WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
California Milk Processor Board v. Above.com Pty Ltd / Trellian Pty Ltd. / Shu Lin / Shu Lin Enterprises Limited
Case No. D2011-0149
1. The Parties
The Complainant is the California Milk Processor Board of San Clemente, California, United States of America, (“USA”), represented by Mallesons Stephen Jaques, Australia.
The Respondents are Above.com Pty Ltd / Trellian Pty Ltd. / Shu Lin and Shu Lin Enterprises Limited, of Melbourne, Victoria, Australia and Zhongshan District, Dalian, the People’s Republic of China, respectively.
2. The Domain Name and Registrar
The disputed domain name <gotmilkscholarship.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2011. On January 27, 2011, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 28, 2011, Above.com, Inc. 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. The Center sent an email communication to the Complainant on February 2, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 7, 2011.
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 the Respondent of the Complaint, and the proceedings commenced on February 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2011.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on March 11, 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
The Complainant is the California Milk Processor Board, a non-profit marketing board founded in California, USA in 1993. It was created in order to counter falling sales of milk and to promote milk consumption. The same year as the Complainant was founded, it launched the GOT MILK? advertising campaign, which entailed inter alia a commercial which was very successful and won several awards.
The Complainant is the holder of inter alia the following trademark registrations in the USA:
Mark Registration No Reg. Date
GOT MILK? 1903870 July 4, 1995
GOT MILK? 2689741 February 25, 2003
GOT MILK? 3730703 December 29, 2009
GOT MILK? 3798763 June 8, 2010
GOT MILK? 3907296 January 18, 2011
Moreover, the Complainant is the holder of, for example, the following trademark registrations in Australia:
Mark Registration No. Class(es) Registration Date
GOT MILK? 718057 16, 35 September 24,1996
GOT MILK? 1229780 9 March 14, 2008
GOT MILK? 1229789 21 March 14, 2008
GOT MILK? 1229792 25 March 14, 2008
GOT MILK? 1229794 28 March 14, 2008
GOT MILK? 1230054 3 March 17, 2008
GOT MILK? 1230057 10 March 17, 2008
GOT MILK? 1230060 14 March 17, 2008
GOT MILK? 1230062 30 March 17, 2008
GOT MILK? 1233131 29, 41 April 3, 2008
The disputed domain name was registered on September 13, 2010.
5. Parties’ Contentions
The GOT MILK? brand has been hugely successful in the USA, and worldwide, and has continued to receive critical acclaim and awards, e.g. the Cannes International Advertising Festival in 1996, 1997, 2003 and 2007.
The Milk Processor Education Program (“MilkPEP”) has been an authorized licensee of the Complainant since 1995. The program has offered annual college scholarships since 1998, called the “Scholar Athlete Milk Moustache of the Year (‘SAMMY’) Award Scholarship”. The Complainant’s trademark GOT MILK? appears throughout the programs websites and is inextricably linked with the scholarship.
The identity of the Respondent was hidden. No person or identity appears to be trading in Australia under the name GOT MILK SCHOLARSHIP. At the time of the submission of the Complaint to the Center, the website associated with the disputed domain name was a pay-per-click parking website. However, the website has often changed and has, on occasion, diverted to an advertisement for educational services.
The disputed domain name is confusingly similar to the Complainant’s registered trademark, GOT MILK?. The disputed domain name contains the Complainant’s trademark in its entirety. The inclusion of the generic word “scholarship” does not serve to distinguish the disputed domain name, The notoriety of the Complainant’s trademark means that consumers automatically would associate the disputed domain name with the trademark of the Complainant.
Moreover, the Australian trademark registration No. 1233131 for GOT MILK? is registered for services in class 41, including education. The disputed domain name thus relates directly to the goods and services claimed under the trademark.
The Respondent is not commonly known under the name “Got Milk Scholarship”. They do not use these words as a trademark, company name, business name or product name. As far as the Complainant is aware, the Respondent does not have any trademark rights or other rights in an identical or similar sign as the disputed domain name.
The Respondent is not a licensee of the Complainant.
The disputed domain name is not used for a bona fide offering of goods and services but is merely a parked page, featuring a series of pay-per-click advertisements. The pay-per-click links appear to be links to parking pages which offer competing goods or services with those offered by the Complainant. The intention is clearly to redirect Internet users seeking to access information about the Complainant‘s trademark and the SAMMY scholarship program to the parking page with the pay-per-click advertisements in order for the Respondent’s commercial gain.
