World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

California Milk Processor Board v. Scott Amidzich

Case No. D2010-1896

1. The Parties

The Complainant is California Milk Processor Board of San Clemente, California, United States of America, represented by Rouse Legal, of the United Kingdom of Great Britain and Northern Island.

The Respondent is Scott Amidzich of San Francisco, California, United States of America.

2. The Domain Names and Registrars

The disputed domain names <gotalmondmilk.com>; <gothempmilk.com>; <gothempmilk.info>; <gothempmilk.net>; <gothempmilk.org>; <gothempseedmilk.com>; and <gotnutmilk.com> (collectively the “Disputed Domain Names”) are all registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2010. On November 8, 2010, the Center transmitted by email to the Registrar 1&1 Internet AG a request for registrar verification in connection with the Disputed Domain Names. On November 11, 2010, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact for the Disputed Domain Names.

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 the Respondent of the Complaint, and the proceedings commenced on November 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2010.

The Center appointed Richard W. Page as the sole panelist in this matter on December 13, 2010. 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

The Complainant is a state instrumentality and a non-profit marketing board funded by California dairy processors and administered by the California Department of Food And Agriculture. The organization was created in 1993 to counter the falling sale of milk as Americans switched to soft drinks, health drinks and other beverages. The organization aims to promote the sale and consumption of milk in America and generally to promote good health.

The Complainant is the owner of various registrations of the GOT MILK? brand in many jurisdictions around the world, including Community Trade Mark No. 008527178 and United States (“U.S.”) Registration Nos. 1903870 and 3730703 (the “GOTMILK? Marks”).

The GOTMILK? Marks were first adopted and used by the Complainant in 1993 as part of its campaign to promote the consumption and sale of cows’ milk to the American population. The mark was originally conceived and created by the advertising agency Goodby Sivlerstein & Partners for the Complainant in 1993 as part of a television advertisement campaign for promoting milk consumption.

Upon release, the television and advertisement campaign and the GOTMILK? Marks, instantly became a huge hit with the public and the advertisement won tremendous accolades worldwide. It has since been voted as one of the top ten television advertisements of all time by a USATODAY.COM poll. Complainant’s GOTMILK? Marks and the GOTMILK? campaigns and advertisement released by Complainant over the past years have been bestowed with many awards and prizes. These awards include the Silver Prize at the Cannes Award is 1994, Silver Effie in 1995, Addy Award in 1997, 1999, 2000 and 2001. In 2005, Taglineguru.com named GOTMILK? the most culturally influential tagline line since the advent of broadcasting television.

Since their inception, the GOTMILK? Marks have been used continuously as part of advertising campaigns in both print and visual media (television, internet, billboards, bus stops, and decals on grocery store floors). The campaigns have been well received by the public and substantial goodwill and reputation have attached to Complainant’s GOTMILK? Marks. The GOTMILK? Marks have been credited with greatly increasing milk sales in California and other parts of the United States.

The GOTMILK? Marks are also extensively promoted through the “milk moustache” campaign which has been endorsed by various celebrities including Beyoncé Knowles, David Beckham, Angelina Jolie, Usher, the Olsen Twins and Muhammad Ali, among others.

The Complainant, in addition to using its GOTMILK? Marks as a part of advertising campaigns to promote the consumption of milk, is also engaged in merchandising the GOTMILK? Marks in the form of clothing, apparel, kitchenware, umbrellas, stationary items, and bumper stickers. Extracts for the GOTMILK? Store are provided as examples as part of the exhibits to the Complaint. The GOTMILK? Marks are an asset of immense value to Complainant, as Complainant has invested and continues to spend huge amounts of money toward brand building in the United States and worldwide.

Complainant is also the proprietor of the domain name/website “www.gotmilk.com” and has been using it since 1999, which website can be accessed worldwide. The fame and popularity of the GOTMILK? Marks is worldwide.

The Disputed Domain Names were registered on April 8, 2010. The registrations came to the attention of the Complainant shortly after April 20, 2010. The Complainant’s U.S. representative wrote to the registrar to ask that it de-activate the Disputed Domain Names. No response was received to that that letter, so a second was sent on May 7, 2010.

