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 David Schmidt of Bay City, Michigan, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2011. On October 13, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name. On October 13, 2011, GoD, Inc. 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, approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”) (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 October 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 16, 2011.
The Center appointed Lynda M. Braun as the sole panelist in this matter on November 28, 2011. The Panel finds that it was properly constituted. 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 in this administrative proceeding is The California Milk Processor Board, which is comprised of 11 fluid milk processors in the State of California, United States. Formed in 1993, its purpose is to promote the consumption of milk through marketing, advertising, promotion and public relations.
Complainant is the owner of the following registered trademarks:
GOT MILK? registered on December 29, 2009, in the United States for goods and services in international classes 6, 9, 10, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, and 30, with registration number 3730703;
GOT MILK? an International trademark designating several African countries, registered on April 12, 2010 for goods and services in international classes 6, 9, 10, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 30 and 35, with registration number 1037545; and
GOT MILK? registered on June 23, 2010, in the European Union for goods and services in international classes 6, 9, 10, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 30 and 35, with registration number 008527178.
The Disputed Domain Name was registered by Respondent on March 20, 2011, for a five year term. Complainant sent Respondent a cease and desist letter dated September 13, 2011. Respondent did not respond to the letter. A. Complainant
Complainant submits that since 1993, the GOT MILK? trademark has been used to promote the consumption of cow's milk. Complainant’s first GOT MILK? television advertisement, in 1993, was named one of the ten best advertisements of all time in a “” poll. In 2005, “” named GOT MILK? as the most culturally influential tagline since the advent of broadcast television. Recent campaigns have featured high profile celebrities such as David Beckham, Beyoncé Knowles, and Britney Spears, in the United States and worldwide. According to “”, the estimated number of page views of Complainant's “” website exceeds 1.8 million annually.
According to Complainant, the Disputed Domain Name is confusingly similar to Complainant’s trademark for the purposes of paragraph 4(a)(i) of the UDRP. In fact, Complainant states that the Disputed Domain Name is identical to the Complainant’s GOT MILK? trademark, which it reproduces in its entirety, with no addition other than the cctld “.me”, which may be disregarded in the determination of confusing similarity under the UDRP.
According to Complainant, Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Complainant argues that because Respondent did not respond to Complainant’s cease and desist letter, Complainant is unable to respond to any claims that Respondent may have regarding rights or legitimate interests in respect of the Disputed Domain Name. Complainant further argues that the use of a domain name that is identical to Complainant’s trademark does not provide a legitimate interest in the domain name, as it is highly likely to have been registered to attract traffic from Internet users searching for information about the trademark owner.
Finally, Complainant avers that the Disputed Domain Name was registered and is being used in bad faith. Complainant states that by incorporating a well-known trademark into a domain name with no plausible explanation for having done so, Respondent registered and used the Disputed Domain Name in bad faith. In addition, Complainant submits that the Disputed Domain Name is intended to divert Internet traffic to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark, another indication of bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), a complainant must prove each of the following to justify the transfer of the Disputed Domain Name:
(i) That the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) That Respondent has registered and is using the Disputed Domain Name in bad faith.
These elements are discussed as follows. A. Identical or Confusingly Similar
There is no dispute that Complainant has rights in a registered mark for GOT MILK?. The Disputed Domain Name only differs from that trademark by the lack of “?” at the end. The Panel finds that the lack of the “?” at the end of the Disputed Domain Name is trivial and does nothing to avoid confusing similarity. Indeed, a similar difference in a previous UDRP case involving Complainant’s trademark was found not to avoid confusing similarity: The California Milk Processor Board v. Mattia Fraulini,WIPO Case No. D2011-1077.
The Disputed Domain Name entirely incorporates Complainant’s trademark. A substantial number of previous UDRP panels have found that a domain name which wholly incorporates a complainant's registered trademark may be sufficient for a finding of confusing similarity under the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. 2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. 2000-0047; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615.
For these reasons, the Panel finds that Complainant has established its case under the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this case, Complainant has made out a prima facie case to which Respondent has made no reply. There is little else in the case file or on the Respondent’s website that would suggest rights or legitimate interests in the Disputed Domain Name.
In addition, the Disputed Domain Name is currently a parking page. Although there is nothing per se illegitimate in using a domain parking service, the use of a domain name that is identical to complainant’s trademark does not provide a legitimate interest in the domain name, as it is highly likely to have been registered to attract provide a legitimate traffic from Internet users searching for information about the trademark owner. See Owens Corning v. NA, WIPO Case No. D2007-1143. This is precisely the situation presented here.
Accordingly, the Panel finds that Complainant has established its case under the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finds that based on the record, Complainant has demonstrated the existence of Respondent's bad faith pursuant to paragraph 4(b)(iv) of the Policy.
First, the Panel infers Respondent's bad faith from its lack of reply to the cease and desist letter sent by Complainant prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications. WIPO Case No. D2001-0210.
Second, Respondent’s registration of the Disputed Domain Name years after Complainant began to use and widely promote its distinctive trademark is evidence that the Disputed Domain Name was registered in bad faith. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks). Given Complainant’s numerous trademark registrations for, and its wide reputation in, the trademark GOT MILK?, it is extremely difficult to conceive of a plausible situation in which Respondent would have been unaware of this fact at the time of registration. Thus, the Panel finds that Respondent registered the Disputed Domain Name in bad faith.
Third, the Panel finds that Respondent’s bad faith registration and use of the Disputed Domain Name is further evidenced by the fact that Respondent has attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s GOT MILK? trademark. The Panel finds that Respondent could only have registered the Disputed Domain Name, which is so confusingly similar to Complainant’s Mark, to capitalize on the valuable goodwill associated with Complainant’s trademark. See Hilton Group plc v. Forum LLC,WIPO Case No. D2005-0244 (use of domain name to attract users for commercial gain is evidence of bad faith). The website to which the Disputed Domain Name resolves has been set up to provide links to commercial products, including milk-related products, on a pay-per-click basis. It is reasonable to assume that the Disputed Domain Name generates revenue from the click-through referrals. Whether this revenue accrues directly to Respondent or to the registrar, or to both, is immaterial. Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912. Indeed, this conduct additionally confirms that Respondent has registered and used the Disputed Domain Name in bad faith.
Therefore, the Panel finds that Complainant has established its case under the third element of the Policy. 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 Disputed Domain Name, , be transferred to Complainant.
Lynda M. Braun
Sole Panelist
Dated: December 12, 2011
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