Complainant is California Milk Processor Board of San Clemente, California, United States of America (“United States”), represented by Knox, Lemmon, Anapolsky, LLP, United States.
Respondent is Catherine Rudat, Catherine Rudat's Corporate Wellness of Newport Beach, California, United States, represented by Danielle Blanchard, Esq., United States. 2. The Domain Names and Registrar
The disputed domain names , , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2018. On June 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 21, 2018, the Registrar 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2018. The Response was filed with the Center July 16, 2018.
The Center appointed Lawrence K. Nodine, Michelle Brownlee and Perry Viscounty as panelists in this matter on August 22, 2018. 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
In the early 1990s, Complainant created advertising campaigns using the slogan “got milk?” to promote the consumption of cow’s milk. The campaigns, which included television advertisements and featured high-profile celebrities, gained nationwide fame and recognition. The first “got milk?” television advertisement was named one of the ten best advertisements of all time in a poll. In 2005, Tagline Guru named “got milk?” as the most culturally influential tagline in the age of broadcast television. Complainant holds numerous trademark registrations for GOT MILK? in the United States and throughout the world (including, for example, United States Registration Nos. 1,903,870 (registered on July 4, 1995); 2,689,741 (registered on February 25, 2003); and 3,730,703 (registered on December 29, 2009).
Respondent operates a business selling juices and health drinks under the tradename “Got Green Drinks?”. Respondent holds a trademark registration for GOT GREEN DRINKS? GREENS DO A BODY GOOD (United States Registration No. 4,597,335, registered on September 2, 2014) and the domain name , which resolves to a website featuring Respondent’s products. Respondent registered numerous other domain names featuring the “got” concept. For example, Respondent holds the domain names , , , , , , and . Relevant to this dispute are Respondent’s registrations of and on July 18, 2016, and and on May 24, 2016, and January 3, 2017, respectively. Each of these four disputed domain names redirect to the “www.” website featuring Respondent’s products.
Respondent sells a drink called “Got Euphoria,” which contains almond milk. Respondent does not currently sell any products listed as containing “hemp mylk”, “muscle milk”, or “muscle mylk”. In response to a cease and desist communication from Complainant, Respondent offered to sell the disputed domain names to Complainant. 5. Parties’ Contentions A. Complainant
Complainant argues that each disputed domain name is confusingly similar to Complainant’s registered GOT MILK? mark as each incorporates the dominant “got milk” feature of Complainant’s mark or its misspelled variant “got mylk.” According to Complainant, the addition of the generic word “muscle”, “almond”, or “hemp” and the omission of the question mark does not alleviate the confusion created with the GOT MILK? mark. Moreover, Complainant contends that Respondent’s intermeshing of two registered trademarks (namely, MUSCLE MILK and GOT MILK?) in and does not negate the confusing similarity with the GOT MILK? trademark.
Complainant contends that Respondent has no rights or legitimate interests with respect to the disputed domain names because Respondent uses the disputed domain names to redirect users to a commercial website selling juices with terms (such as “Got Euphoria”) derived from the GOT MILK? mark and is seeking to take advantage of Internet users interested in the GOT MILK? brand or licensed products. As to Respondent’s bad faith registration and use, Complainant argues that this is established because Respondent indicated her pre-registration awareness of Complainant’s rights in the GOT MILK? mark in her communications with Complainant and because there is no other plausible explanation for Respondent’s incorporation of Complainant’s mark into the disputed domain name than Respondent’s intent to use the popularity of Complainant’s mark to bring attention and Internet traffic to Respondent’s website. B. Respondent
Respondent argues the deliberate inclusion of the word “almond,” “hemp,” or “muscle” frees each of the disputed domain names from any association (and thus potential confusion) with the GOT MILK? mark, which is focused on cow’s milk. Moreover, according to Respondent, the word “mylk” has come to represent plant-based milks and is used intentionally in the disputed domain names to indicate the non-dairy milk source. This inclusion, Respondent contends, further negates any confusion similarity with Complainant’s mark.
Respondent contends that she has rights or legitimate interest in the disputed domain name because she sells a product (“Got Euphoria”) containing almond milk, which she has marketed as “muscle milk” or “muscle mylk” because of its protein content and health benefits and which is an integral part of her six-drink cleanse program. Respondent also maintains that she is in the process of developing a drink containing “hemp mylk”. As evidence, offers an undated Instagram post, which Respondent represents to be from July 15, 2016, which states: “Working Hard On updating and creating NEW Low Calorie & DELICIOUS, #GotAlmondMylk #GotHempMylk and GotMuscleMylk Recipe!” Respondent also maintains that she makes fair use of the disputed domain names as she uses them to promote organic and vegan products using the “’sex sells’ method” such that her advertising has no resemblance to Complainant’s.