Not having had a response to their representatives’ communications, the Complainant decided to launch this administrative proceeding. At this point the Complainant’s U.S. Representative instructed Rouse Legal to assist with the proceeding. Rouse Legal conducted WhoIs searches on August 27, 2010 which listed the registrant’s details as being privacy protected. Domain Tools’ cached WhoIs searches showing the privacy protected registrant details. In order to formally determine the identity of the registrant to each of the Disputed Domain Names, Rouse Legal wrote to the Registrar 1&1 Internet AG on September 15, 2010 to request that the information be revealed, pursuant to section 3.4.2 of the terms and conditions for private domain name registration with 1&1 Internet AG.

In response to the Complainant’s letter, the Registrar wrote to Rouse Legal on September 23, 2010 advising that they had populated the publically available WhoIs data with the registrant’s personal information. They also advised that they had forwarded a copy of Rouse Legal’s correspondence to the Respondent. WhoIs searches dated September 28, 2010 contained the newly-publicized registrant details.

As the issue had one again been brought to the Respondent’s attention, Rouse Legal was instructed to write to the Respondent again an attempt to settle this dispute. An email was written to the Respondent on September 28, 2010 requesting the Disputed Domain Names be voluntarily cancelled.

As no response was received to this email, Rouse Legal was instructed to attempt to reach the Respondent by telephone. On October 7, 2010, David Lancaster of Rouse Legal spoke to the Respondent who denied trade mark infringement and said that he was not willing to voluntarily cancel the Disputed Domain Names. The Respondent did explain that he would be willing to cancel the Disputed Domain Names provided that he was financially compensated.

After seeking instructions, David Lancaster of Rouse Legal contacted the Respondent by telephone again on October 14, 21010 to inform that the Complainant was not prepared to reimburse him voluntarily to cancel the Disputed Domain Names. The Respondent was advised that the Complainant intended to proceed with a UDRP complaint unless the Respondent would reconsider. The Respondent agreed to consider voluntarily cancelling the Disputed Domain Names, but asked to have until October 18, 2010 to think about it. David Lancaster of Rouse Legal agreed to this deadline.

Following this conversation, David Lancaster of Rouse Legal attempted on many occasions to make contract by telephone with the Respondent. These attempts were not successful.

Prior to the telephone call on October 7, 2010, the Respondent’s address, as set out in the registrant details of WhoIs searches from September 28, 2010, was [], San Francisco, California. Following the telephone conversation, the Respondent amended his address to [], as seen in the WhoIs searches.

After the registrant details became public, two of the Disputed Domain Names, specifically <gothempmilk.com> and <gotalmondmilk.com > have reverted to privacy protected status.

When Rouse Legal investigated the Disputed Domain Names on August 27, 2010, the Disputed Domain Names directed users to the website for the Respondent’s fire dancing act call “Vatra.” Initially only the Disputed Domain Name <gotnutmilk.com> and <got almondmilk.com> directed Internet users to this website, but following the investigations conducted on October 13, 2010, the Complainant became aware that all of the Disputed Domain Names in dispute in this proceeding directed Internet users to the fire dancing site.

The fire dancing website is located at <vatra.org> and is for the professional fire dancer Vatra Amiedzich. This is also the last name of the Respondent and the sponsor of the website to which the Disputed Domain Names are directed.

Since the stated intention of the Complainant to commence this UDRP proceeding, the Disputed Domain Names have been directed to an “under construction” page which will be purportedly be for the promotion of healthy and environmentally friendly alternatives to animal products.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it is the registered proprietor of numerous international and U.S. registrations for the GOTMILK? Marks. Complainant further alleges that the Respondent has registered Disputed Domain Names which include the entirety of the two parts of the GOTMILK? Mark being separated only by the phrases “hemp,” “hempseed,” “nut,” and “almond.” The Complainant alleges that these are generic and non-distinctive phrases which make the Disputed Domain Names confusingly similar to the GOTMILK? Marks. Complainant explains that all of the variations added to the Disputed Domain Names are common vegan product names and are not distinctive.

The Complainant contends that the GOTMILK? Marks predate registration of the Disputed Domain Names by many years. The Respondent is not commonly known by any of the Disputed Domain Names. The Complainant further contends that the re-direction of the Disputed Domain Names to the fire dancing website does not illustrate any bona fide offering of good or services.

The Complainant contends that the use of the phrase “got” in the GOTMILK? Marks has no bearing whatsoever to the information that the Respondent says it will offer regarding vegan milk substitutes. Therefore, the Respondent has no legitimate non-commercial business purpose in its purported use of the Disputed Domain Names and has no right or legitimate interests in the Disputed Domain Names.

