Complainant is 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 Sergio Cueva / This Domain Is For Lease of Dana Point, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2013, naming as Respondent Sergio Cueva. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 15, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on April 19, 2013, requesting that the Center amend the Complaint to “to add another Respondent to the Complaint,” namely, This Domain Is For Lease. Complainant also requested that the Disputed Domain Name be transferred to Complainant, instead of cancelled, as requested in the original Complaint.
The Center verified that the Complaint together with the amendment to 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 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2013. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2013.
The Center appointed Douglas M. Isenberg, Michelle Brownlee and Dana Haviland as panelists in this matter on May 29, 2013. 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 states that it has used the trademark GOT MILK? since 1993 to promote the consumption of cow’s milk, that its first television advertisement, in 1993, “was named one of the ten best advertisements of all time in a USATODAY.com poll”; that “[i]n 2005, named GOT MILK? as the most culturally influential tagline since the advent of broadcast television”; and that “[r]ecent campaigns have featured high profile celebrities such as David Beckham, Beyoncé Knowles, and Britney Spears, both in the United States and worldwide.”
Complainant states, and provides evidence to support, that it is the registrant of numerous trademark registrations worldwide for the GOT MILK? trademark, including United States Registration No. 1,903,870 (registered on July 4, 1995) for use in connection with “association services provided to fluid milk producers in the state of California; namely, the advertising and promotion of the sale and use of fluid milk.” These registrations are referred to collectively hereafter as the “GOT MILK? trademark.”
Complainant states, and provides evidence to support, that Respondent is using the Disputed Domain Name in connection with a website that “is currently parked, and the home page contains a number of links to commercial businesses, including products and services relating to the dairy industry which are covered by the Complainant’s trademark registrations and, perhaps more damaging, to dairy alternatives.”
Complainant sent a demand letter to Respondent on December 4, 2012, a copy of which was provided as an annex to the Complaint, to which Complainant states that it did not receive a reply. However, in response to a reminder that Complainant sent to Respondent on March 27, 2013, Respondent allegedly replied, “Go ahead and pay $1500 to file a UDRP. Oh and keep emailing my colleague, it’s only helping my case. Have a great day!” (The Complaint did not include a copy of this message.)
The Disputed Domain Name was created on November 26, 2012. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights. Inclusion of the word “rice” in the Disputed Domain Name in addition to the words “got” and “milk” is “more likely to increase confusion by calling to mind identical services for which the Complainant’s GOT MILK? brand is well-known.” Further, exclusion of the question mark (that is, “?”) from the Disputed Domain Name is “trivial” and “does nothing to avoid confusing similarity.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, Respondent “has not been commonly known by the Domain Name”; “[b]efore any notice to the Respondent of the dispute, the Respondent has not used, or made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services”; the Disputed Domain Name “is currently parked, and the home page contains a number of links to commercial businesses, including products and services relating to the dairy industry which are covered by the Complainant’s trademark registrations and, perhaps more damaging, to dairy alternatives”; and “[t]he presence of sponsored links on the parking page suggest that the Respondent has been using the Domain Name[…] for commercial gain and misleadingly diverting consumers to its and its advertiser’s websites.”
- Respondent registered and is using the Disputed Domain Name in bad faith because, inter alia, it “incorporates a well-known trademark into a domain name with no plausible explanation for having done so, and provides links to products and services relating to the dairy industry”; the Disputed Domain Name “is intended to divert Internet traffic by creating a likelihood of confusion”; and “[t]he reputation of the GOT MILK? [T]rademark is such that Respondent in all likelihood knew or should have known of the existence of Complainant’s trademarks at the time when the [Disputed] [D]omain [N]ame was registered.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the 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. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the GOT MILK? trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the GOT MILK? trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “gotricemilk”), as it is well-established that the Generic Top-Level domain (i.e., “.com”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”, paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
The Panel agrees with Complainant that the addition of the word “rice” to the Disputed Domain Name does nothing to avoid confusing similarity – especially because the word “rice” is also associated with milk. Thus, this addition actually increases the confusing similarity between the Disputed Domain Name and Complainant’s trademark. See, e.g., Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604 (finding the domain name confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”); and Guccio Gucci S.p.A. v. Hainei Zhou,WIPO Case No. D2011-1017 (finding the domain name confusingly similar to the trademark GUCCI). This finding is also consistent with another UDRP decision involving the GOT MILK? trademark, The California Milk Processor Board of San Clemente, California v. Daniel Fabulic,WIPO Case No. D2012-0561, in which the panel found the domain name confusingly similar to the GOT MILK? trademark, because “the word ‘soy’ [is] descriptive of a drink, soy milk, that may be a substitute for the product Complainant promotes under its mark.”
The Panel also agrees with Complainant that the absence of the question mark (that is, “?”) from the Disputed Domain Name is irrelevant, especially because such a character is impermissible in a domain name. This finding is consistent with numerous UDRP decisions under the policy relating to the GOT MILK? trademark. See, e.g., The California Milk Processor Board v. Domains by Proxy Inc / (ERA) Holiday Real Estate, Inc.,WIPO Case No. D2011-1870 (“the elimination of the question mark do[es] not affect the determination of confusing similarity”).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that, inter alia, Respondent “has not been commonly known by the Domain Name” and that “[b]efore any notice to the Respondent of the dispute, the Respondent has not used, or made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services”. In this regard, Complainant has alleged, and submitted evidence to show, that the Disputed Domain Name “is currently parked, and the home page contains a number of links to commercial businesses, including products and services relating to the dairy industry which are covered by the Complainant’s trademark registrations and, perhaps more damaging, to dairy alternatives”; and that “[t]he presence of sponsored links on the parking page suggest that the Respondent has been using the Domain Name[] for commercial gain and misleadingly diverting consumers to its and its advertiser’s websites.”
Under the Policy, “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 WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Here, Complainant has alleged specifically that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy because, inter alia, the links on the parking Web page associated with the Disputed Domain Name are for “products and services relating to the dairy industry,” that is, the industry associated with the GOT MILK? trademark. Repeatedly under the Policy, UDRP panels have found that use of a domain name in connection with a monetized parking page, under the circumstances present here, amounts to bad faith under paragraph 4(b)(iv). See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc.,WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753.
Accordingly, the Panel finds that Complainant has proven the third element 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 the Complainant.
Douglas M. Isenberg
Presiding Panelist
Michelle Brownlee
Panelist
Dana Haviland
Panelist
Date: June 11, 2013
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