WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The California Milk Processor Board v. Asa Development
Case No. D2011-0914
1. The Parties
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 (“United Kingdom”).
Respondent is Asa Development of Staten Island, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <momgotmilk.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2011. On May 26, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, GoDaddy.com, 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 (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 Respondent of the Complaint, and the proceedings commenced on June 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2011. The Response was filed with the Center on June 8, 2011.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 1, 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 has registered the stylized word trademark GOT MILK? on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 3730703, dated December 29, 2009, in international classes (ICs) 6, 9, 10, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28 and 30 (claiming date of first use and first use in commerce as early as July 1, 1996 in IC 21, inter alia, for drinking glasses and glass mugs). Complainant has also registered the stylized word trademark GOT MILK? in a number of countries/regions outside the United States of America, including the European Union, Ireland and the United Kingdom. Several of the registrations outside the United States predate the December 29, 2009, date of registration at the USPTO.
Complainant has since 1993 used the GOT MILK? trademark to promote the consumption of cow’s milk. Complainant has sponsored high profile television and print advertising in the United States of America and elsewhere featuring well-known celebrities (including David Beckham, Beyoncé Knowles and Britney Spears) in connection with the trademark. Complainant operates a commercial website at “www.gotmilk.com” that receives approximately 18,000,000 page views annually.
According to GoDaddy.com, Inc.’s verification response, Respondent is registrant of the disputed domain name. According to that response, the record of registration of the disputed domain name was created on March 28, 2011. The administrative and technical contact listed on the record of registration is Mr. D’Anna, […]aol.com.
Respondent has used the disputed domain name to direct Internet users to a webpage that includes the statement in large font block letters “mom got milk” and the statement beneath that in smaller font block letters “all the help moms need in nurturing your baby”. This is superimposed on a blue background of swirling liquid.
On April 12, 2011, Complainant transmitted via postal mail and email to Respondent a cease-and-desist and transfer/cancellation demand with respect to the disputed domain name. Complainant indicates that on April 25, 2011, its external counsel received a telephone call from Ms. D’Anna acting on behalf of Respondent, and that in the course of that conversation, Ms. D’Anna, unsolicited, inquired whether Complainant would be willing to purchase the disputed domain name. Complainant's counsel indicated that Ms. D'Anna was welcome to make a proposal. Ms. D'Anna indicated that she would send an email proposing a price. By email of April 28, 2011, Ms. D’Anna transmitted the following:
“After considering all the expenses of signage, letterhead, advertising campaigns, business cards for new partnered consumers, software web designers and name changes to all of these products, its has cost approximately 30k.”
Complainant’s counsel transmitted a follow-up letter to clarify what Respondent was proposing, indicating that Complainant was not interested in any subject matter other than the disputed domain name. Ms. D’Anna responded by email of May 2, 2011:
“Dear […] Byers. The information that I provided was based upon inventory and web development along with the domain for the site. It may not have been clear if an offer or reimbursement was being asked. However I would need at least 4 to 6 weeks to re establish the company for the web and with this, would like for your client to propose the transfer or cancel amount of 5k. Thank you. N Danna.”
The registration agreement in effect between Respondent and GoDaddy.com, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges rights in the trademark GOT MILK? as evidenced by registration at the USPTO and intellectual property offices of countries other than the United States of America.
Complainant contends that the disputed domain name is confusingly similar to its trademark, in particular because it merely adds a descriptive or generic word to Complainant's distinctive trademark. According to Complainant, this does not avoid confusion with Complainant's trademark.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant states that while Respondent has made reference to preparations to use the disputed domain name in connection with a business, Respondent has provided no evidence of that preparation. Complainant states that Respondent’s webpage is a “GoDaddy instant page” with a single statement inserted.
Complainant argues that Respondent registered and has used the disputed domain name in bad faith. Complainant alleges that Respondent’s response to its cease-and-desist transfer/cancellation demand provides substantial evidence that Respondent registered the disputed domain name with the intention to sell it to Complainant. Complainant further argues that Respondent has used the disputed domain name intentionally for commercial gain to create a likelihood of confusion as to Complainant acting as source, sponsor, affiliate or endorser of Respondent’s website or location. Complainant contends that the well-known character of its trademark increases the likelihood of confusion among Internet users.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
The Response submitted by Respondent states in its entirety:
“I, […] D’anna am responding to the complaint for the domain name momgotmilk filed by attorney’s of got milk? There was never any intention to gain publicity and acknowledgement of customers based on a relationship with got milk?. Got milk is a company with a patent trademark name of “got milk” in question, based on cow’s milk and celebrity status. We are basing our company off of human, mother’s of everyday people providing their babies with nourishing mom’s milk. It is clearly a statement to promote and motivate mom’s all over that breastfeeding your baby is possible, because mom’s in fact do have milk and we do not have to feed our babies cow’s or other animals milk.”
