Complainant is California Milk Processor Board, an instrumentality of the State of California of San Clemente, California, United States of America (“United States”), represented by Knox, Lemmon, Anapolsky, LLP, United States.
Respondent is Martha Vaughn II, MV Professional Services of Houston, Texas, United States, self-represented.
The disputed domain name <gotsomemilk.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2017. On June 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 2017, 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 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2017. The Response was filed with the Center on July 6, 2017.
The Center appointed Sandra A. Sellers, Michelle Brownlee and Lynda M. Braun as panelists in this matter on July 20, 2017. 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.
Complainant is the owner of numerous service marks and trademark registrations and applications throughout the world for GOT MILK? Complainant began using the GOT MILK? mark in 1993 in iconic television commercials, and in 2005 it was named one of the most culturally influential taglines since the advent of television. Numerous WIPO UDRP panels have held that Complainant has rights in the GOT MILK? mark, and some have held that the GOT MILK? mark is well known. Among Complainant’s trademark registrations is United States Registration No. 1,903,870, registered on July 4, 1996, for GOT MILK?, both for 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. Complainant also owns <gotmilk.com>.
Respondent registered the disputed domain name on September 30, 2015. The website associated with the disputed domain name re-directed to “www.secureserver.net”, which advertises various domain names and webhosting services. On May 15, 2017, Complainant sent a cease-and-desist letter to Respondent, demanding that Respondent disable the disputed domain name so that it no longer re-directed to “www.secureserver.net”, or transfer it to Complainant. Respondent did not respond. On May 22, 2017, Respondent’s website no longer re-directed to “www.secureserver.net”; it now is a pay-per-click site with dairy-related ads, including “Got Milk,” “Got Milk AD Campaign”, and “Got Milk Commercial.” Furthermore, the top of the website home page says “Buy this domain,” and re-directs to “www.mydomaincontact.com”, which has a form with the following text: “If you want to buy this domain [for <gotsomemilk.com>], please fill out this form.” Respondent filed a Response to this Complainant on July 6, 2017.
Complainant asserts that it has rights in the GOT MILK? trademark. It contends that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s GOT MILK? mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is the insertion of the common word “some.” Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith.
Respondent alleges that the words “got” and “milk” are commonly used, and that Respondent is exercising her freedom of speech and basic human rights by using these words as part of her domain name. She further argues that she has not made any money on the pay-per-click links, and that she has done everything in good faith. She also says that Complainant dropped its ads using its GOT MILK? mark in 2014, so she has the right to use these words since Complainant has abandoned its mark. Finally, Respondent says that Complainant should have registered the disputed domain name earlier if it really wanted it, and Complainant could buy the disputed domain name from Respondent for “a price that makes me forget how mean they are to me.”
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
To satisfy paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
As set forth above, Complainant owns various worldwide trademark registrations for the GOT MILK? mark.
The disputed domain name is confusingly similar to Complainant’s GOT MILK? mark. It contains Complainant’s GOT MILK? mark in its entirety. The only difference between Complainant’s mark and the disputed domain name is the addition of the common word “some.” Numerous previous WIPO UDRP decisions have held that the addition of a common word does not distinguish a disputed domain name from Complainant’s mark or preclude a finding of confusing similarity. See, e.g., Walmart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; California Milk Processor Board v Sergio Cueva / This Domain Is For Lease, WIPO Case No. D2013-0693.
Accordingly, the Panel finds that Complainant has rights in the GOT MILK? mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy.
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion. Once a prima facie case has been made, it is Respondent’s burden to show that it has rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 2.1.