The Respondent registered and is using the disputed domain name in bad faith in as much that the Respondent, for commercial gain, are intentionally attempting to attract Internet users through creating a likelihood of confusion with the Complainant’s trademark.
The Respondent must have been aware of the Complainant’s rights in the GOT MILK? brand. Since 1993 the Complainant has continuously used, and exercised its rights in its trademark. If the Respondent had conducted any searches, it would have been alerted to the Complainant’s trademarks and the SAMMY scholarship program. It is therefore inconceivable that the Respondent had no knowledge of the Complainant’s rights.
The use of a domain privacy service is further evidence of the bad faith of the actions of the Respondent. The originally unknown registrant of the disputed domain name failed to communicate with the Complainant, despite the Complainant’s several attempts to correspond, both directly with the registrant and via the registrars. That the cease and desist letters, sent by the Complainant, were ignored is further evidence that the registrant is using the privacy service to evade the rights of the Complainant.
Finally, the Respondent Shu Lin, the underlying registrant of the disputed domain name, has previously been party to a number of UDRP proceedings where famous trademarks have been registered in combination with a generic word. This shows a pattern of preventing owners of trademarks from making use of their trademarks in a corresponding domain name, which constitutes bad faith under the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Question of Amendment to the Complaint Resulting in Several Respondents
This Panel wishes to address this question first as it is increasingly common for registrants to employ privacy services, a reality to which the ICANN Rules have not yet been adapted.
As described in Divex Limited v. ZJ, Sam Chang and Tim NG, WIPO Case No. D2007-0861, most panels appear to treat as the respondent the underlying registrant, i.e. the person or entity that has engaged the privacy service, even when that person or entity cannot be identified. See also Association Robert Mazars v. Private Whois Service, c/o mazarsrevenge.com, WIPO Case No. D2009-0183. Other panels, as can be concluded from some recent cases, have suggested that the definition of the Respondent in the Rules should be interpreted literally. See Mark Alan Pearson and Markco Media Limited v. Domains by Proxy, Inc. and China Snake Media, WIPO Case No. D2009-0253, where although the panel did proceed to find the party that had engaged the privacy service (and not the privacy service itself) to be the substantive respondent, suggested that the respondent should be the registrant of the domain name. The different interpretations have been comprehensively discussed in e.g. Research In Motion Limited v. PrivacyProtect.org/Pluto Domain Services Private Limited, WIPO Case No. D2009-0324.
In the majority of cases where a privacy service has been used by the registrant, the concerned registrar has, in its verification response, disclosed to the Center the underlying registrant of the disputed domain name. However, as noted by the panel in. Research In Motion Limited v. PrivacyProtect.org/Pluto Domain Services Private Limited, supra., a registrant that chooses to utilize a privacy service and a registrar that provides such registration must be held accountable for some part of the consequences of anonymous registration. See F. Hoffmann-La Roche AG v. PrivacyProtect.org, Domain Admin and Mark Sergijenko, WIPO Case No. D2007-1854; and Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenbaum, WIPO Case No. D2006-0881. The Panel finds that this should also be the case for the agency providing these kinds of privacy services.
In view of the current of the Rules, the Panel feels that amendment seems necessary in order for the Complainant to receive a decision on the merits of the case. This Panel however, is of the view that the apparent need for an amendment of the complaint, which often enough leads to the naming of several respondents, namely the registrars, the privacy services and the registrants behind the privacy service, is causing unnecessary manoeuvring on part of the complainants and WIPO. Although this Panel accepts the current practice of inviting the complainant to amend the Complaint to include the underlying registrant, a future amendment of the Rules and the Policy seems desirable.
The Identity of the Respondent
The Complainant has identified the natural person Shu Lin, and the entity Shu Lin Enterprises Limited as well as the registrar entities, Above.com Pty Ltd and Trellian Pty Ltd as the Respondents in this case.
As stated in the panel decision, Research In Motion Limited v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0324, the ICANN name registration system requires a registrar to register a domain name upon its receipt of a proper registration agreement duly completed by a registrant; a registrar would technically not undertake any investigation to verify, for example, the truth of a registrant's representation and warranty that “to [the registrant's] knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.” (Policy, paragraph 2(b)).