The Complainant lists a pattern of behavior by the Respondent of dishonesty in its responses to the inquiries from the Complainant, including promises to cancel the Disputed Domain Names followed by re-direction to different websites. The Complainant further contends that by using the distinctive phrase “got” with the GOTMILK? Mark that the Respondent is trying to confuse Internet users into believing they are viewing a website which has some sponsorship or affiliation with the Complainant. These actions whether pursued individually or as part of a pattern, constitute bad faith by the Respondent in the registration and use of the Disputed Domain Names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both the Complainant and the Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether a complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 at n. 3.

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; see also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957; and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.

Even though the Respondent has failed to file a Response or to contest the Complainant’s assertions, the Panel will review the evidence proffered by the Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:

i) that the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

ii) that the respondent has no legitimate interests in respect of the domain name; and

iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant alleges that it is the registered proprietor of numerous international and U.S. registrations for the GOTMILK? Marks. The Complainant further alleges that the Respondent has registered Disputed Domain Names, which include the entirety of the two parts of the mark being separated only by the phrases “hemp,” “hempseed,” “nut,” and “almond.” The Complainant alleges that these are generic and non-distinctive phrases that make the Disputed Domain Names confusingly similar to the GOTMILK? Marks. The Complainant alleges that all of the words added to the GOTMILK? Marks in Disputed Domain Names are common vegan product names and are not distinctive.

Prior UDRP panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., ICANN WIPO Case No. D2000-0047.

As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 2d 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other generic terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

The Panel finds that the entirety of the two main parts of the GOTMILK? Marks are contained in the Disputed Domain Names. The addition of the common vegan product names does not create a distinction.

The Respondent has not contested the assertions by the Complainant that the Disputed Domain Names are confusingly similar to the trademarks.

Therefore, the Panel finds that the Disputed Domain Names are confusingly similar to the GOTMILK? Marks pursuant to the Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant contends that the GOTMILK? Marks predate registration of the Disputed Domain Names by many years; that the Respondent is not commonly known by any of the Disputed Domain Names; and contends that the re-direction of the Disputed Domain Names to the fire dancing website does not illustrate any use with the bona fide offering of good or services.

The Complainant further contends that the use of the phrase “got” in the GOTMILK? Marks has no bearing whatsoever to the information, which the Respondent says he will offer regarding vegan milk substitutes. Therefore, the Complainant contends, the Respondent has no legitimate non-commercial business purpose in his purported use of the Disputed Domain Names and has no rights or legitimate interest in the Disputed Domain Names.

Paragraph 4(a)(ii) requires that a complainant to prove that the respondent has no rights to or legitimate interests in the disputed domain name. Once a complainant establishes a prima facie showing that none of the three circumstances demonstrating legitimate interests or rights apply, the burden of production on this factor shifts to the respondent, to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.

The Respondent has no relationship with or permission from the Complainant for the use of the GOTMILK? Marks. In addition, the Complainant has come forward with allegations that the Respondent lacks rights to or legitimate interests in the Disputed Domain Names. The Respondent has not contested any of the allegations of Complainant. Nor does the file contain evidence that the use of the Disputed Domain Names meets any factor provided for in Policy paragraph 4(c).

Therefore, the Panel finds that the Respondent has no rights or legitimate interest in the Disputed Domain Names pursuant to Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the Disputed Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four nonexclusive examples for Complainant to show bad faith registration and use of domain names:

(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 web site 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.

The Complainant lists a pattern of behavior by the Respondent of dishonesty in its responses to the inquiries from the Complainant, including promises to cancel the Disputed Domain Names followed by re-direction to different websites. The Complainant further contends that by using the distinctive phrase “got” with the GOTMILK? Mark that the Respondent is trying to confuse Internet users into believing they are viewing a website which has some sponsorship or affiliation with the Complainant. These actions, the Complainant argues, whether taken individually, or as part of a pattern, constitute bad faith by the Respondent in the registration and use of the Disputed Domain Names.

The Respondent has not contested any of the allegations made by the Complainant. The Panel finds that the allegations are sufficient to satisfy the elements of the Policy paragraph 4(b)(iv).

Therefore, the Panel finds that the Complainant has shown the necessary elements of bad faith registration and use under Policy paragraph 4(a)(iii).

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 domain names, <gotalmondmilk.com>; <gothempmilk.com>; <gothempmilk.info>; <gothempmilk.net>; <gothempmilk.org>; <gothempseedmilk.com>; and <gotnutmilk.com> be cancelled.

Richard W. Page
Sole Panelist
Dated: December 29, 2010

 

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