was registered on February 22, 2012. 5. Parties’ Contentions A. Complainant
Since 1993, Complainant has used the GOT MILK? trademark extensively in media and advertising campaigns to promote the consumption of cow’s milk. Complainant's first television advertisement was named one of the 10 best advertisements of all time by a “USAT” poll. Recent campaigns feature celebrities such as David Beckham and Britney Spears both in the United States and internationally. In 2005, “” named GOT MILK? as the most culturally influential tagline since the advent of television. According to “”, the estimated number of page views for Complainant’s “” website in 2011 exceeded 1.8 million annually.
Confusing similarity: Complainant asserts that the Domain Name is confusingly similar to Complainant’s GOT MILK? trademark, taking account of the omission of the question mark and use of the word “district”, a non-distinctive and descriptive word, in the Domain Name. Complainant has cited previous UDRP cases in which the addition of a descriptive or generic word to a distinctive trademark was not sufficient to dispel confusing similarity between the domain name and the trademark in question. Moreover, the lack of the “?” at the end of a disputed domain name has been found by previous panels to be trivial, and does nothing to avoid confusing similarity. 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.
Rights or legitimate interests: Complainant states that to the best of its knowledge and belief, Respondent has no rights or legitimate interests in the Domain Name. In particular, Complainant indicates that insofar as it is aware, Respondent (i) is not commonly known by the Domain Name; (ii) is not making legitimate noncommercial or fair use of the Domain Name; and (iii) has not used, or made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The Domain Name is currently parked with “GoD” and the home page contains a number of links to commercial businesses, including “Maximuscle Maxi Milk”, a muscle building product which Complainant alleges is competitive to products covered by Complainant’s trademark registrations. Complainant acknowledges that there is nothing per se illegitimate in using a domain parking service. However, this particular use of the Domain Name, which is confusingly similar to Complainant’s brand, does not provide a legitimate interest in the Domain Name under the Policy.
Complainant explains that under the Policy, Complainant is required to make out a prima facie case and then the burden shifts to Respondent to come forward with appropriate information or evidence demonstrating rights or legitimate interests in the Domain Name. In a letter dated March 1, 2012 to Respondent, Complainant invited Respondent to inform Complainant of whether it had any rights or legitimate interests in the Domain Name and further warned that failure to respond would be taken as Respondent’s acceptance that he had no rights or legitimate interests in the Domain Name. Respondent sent an email to Complainant on the same date, which stated:
“Milk District is the name of an area of town in my city, and in no way does gotmilkdistrict confuse consumers and/or infringe on the trademark gotmilk, which is an advertising campaign for a food product.”
In a reply dated March 2, 2012, Complainant’s representative pointed out that there was no support for Respondent’s assertion that the Domain Name was unlikely to cause confusion; that the explanation for the Domain Name calls to mind the dairy industry and milk products, which are covered by Complainant’s trademark registrations; and that Respondent has given no explanation for adding the word “got” to “milk district”, nor has Respondent made any claim that Orlando’s Milk District is commonly known as the “Got Milk District”. Respondent did not reply to Complainant’s letter of March 2, 2012.
In view of these points, Complainant submits that it has made a prima facie case that Respondent has no rights or legitimate interests in the Domain Name, and the burden, having shifted, has not been met by Respondent. No explanation has been provided for why Respondent selected the Domain Name.
Registered and being used in bad faith: Complainant asserts that the Domain Name was registered and is being used in bad faith. Complainant’s GOT MILK? trademark is distinctive and well-known in the United States, where Respondent is located. The Domain Name incorporates this well-known mark with no plausible explanation for having done so, which itself may be an indication of bad faith. The Domain Name links to products and services relating to the dairy industry. Further, Complainant contends that the Domain Name is intended to divert Internet traffic by creating a likelihood of confusion, and Respondent has thereby attracted viewers for commercial gain. The inclusion of links to dairy-based products and services contributes to this likelihood of confusion, and it is reasonable to assume that the Domain Name generates revenue through click-through referrals. Whether this revenue accrues to the domain name registrant or to the registrar is immaterial. Finally, the fact that Respondent may or may not be providing its parking page through passive acceptance of a designation by GoD does not alter the impact on Complainant from the standpoint of diversion of prospective customers. Moreover, even if Respondent has no way of knowing what advertisements would appear in automatically generated parking pages, he nevertheless failed to take steps to exclude "milk" as a search term, knowing of Complainant and its mark at the time when he registered the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These are that:
(1) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(3) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in the GOT MILK? trademark, just as previous UDRP panels have found that Complainant has established rights in this mark and that it is distinctive and well-known in the United States. See The California Milk Processor Board v. Edwin Caballero, WIPO Case No. D2011-0951 (, ); The California Milk Processor Board v. Mattia Fraulini, supra (); The California Milk Processor Board v. Asa Development, WIPO Case No. D2011-0914 (). Moreover, the Panel finds that the Domain Name is confusingly similar to Complainant’s trademark, incorporating Complainant’s mark entirely except for the question mark (“?”), while adding the descriptive word “district”.
Because the Domain Name is identical or confusingly similar to the GOT MILK? trademark of Complainant, the Panel considers that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. Complainant has alleged that Respondent is not commonly known by the Domain Name, nor made legitimate noncommercial or fair use of it. The Panel observes that Respondent is not affiliated or related to Complainant in anyway, nor from the available record is Respondent generally known by the Domain Name or authorized by Complainant to use Complainant’s trademarks. Moreover, the evidence shows that the Domain Name is linked to a GoD parking webpage containing a number of links to commercial businesses. While, as Complainant has acknowledged, a domain parking service is not per se illegitimate, in this case this use of the Domain Name, which is confusingly similar to Complainant’s well-known brand, does not provide a legitimate interest in it under the Policy.
The Respondent has not made any effort in the proceedings to demonstrate rights or legitimate interests. Further, the Panel does not find that Respondent’s reference to the "Milk District" in pre-complaint correspondence assists Respondent, given that the Domain Name is and not . In the absence of any other plausible explanation, the addition of "got" appears to deliberately invoke Complainant's trademark for purposes of attracting visitors by trading off of Complainant’s goodwill in its mark.
For all these reasons, the Panel finds that Respondent has no rights or legitimate interests with respect to the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Finally, the Panel finds that Complainant has established bad faith registration and use under paragraph 4(b)(iv) of the Policy, based on several factors:
- the incorporation of Complaint’s well-known GOT MILK? trademark into the Domain Name without any plausible explanation for doing so, causing confusing similarity. In this regard, the Panel finds the analysis in The California Milk Processor Board v. Mattia Fraulini, supra to be applicable in this case as well. There, the panel found that the respondent's registration of the domain name using "the combination 'got milk' appears as more likely than not to be related to the various commercials and other advertising used by Complainant in its activity over the years, as a simple search on Google and YouTube suggests [...]. On the balance, the Panel is inclined to accept that Respondent has chosen to register and use the Domain Name being aware of Complainant's brand and of its value, and in attempt to benefit from it [...]."
- the inherent likelihood that the Domain Name will draw visitors to the linked website containing pay-per-click advertising links; and
- the fact that the Domain Name appears to be in use to generate click-through revenue through the provision of third-party commercial links, at least one of which has been shown to relate to a competing milk-type product.
All of this is evidence of Respondent’s bad faith registration and use of the Domain Name under paragraph 4(a)(iii) of the Policy for which, due to the lack of any Response from Respondent, there is no attempt at any rebuttal. 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 be transferred to Complainant.
Christopher S. Gibson
Presiding Panelist
Richard W. Page
Panelist
Angela Fox
Panelist
Dated: June 8, 2012
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