Although Respondent acknowledges that she was aware of Complainant’s rights in the GOT MILK? mark at the time she registered the disputed domain names, she disputes bad faith registration and use, and defends her use by arguing that "she is one of millions who have used the ‘Got ___’ concept in a way that is completely unrelated to Complainant's”. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that each of the four disputed domain names is confusingly similar to the GOT MILK? mark in which Complainant has established its rights, as evidenced by its trademark registrations. The disputed domain name fully incorporates the dominant features of the GOT MILK? mark. The disputed domain names , , and incorporate the GOT MILK? mark but with a “y” in place of the “i” in “milk.” Despite this substitution, the GOT MILK? mark is recognizable in these disputed domain names.
Indeed, several similar domain names have previously been challenged and transferred based on prior complaints by Complainant against a different party. See e.g., California Milk Processor Board v. Scott Amidzich,WIPO Case No. D2010-1896 ( and , cancellation).
Accordingly, Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. The Panel finds that the disputed domain names are not being used in connection with a bona fide offering of goods or services.
Before registering the disputed domain names, Respondent used phrases corresponding to the disputed domain names as hashtags for a few advertising photos posted on social media. Respondent argues that this hashtag use demonstrates that “before any notice to you of the dispute, your 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”. Policy paragraph 4(c)(i). It is not clear that this minimal use as a hashtag suffices to show prior use1 under paragraph 4(c)(i), but, regardless, it is not bona fide use.
Respondent chose hashtags and domain names which are confusingly similar to a well-known trademark. Respondent admits that she was aware of the GOT MILK? mark and does not dispute the fame of this mark. Rather, she argues that many others use the phrase “Got ____” to market their products. But this case is not about “Got ____” usage, which Complainant does not challenge here. Instead, it is about Respondent's registration of “got____milk” domain names that include both the words “got” and “milk” (or the alternate spelling “mylk”).
Because the disputed domain names clearly call to mind Complainant’s famous mark, Respondent’s use of them cannot be considered bona fide under the Policy. Mr. Green Ltd. v. Kemal Marangoz,WIPO Case No. D2015-1833 (intentionally trading off the fame of another cannot constitute good faith use); Softcom Technology Consulting, Inc. v. Olaria Romeo/Orv Fin Group S.L.,WIPO Case No. D2008-0792 (“[C]onclusion that Respondent is infringing Complainant's trademark precludes a finding that Respondent acted in good faith.”); Online Buddies Inc. v. Domain Capital,WIPO Case No. D2018-0541 (“[U]se which intentionally trades on the fame of another cannot constitute a bona fide offering goods and services.”).
The Panel finds that Respondent chose these domain names to elicit an association with (or cause confusion with) Complainant’s GOT MILK? trademark to drive Internet traffic to her website. Such actions preclude finding of a “bona fide offering of goods or services.” The California Milk Procesor Board v. Transure Enterprise Ltd/ A Pty. Ltd,WIPO Case No. D2011-1993 (, transfer).
The Panel finds that Complainant has satisfied its burden under Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
For similar reasons, the Panel finds that Respondent registered and used the disputed domain names in bad faith.
Respondent admits that she was aware of Complainant’s mark when she registered the disputed domain names. The Panel finds that Complainant did so for the purpose of trading off on the attractive power of Complainant’s famous mark. Respondent denies that this was her purpose and responds that her purpose was to substitute the vegan “mylk” for the dairy “milk” and thereby describe her products. Three of the four disputed domain names use “mylk” instead of “milk” purposefully to describe the use of non-dairy milk in her products.
This defense misses the issue again. It is not Respondent’s use of “mylk” alone that causes the problem. It is the combination of “mylk” and “got” that causes confusion. Respondent offers no plausible non-infringing explanation for why she adopted Complainant’s well known combination
Respondent is also using the disputed domain names in bad faith. As Respondent’s prior hashtag use indicates, Respondent’s purpose is to use the “got___milk” format to attract Internet users. That is, in fact, the function of a hashtag – to facilitate search by social media users. The Panel finds that Respondent registered the disputed domain names to attract Internet users. This use was in bad faith because it was meant to unfairly harness the attractive power and fame of Complainant’s mark. Respondent sought commercial benefit from the confusion of Internet users.
This Panel finds that Complainant has established the third element of paragraph 4(a) 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 names, , , , and be transferred to Complainant.
Lawrence K. Nodine
Presiding Panelist
Michelle Brownlee
Panelist
Perry Viscounty
Panelist
Date: September 19, 2018
1 See Eksouzian v. Albanese, No. CV 13–00728, 2015 WL 4720478, at *8 (C.D. Cal. Aug. 7, 2015) (“[H]ashtags are merely descriptive devices, not trademarks . . . . Plaintiffs’ use of the hashtag. . . is merely a functional tool to direct the location of Plaintiffs’ promotion so that it is viewed by a group of consumers, not an actual trademark.”), and The Coca-Cola Co. v. Whois Privacy Protection Service, Inc./Thien Le Trieu, Le Trieu Thien,WIPO Case No. D2015-2078 (quoting the United States Patent & Trademark Office's Trademark Manual of Examining Procedure (TMEP §1202.18)). Although Policy paragraph 4(c)(ii) does not explicitly require that Respondent’s prior use qualify as source identifying trademark use, it is reasonable to question the quantity and character of the prior use. On the instant facts, however, there is no need to decide the issue given that the prior use was manifestly infringing, even if de minimus.
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