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 (“United Kingdom”).
Respondent is Jade Dominguez of Los Angeles, California, United States. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2012. On April 25, 2012, the Center transmitted by email to N LLC a request for registrar verification in connection with the Domain Name. On April 25, 2012, N 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 May 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2012. Three email communications were received by the Center from Respondent on May 2, 2012.
The Center appointed Michael A. Albert, David H. Bernstein and John R. Keys, Jr. as panelists in this matter on June 12, 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 marketing board comprised of eleven fluid milk processors in the State of California whose goal is to promote consumption of cow milk through marketing, advertising, promotion, and public relations. Complainant is the owner of numerous registered trademarks in the GOT MILK? mark in the United States and several other countries. The GOT MILK? mark has been used extensively in media and advertising campaigns since 1993.
Respondent is the registrant of the Domain Name. According to the publicly available WhoIs database, the Domain Name was registered on March 1, 2012 with N LLC.
At the time of the first inquiry by Complainant, the WhoIs records of N LLC indicated that the Domain Name was subject to a proxy registration by Protected Domain Services (“PDS”), a company that provides privacy protection services to domain name registrants. On March 15, 2012, Complainant contacted PDS in an effort to obtain Respondent’s contact information and to inform PDS of the dispute. PDS provided Respondent with a 72-hour period in which to take steps to resolve the dispute. After Respondent failed to take any actions, PDS disabled its WhoIs privacy protection service on March 19, 2012.
Complainant sent two letters to Respondent, one on March 16, 2012 through PDS and one on March 19, 2012 directly, informing Respondent of the domain name dispute. The letters requested that Respondent provide information by April 2, 2012 to demonstrate Respondent’s rights or legitimate interests in the Domain Name by indicating whether any of the factors set out in paragraph 4(c) of the Policy applied. Respondent made no reply to the letters. Complainant filed the Complaint with the Center on April 24, 2012.
Three email communications received by the Center from Respondent on May 2, 2012 were taken to constitute the complete Response. The first email contained only the following comment: “You guys are the bane of society.” The second and third emails each contained only the following hyperlink: “.” 5. Parties’ Contentions A. Complainant
Complainant contends that it is the proprietor of numerous registered trademarks for the GOT MILK? mark in the United States and several other countries, and provides copies of a selection of these trademark registrations. Complainant asserts that its GOT MILK? mark is highly influential and has enjoyed great success since its debut in 1993. In support of this assertion, Complainant points to several achievements attained by its GOT MILK? mark, such as a USATODAY.com poll naming Complainant’s first GOT MILK? television advertisement as one of the ten best advertisements of all time and the mark being named the most culturally influential tagline since the advent of broadcast television by T.
With respect to paragraph 4(a)(i) of the Policy, Complainant contends that the Domain Name is confusingly similar to Complainant’s GOT MILK? mark. Complainant argues that the addition of a descriptive or generic word like “tea” to a distinctive mark and the removal of the “?” do not diminish the confusing similarity with Complainant’s mark. Complainant claims that it has established its rights in the GOT MILK? mark through the registration of its several trademarks both in the United States and other countries, as well as its extensive usage of the mark in media and advertising.
With respect to paragraph 4(a)(ii) of the Policy, Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant argues that Respondent is neither using the Domain Name to make a bona fide offering of goods or services, nor is it making a legitimate noncommercial or fair use of the Domain Name. Complainant asserts that the parking page at the Domain Name contains a number of sponsored links to commercial businesses, and therefore that Respondent uses the Domain Name for commercial gain and is misleadingly diverting consumers to Respondent and its advertisers’ websites. Additionally, Complainant argues that Respondent has not been commonly known by the Domain Name.