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified Respondent of the Complaint and commencement of the proceedings, and Respondent filed a Response. The Panel is satisfied that Respondent received adequate notice of these proceedings and was afforded a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s 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 domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has submitted sufficient evidence to establish that it is the owner of rights in the trademark GOT MILK? in the United States of America, and Respondent appears to have acknowledged Complainant’s rights in that trademark.1 The Panel determines that Complainant owns rights in the trademark GOT MILK?.
The disputed domain name incorporates Complainant's trademark without the question mark, preceded by the term “mom”. Grammatical symbols are not used in domain names. The absence of the question mark in the disputed domain name does not eliminate confusing similarity between Complainant's trademark and the disputed domain name as Internet users would expect Complainant to drop the grammatical symbol in its web address. In fact, Complainant has done so with respect to the domain name <gotmilk.com> used to identify its own commercial website.
Complainant’s trademark consists of two words with meaning in the English language: “got”, a passive form of the verb “get”, meaning to obtain or secure, and; the noun “milk”, referring to a natural liquid secreted by female mammals for the feeding of their young.2 The combination phrase “got milk” is not commonly used by English language speakers even though it does have some meaning. Its use by Complainant as an advertising slogan and trademark is distinctive in the United States of America. Adding the term “mom”, a short form of “mother”, to form the phrase “mom got milk” has some meaning. By way of illustration, a person asked, did anyone pick up milk at the grocery store might reply, “Yes, mom got milk”. But, this would be a fairly unusual choice for a domain name intended to identify a website. It is likely that Internet users in the United States of America would confuse the disputed domain name <momgotmilk.com> with Complainant’s distinctive GOT MILK? trademark.3 The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel determines that Complainant has rights in a trademark and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) 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; or
(ii) you (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 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.” (Policy, paragraph 4(c))
Complainant has argued that Respondent has failed to establish rights or legitimate interests in the disputed domain name because Respondent has not made demonstrable preparations for a bona fide offering of goods or services under the disputed domain name prior to notice of the dispute, and has not made legitimate noncommercial or fair use of the disputed domain name. The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has argued that it has rights or legitimate interests in the disputed domain name because it is creating a company that will promote the fact that mothers may breast-feed their babies.
Paragraph 4(c)(i) indicates that the registrant of a disputed domain name may demonstrate rights or legitimate interests through demonstrable preparations to make a bona fide use of that domain name in connection with an offering of goods or services. This Panel notes “Demonstrable preparations” requires more than a mere statement of intent in response to a Complaint. See Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000. In this proceeding, Respondent’s inclusion of a single statement on a GoDaddy.com, Inc. starter page does not constitute demonstrable preparations to establish a business. The Policy further provides in paragraph 4(c)(iii) that rights or legitimate interests may be established if “you are making a legitimate noncommercial or fair use of the domain name”. Respondent’s usage of the disputed domain name is de minimis. While placing a statement “all the help moms need in nurturing your baby” on a starter webpage does not manifest bad faith conduct, the Panel does not consider this token usage sufficient to constitute “legitimate noncommercial or fair use” within the meaning of paragraph 4(c)(iii) such as to overcome the bad faith evidenced by Respondent when replying to an inquiry from Complainant. Had Respondent replied to Complainant that it intended to continue using its website to speak out in favor of breast-feeding, rather than asking for USD 30,000, the Panel would be more sympathetic to the belatedly expressed intention in that direction.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include:
“(i) circumstances indicating that [respondent has] registered or [respondent has] 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 [respondent's] documented out-of-pocket costs directly related to the domain name, or; (iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.
Respondent’s conduct establishes a strong inference that the disputed domain name was registered for the purpose of selling or otherwise transferring it to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name. Complainant’s GOT MILK? trademark is distinctive and well-known in the United States of America. When Complainant’s counsel contacted Respondent concerning abuse of Complainant’s trademark rights, Respondent demanded a monetary amount that might reasonably be requested only as a consequence of the known value inherent in Complainant’s trademark. Absent Complainant’s trademark, the phrase “mom got milk” as a domain name would reasonably be expected to have a value far more modest than USD 30,000. Respondent sought to justify its inflated offering price by reference to amounts expended in developing its business. But, in subsequent correspondence with Complainant and in response to the Complaint, it has provided no concrete evidence of those expenses. The Panel infers that Respondent cannot provide such evidence, and that the price for the disputed domain name quoted to Complainant reflected an attempt to take financial advantage of Complainant based on the value of its trademark. These are circumstances that indicate bad faith intention.
The Panel determines that Respondent registered and used the disputed domain name in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
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 <momgotmilk.com> be transferred to Complainant.
Frederick M. Abbott
Dated: July 8, 2011
1 For purposes of this determination, it is unnecessary for the Panel to address Complainant's trademark rights outside the United States of America.
2 See “http://www.merriam-webster.com/dictionary/get” and “http://www.merriam-webster.com/dictionary/milk”.
3 Addition of the generic top-level domain identifier “.com” is not relevant to analysis of confusing similarity in this context.