Complainant has exclusive rights in the GOT MILK? mark and has not authorized Respondent to register and use the disputed domain name <gotsomemilk.com>. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the GOT MILK? mark or <gotsomemilk.com>. Respondent is not commonly known under the mark. Respondent has made no showing that it has any legitimate interest in using the disputed domain name for a bona fide offering of goods or services under the mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent alleges that she has a legitimate interest because she has “been working very hard to help the homeless and less fortunate by branding my marketing company and creating well over 6 thousand domain names…” This does not demonstrate that Respondent has rights or legitimate interests with respect to use of this domain name, within the meaning of paragraph 4(a) of the Policy.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy states that:
“for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
It is difficult to conceive that Respondent did not know of Complainant’s mark when Respondent registered the disputed domain name. As set forth above, Complainant owns the GOT MILK? mark protected by United States trademark registrations. Since 1993, Complainant has used the GOT MILK? mark in its very successful ad campaign, which was named one of the ten best advertisements of all time in a USA Today poll. Additionally, in 2005 Tagline Guru named “got milk?” as the most culturally influential tagline since the advent of television. All of this occurred before Respondent registered <gotsomemilk.com> on September 30, 2015. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.
Respondent contends that she is not using the GOT MILK? mark in the disputed domain name in bad faith for several reasons.
Respondent alleges that she is merely exercising her freedom of speech and basic human rights to use common words that everyone uses to ask for milk. However, Complainant’s GOT MILK? mark is famous and has garnered enormous goodwill worldwide. Moreover, though most previous WIPO UDRP cases discuss freedom of speech within the context of social or political commentary or criticism; the Panel in Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A Systems Solution and Alberto Rodriguez, WIPO Case No. D2002-0823 found that “it does not appear that one can be at full liberty to use someone else’s trade name or trademark by simply claiming the right to exercise a right to freedom of expression.” The same can be said in this case.
Respondent additionally alleges that Complainant’s GOT MILK? mark was abandoned in 2014 (before the disputed domain name was registered in 2015), citing articles that indicate Complainant began to use a new advertising campaign. However, the article cited by Respondent indicates that the GOT MILK? slogan will still be used, so it has not been abandoned.
Furthermore, Respondent has offered to sell the disputed domain name to Complainant, in violation of paragraph 4(b)(i) of the Policy. Respondent states “I feel that if they indeed want my domain names that they should negotiate a price with me… I would happily negotiate a price for some of them or all of them if it is a price that makes me forget how mean they are to me.” Though a specific price was not mentioned, it suggests a price well above the cost of registering the disputed domain name.
The Panel finds that paragraph 4(b)(ii) of the Policy also has been violated. Respondent has registered multiple domain names containing the GOT MILK? mark, reflecting a pattern of bad faith. Respondent owns: <gotpeachmilk.com>, <gotcerealmilks.net>, <gotcerealmilk.net>, <gotcerealmilk.com>, <gotcerealmilks.com>, <gotsomemilk.net>, <gotpeachmilk.com>, <gotcerealmilks.net>, <gotcerealmilk.net>, <gotsomemilk.net>. Respondent also has registered multiple domain names containing other famous marks of third parties, such as COSTCO.
Respondent’s website contains links to various ads, including ones for “Got Milk AD Campaign,” “Got Milk Commercial,” and “Got Milk.” Respondent argues that she has not used the disputed domain name for commercial gain because she has not made any money from the pay-per-click ads on her website, and specifically told the Registrar that she was “not interested in parking to make money and [has] never been paid any.” However, a respondent is responsible for all content on its website, even if the pay-per-click links were automatically generated by a third party such as a registrar. Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912. The respondent does not have to profit directly; it is sufficient if a third party profited from the linked ads. SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497. See WIPO Overview 3.0, Section 3.5. Thus, the Panel finds that Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to her website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of her web site or location or of a product or service on her web site or location, in violation of paragraph 4(b)(iv) of the Policy.
Finally, Complainant sent Respondent a cease and desist letter on May 15, 2017. Respondent therefore was made aware of Complainant’s rights in the GOT MILK? mark and Complainant’s demand that it transfer the disputed domain name to Complainant. Respondent’s failure to respond to a cease-and-desist letter has been considered relevant in finding of bad faith. See News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
This Panel finds that Respondent violated paragraph 4(b) of the Policy, and that Complainant has established the third element of paragraph 4(a) of the Policy.
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, <gotsomemilk.com>, be transferred to Complainant.
Sandra A. Sellers
Presiding Panelist
Michelle Brownlee
Panelist
Lynda M. Braun
Panelist
Date: August 3, 2017