WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The California Milk Processor Board v. Fernando Howard
Case No. D2011-1025
1. The Parties
The 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.
The Respondent is Fernando Howard of Cape Town, South Africa.
2. The Domain Name and Registrar
The disputed domain name <egotmilk.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2011. On June 16, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On June 18, 2011, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on June 24, 2011. Due to a problem with the notification by email, the due date for Response was reset to August 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2011.
The Center appointed James A. Barker as the sole panelist in this matter on August 19, 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. On September 5, 2011, in accordance with paragraph 10(c) of the Rules, the date by which the Panel was required to forward its decision to the Center was extended to September 9, 2011.
4. Factual Background
The Complainant is the owner of various registered marks for GOT MILK?. This includes a mark registered in South Africa, where the Respondent has his address (according to the WhoIs record). The Complainant uses the mark to promote the consumption of cow’s milk and has done so since 1993. The Complainant also operates a website at “www.gotmilk.com”. The Complainant states that, according to the website “www.sitetrail.com”, the estimated number of page views of the Complainant’s website exceed 1.8 million annually. The Complainant provides evidence of the marketing under its mark, including advertisements featuring well-known celebrities.
The disputed domain name was registered by the Respondent on March 16, 2011 (according to the creation date in the WhoIs record). There is little information in the case file as to the nature of the business of the Respondent.
The Complainant provides evidence of the website to which the disputed domain name reverts (a screenshot of that website) as at June 6, 2011. That website featured website addresses as headings with accompanying, and somewhat incomprehensible text, such as:
A Cat Urine Removal Tips on your friends, so confident wsw. stopcatpeeung.ocm you'll be using our free homemade recipe here and if c var ww stopcatpeejng.comm mydate=new Date var day=mydate. Contact Us Affiliate Program Additional Articles eww stopcatpeeijg.cim Cat Behaviour Researcher. When it is that our Web site by peeing on the healthiest, happiest, and pee where you donâ€™t want that you receive an acceptable place your cat”
The Complainant has previously been successful under the Policy in bringing complaints in relation to its GOT MILK? mark. More recently for example, see California Milk Processor Board v. Above.com Pty Ltd / Trellian Pty Ltd. / Shu Lin / Shu Lin Enterprises Limited, WIPO Case No. D2011-0149.
5. Parties’ Contentions
The Complainant says that the disputed domain name is confusingly similar to its GOTMILK? trademark. The Complainant says that appropriating another’s mark and adding descriptive or non-distinctive matters to it (i.e. the letter “e”, which has become a generic or common descriptive term to identify electronic commerce activity) does not avoid likely confusion.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant points out that the website at the disputed domain name contains a succession of links and that this is an example of “social bookmarking”, which can be treated as the equivalent of a parking page. The Complainant argues that such a use does not provide a legitimate interest in the disputed domain name as it is highly likely to have been registered in the hope or expectation of attracting Internet traffic.
The Complainant says that the disputed domain name has been registered and used in bad faith. The Respondent has provided false contact details, and therefore taken deliberate steps to ensure that communication with it cannot be made. The Complainant sent a letter to the Respondent on April 18, 2011 by email but the email bounced. Having received the bounced email, the Complainant sent a letter by courier to the address of the Respondent in the WhoIs record. The courier company contacted the Complainant’s representative to say that that address did not exist.
The Complainant says that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The notoriety of the Complainant’s mark increases the likelihood of confusion. The Complainant refers to “the Respondent’s blog” at a website. The Complainant states that ” ‘The post is listed under the menu ‘Revenue + Traffic – Custom Script’, and states ‘I created this awhile back and started to sell it at a price of $10…The script is very easy to use and for people to install…’ “. The Complainant says that one of the links on the Respondent’s website is pornographic in nature and is particularly damaging and that other links on the Respondent’s website are also inappropriate given the family friendly nature of the Complainant’s brand. The Complainant says that there are a high number of back links and Google indexed pages related to the disputed domain name which tend to show that the primary purpose of the Respondent’s website is to attract Internet users for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed as follows.
A. Identical or Confusingly Similar
There is no dispute that the Complainant has rights in a registered mark for GOT MILK?. The disputed domain name is only different to that mark by the prefix “e” and the lack of “?” at the end.
The inclusion of the letter “e” at the beginning of the disputed domain name does not avoid confusion with the Complainant’s mark. In other cases, panels have found that the addition of “e” as a prefix does not diminish confusion where the disputed domain name is otherwise nearly identical in appearance, sound and idea – as in this case. See more recently e.g. WorldVentures Ltd. v. EWORLDVENTURES.COM, WIPO Case No. D2010-1797; Chicago Mercantile Exchange Inc. v. E-Globex Consulting, LLC, WIPO Case No. D2009-1728. The addition of a letter “e” also carries the connotation of e-commerce and therefore may serve to add confusion as to whether the disputed domain name is associated with the Complainant’s on-line presence.
The lack of the “?” at the end of the disputed domain name does nothing to avoid confusing similarity. That difference is trivial. A similar difference in a previous case involving the Complainant’s mark 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 the Complainant’s mark. A substantial number of previous panels have found that a domain name which wholly incorporates a complainant's registered mark may be sufficient to 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. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark.
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. Once such 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, paragraph 2.1.
The Complainant has made out a prima facie case to which the Respondent has made no reply. There is little else in the case file or on the Respondent’s website that would self-evidently suggest rights or legitimate interests. Accordingly, the Panel finds that the Complainant has established its case under this element of the Policy.
C. Registered and Used in Bad Faith
For the purposes of the Policy, the following circumstance, in particular but without limitation, if found by the Panel to be present, is evidence of the registration and use of a domain name in bad faith:
4(b)(iv) …by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website.
It is difficult to know what to make of the Respondent’s website. On its face, it promotes other web addresses, a number of which are plainly commercially oriented. The text on the Respondent’s website is generally incomprehensible. This is somewhat suggestive that the text is automatically generated. It is also text that refers to “affiliate programs” (see e.g. the example of that text provided above). Affiliate programs are generally associated with the attraction of Internet users for commercial gain. For example, as noted by the panel in Ross-Simons of Warwick, Inc. v. Admin Billing, WIPO Case No. D2004-0696, “In general, an affiliate program is an agreement between two e-commerce websites whereby the owner of one e-commerce site (the ‘affiliate’) advertises and provides a link to another e-commerce website. The affiliate is paid a commission for every sale that is made by someone the affiliate refers to the other e-commerce website.”
There is no evidence of a real connection between the Respondent and the term “egotmilk”. There is no evidence the Respondent is known by that term. There is no evidence that the Respondent’s website has any legitimate connection with that term. As noted above, the disputed domain name is confusingly similar to the Complainant’s GOTMILK? trademark. The Respondent has chosen to submit no reply to the contentions against him. In these circumstances, there is a reasonable inference of bad faith for the purpose of paragraph 4(b)(iv) of the Policy.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) 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 domain name, <egotmilk.com> be transferred to the Complainant.
James A. Barker
Dated: September 9, 2011