Finally, with respect to paragraph 4(a)(iii) of the Policy, Complainant contends that Respondent registered and is using the Domain Name in bad faith. Complainant asserts that the GOT MILK? mark is distinctive and well known in the United States, and that Respondent, being based in California according to its listed contact information, knew or should have known of the existence of Complainant’s mark at the time when the Domain Name was registered. Complainant argues that incorporation of a well-known trademark into a domain name without a plausible reason for doing so indicates bad faith. Furthermore, Complainant contends that Respondent’s failure to present an explanation for its registration or to provide evidence of rights or legitimate interests allows for an inference that the Domain Name was registered and is being used in bad faith. Complainant also contends that Respondent has attracted viewers for commercial gain by creating a likelihood of confusion with Complainant’s mark, which constitutes registration and use in bad faith. B. Respondent
Respondent makes no contentions in the Response concerning any element of Complainant’s case. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “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 requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the Domain Name registered by Respondent 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Complainant has the burden to prove each of these elements by a preponderance of the evidence. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847. A. Identical or Confusingly Similar
As an initial matter, the Panel finds that Complainant has established its rights in the GOT MILK? mark under paragraph 4(a)(i) of the Policy through its several trademark registrations. See T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066 (“[R]egistration of a mark is prima facie evidence of validity [. . .] Respondent has the burden of refuting this assumption”).
The Domain Name includes Complainant’s entire mark, while adding the generic term “tea” and removing the “?”. The addition of a generic term and the removal of the question mark do not reduce the confusing similarity between the Domain Name and the distinctive and well-known GOT MILK? Mark. The California Milk Processor Board v. Mattia Fraulini,WIPO Case No. D2011-1077; The California Milk Processor Board v. Asa Development,WIPO Case No. D2011-0914; The California Milk Processor Board v. A Pty Ltd / Trellian Pty Ltd. / Shu Lin and Shu Lin Enterprises Limited,WIPO Case No. D2011-0149. The Domain Name also adds the generic top-level domain (“gTLD”) “.com.” The addition of the gTLD “.com” need not be considered in the determination of confusing similarity. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561.
The Panel finds that the Domain Name is confusingly similar to Complainant’s GOT MILK? mark under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant bears the initial burden to make a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Paragraph 4(c) of the Policy allows Respondent to demonstrate rights or legitimate interests in the Domain Name by showing one of the following circumstances:
(i) before any notice to Respondent of the dispute, Respondent’s 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, or
(ii) Respondent has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant can make out its prima facie case by negating all of these circumstances. See Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364. Complainant here has made a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. There is no evidence that Respondent is using the Domain Name in connection with a bona fide offering of goods or services, that Respondent has ever been commonly known by the Domain Name, or that Respondent is making a legitimate noncommercial or fair use of the Domain Name. Rather, Respondent uses the Domain Name for a parking page with sponsored links (also known as pay-per-click links) to other websites. Although such a use may be permissible in some contexts (such as if the sponsored links all related to the generic meaning of the domain name, see, e.g., National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424), it is not a legitimate use where, as here, a respondent chooses a domain name that exploits the value of the complainant’s mark and is not being used for links that are directly related to the non-trademark meaning of the words in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.6 (“WIPO Overview 2.0”). By providing no contentions or evidence in the Response to counter these allegations, Respondent has failed to demonstrate any of the factors under paragraph 4(c) of the Policy.
For the foregoing reasons, the Panel finds that Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, registration and use of a domain name in bad faith may be demonstrated by showing:
(i) circumstances indicating that Respondent registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name, or
(ii) Respondent registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent engaged in a pattern of such conduct; or
(iii) Respondent registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, Respondent intentionally attempted to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
The Panel finds that the GOT MILK? mark is so ubiquitous and pervasive in media and advertising in the United States that Respondent undoubtedly knew of its existence when incorporating the entire mark into the Domain Name. Knowledge of a famous mark at the time of registration of a domain name, without a credible explanation of the intended good faith use of that domain name, suggests bad faith. See Wal-Mart Stores, Inc. v. Jeff Milchen, WIPO Case No. D2005-0130. Respondent has provided no plausible explanation for the use of Complainant’s mark in the Domain Name and has provided no evidence to establish any rights or legitimate interests in the Domain Name. Registration of a domain name containing a famous mark inextricably connected to Complainant without proving any rights or legitimate interests in the domain name suggests bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
Respondent’s website contains sponsored links, and it is likely that Respondent incorporated Complainant’s mark to attract users for commercial gain. Attracting Internet users to a website for commercial gain by creating a likelihood of confusion with a complainant’s mark is evidence of registration and use of a domain name in bad faith per paragraph 4(b)(iv) of the Policy.
The Panel finds that Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name, , be transferred to Complainant.
Michael A. Albert
Presiding Panelist
David H. Bernstein
Panelist
John R. Keys, Jr.
Panelist
Dated: June 26, 2012
Full & Egal Universal Law Academy