In this case, the Registrar has duly released the identity of the registrant of the disputed domain name. The registrant is in fact Shu Lin/Shu Lin Enterprises Limited. Given that the identity of the registrant is known, this Panel will decide on the merits of this case in relation to Shu Lin/Shu Lin Enterprises Limited only. There is no reason to assess the circumstances under the supposition that Above.com Pty Ltd and Trellian Pty Ltd are parties to this case.
A. Identical or Confusingly Similar
The disputed domain name contains the trademark of the Complainant in its entirety, with the addition of the common word “scholarship”. Previous panels have generally recognized as confusingly similar, a domain name, which consists of a trademark combined with a common word. See e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.SI.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696; and Dr. Ing. H.c.F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, where the respondent had registered the domain name <porsche-me.com>. The panel in the latter case held that “Long-established precedent has generally recognised confusing similarity where well-known trademarks have been adapted with a wide range of prefixes or suffixes.” Id.
The Panel is thus satisfied that the first element of the Policy is established.
B. Rights or Legitimate Interest
There is a consensus, amongst UDRP panels, that a respondent's default does not automatically result in a decision in favor of the complainant. The Complainant is still required to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
When first receiving the case file, this Panel investigated the website attached to the disputed domain name. At that time it was linked to a parking page with pay-per-click advertisement links. The Panel concurs with the prior UDRP decisions holding that, in circumstances similar to this, there is no bona fide offering of goods or services where the disputed domain name resolves to a website with sponsored links. See e.g. Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; F. Hoffmann-La Roche AG v. Titan Net, WIPO Case No. D2006-0424; and Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.
When conducting a similar check at the point of writing this decision, it appeared that the disputed domain name currently resolves to a webpage offering education advice. This does however not change the conclusion that the Respondent lacks legitimate interest in the disputed domain name. The website does not present any further evidence to suggest a legitimate interest; instead it is obvious that the Respondent is using the disputed domain name for its own commercial gain.
In light of this, and of the prima facie case put forward by the Complainant, as discussed above, the Panel finds the evidentiary burden under paragraph 4(a)(ii) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent must have been aware of the Complainant’s rights in the GOT MILK? trademark.
The Panels initial reflection was the lack of a natural connection between the words GOT MILK and SCHOLARSHIP. It certainly suggests awareness on part of the Respondent of the rights of the Complainant. The Complainant has moreover submitted evidence to establish the well known character of the Complainant’s trademark GOT MILK?, which has been used since the earlier part of the mid-nineties, including in connection with educational scholarships.
Furthermore, in this case, the disputed domain name, registered and used by the Respondent was, when the Panel first conducted the search linked to a “parked” website. In prior cases, the mere “parking” of a domain name has been sufficient to demonstrate a finding of bad faith. See e.g. Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474. The Panel finds that the subsequent use of the disputed domain name, which now resolves to a website offering educational advice constitutes clear evidence of bad faith in so far as it creates a likelihood of confusion with the Complaint’s trademark.
Finally, it appears that the Respondent has engaged in similar “parking” practices in the past. In 2010 there were four UDRP proceedings involving Shu Lin, Shu Lin Enterprises Limited, and as far as the Panel is aware, this is second case to be decided this year. See Aventis Pharma SA, Aventis Pharmaceuticals Inc.Sanofi-Aventis v. Shu Lin / Above.com Domain Privacy, WIPO Case No. D2010-2036; F. Hoffmann-La Roche AG v. Above.com Domain Privacy / Shu Lin, Shu Lin Enterprises Limited / Host Master, Transure Enterprise Ltd, WIPO Case No. D2010-1986; Société des Produits Nestlé S.A. v. Shu Lin, Shu Lin Enterprises Limited, WIPO Case No. D2010-1882; LEGO Juris A/S v. Shu Lin/Transure Enterprise Ltd/ Above.com Domain Privacy, WIPO Case No. D2010-1648; and Telefonaktiebolaget L M Ericsson v. Above.com Domain Privacy/Transure Enterprise Ltd./ Shu Lin, Shu Lin Enterprises Limited, WIPO Case No. D2010-0566.
The mentioned cases all have in common that they involve famous trademarks and all resulted in transfer or cancellation of the disputed domain name. This Panel cannot see that circumstances differ here. In light of the facts presented above, together with the lack of anything to imply good faith registration and use, the Panel concurs with previous panels in above mentioned cases and finds that the Respondent has registered and used the disputed domain name in bad faith.
Thus the final element of the Policy is satisfied.
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 name <gotmilkscholarship.com> be transferred to the Complainant.
Dated: March 24, 2011