WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The California Milk Processor Board v. Mattia Fraulini
Case No. D2011-1077
1. The Parties
Complainant is The California Milk Processor Board of California, United States of America (the “United States” or “USA”), represented by Sipara, United Kingdom of Great Britain and Northern Ireland.
Respondent is Mattia Fraulini of Vignola, Italy.
2. The Domain Name and Registrar
The disputed domain name <gotmilkband.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2011. On June 24, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2011. Following several communications by Respondent and on behalf of it to the Center, the formal Response was filed with the Center on July 16, 2011.
The Center appointed Assen Alexiev as the sole panelist in this matter on August 5, 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 in this administrative proceeding is The California Milk Processor Board, which is comprised of 11 fluid milk processors in the State of California, USA. Formed in 1993, its purpose is to promote the consumption of milk through marketing, advertising, promotion and public relations.
Complainant is the proprietor of the following registered trademarks:
GOT MILK?, registered on December 29, 2009 for the territory of the USA for goods and services in International classes 6, 9, 10, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, and 30, with registration number 3730703;
GOT MILK?, an International trademark, registered on April 12, 2010 in various countries for goods and services in International classes 6, 9, 10, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 30 and 35, with registration number 1037545;
GOT MILK?, registered on June 23, 2010 for the territory of the European Union for goods and services in International classes 6, 9, 10, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 30 and 35, with registration number 008527178;
GOT MILK?, registered on December 29, 2006 for the territory of the United Kingdom of Great Britain and Northern Ireland for services in International class 35, with registration number 2374289.
The Domain Name was registered on May 7, 2011.
5. Parties’ Contentions
Complainant submits that since 1993, the GOT MILK? trademark has been used to promote the consumption of cow's milk. Complainant’s first Got Milk? television advertisement in 1993 was named one of the ten best advertisements of all time in a “www.USATODAY.com” poll. In 2005, “www.taglineguru.com” named Got Milk? as the most culturally influential tagline since the advent of broadcast television. Recent campaigns have featured high profile celebrities such as David Beckham, Beyoncé Knowles, and Britney Spears, both in the United States and worldwide. According to “www.sitetrail.com”, the estimated number of page views of Complainant's “www.gotmilk.com” website exceeds 1.8 million annually.
According to Complainant, the Domain Name is confusingly similar to Complainant’s trademarks for the purposes of paragraph 4(a)(i) of the UDRP. The use of an entire trademark adding descriptive or non-distinctive matter to it (here - the descriptive term “band”) does not avoid the confusing similarity.
Complainant further contends that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has made no reply to Complainant’s cease and desist letter dated May 27, 2011, so Complainant is unaware of any claims by Respondent for having any rights or legitimate interests in respect of the Domain Name. The current web content relating to the Domain Name contains a prominent Gotmilk sign, in a font and style confusingly similar to Complainant's registered trademark. The website is under construction. According to the “Reverbination” website, Respondent formed a band during the winter of 2010-2011, post-dating Complainant’s use of its trademark by around 18 years. Complainant does not contend that Respondent’s band is not genuine. Rather, Complainant believes that the existence of this band does not entitle Respondent to use a domain name confusingly similar to Complainant’s trademark without Complainant's consent. The Domain Name, being confusingly similar to Complainant’s trademark, does not give rise to a legitimate interest in it under the Policy, as it is highly likely to have been registered ”in the hope and expectation” of attracting traffic from “Internet users searching for information about the business activities of the trademark owner”.
In Complainant’s submission, the Domain Name was registered and is being used in bad faith. At the time of registration of the Domain Name, Respondent knew, or at least should have known, about the existence of Complainant's trademark. The reputation of the GOT MILK? trademark is such that Respondent in all likelihood knew of the existence of Complainant's trademarks. This view is supported by the confusing similarity of the fonts used for the sign GOTMILK on Respondent's website. The registration of a well-known trademark as a domain name has been held to be a clear indication of bad faith in itself, even without considering other elements. Complainant's trademarks are registered and Respondent is charged with constructive notice of them, Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
Whilst Respondent appears to be using the GOTMILK brand in connection with a rock band, the choice of this sign, combined with its presentation on Respondent’s website in a manner that is confusingly similar to Complainant’s trademark, creates a likelihood of confusion. Thus, by using the Domain Name, Respondent has intentionally attempted to attract for commercial gain Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of a product or service on Respondent's website.
Complainant requests the transfer of the Domain Name.
With its first communication to the Center on July 1, 2011, Respondent presented himself and the members of the GotMilk band as Italians who do not speak much English. They allegedly found the name GotMilk only by the simple association of two simple words, without any particular reason and without knowing of the existence of any entity or brand "Got Milk?".
In its further communication to the Center of July 16, 2011, Respondent noted that Complainant is based abroad and involved in a business very different from music production, which is Respondent’s only business.
Respondent further contends that the registration of the Domain Name was made in compliance with the law, and that by virtue of this registration, Respondent’s rights to use the Domain Name were legally recognized.
In its formal Response dated July 16, 2011, Respondent alleges that the choice of the Domain Name was totally occasional and motivated by the wish to make a joke out a world who has lost (in Respondent’s opinion) its childhood. There was and there is no intention to take advantage of this name nor to take advantage of the homonymy with Complainant.
Should the Complaint be granted, Respondent would be forced to change the name of its band, of its website and of its social network profiles, with a relevant loss of business contacts built through the years. This would cause not only an economical damage, but mostly a huge loss of image, as the Internet community might afterwards start thinking that the band had chosen the name in order to take advantage of Complainant, which is not true.
Finally, Respondent requests the dismissal of Complainant’s claim.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That Respondent has registered and is using the Domain Name in bad faith.
By the Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to Respondent, in compliance with the Rules, paragraph 2(a). Respondent was given a fair opportunity to present his case, and has availed himself of this opportunity.
A. Identical or Confusingly Similar
Complainant has provided evidence and has thus established its rights in the word trademark GOT MILK?, registered for the territory of various countries, including for the European Union, where Respondent is located.
It is a common practice under the Policy to disregard the gTLDs such as the “.com” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is its “gotmilkband” section. The combination “gotmilk” is almost identical to Complainant’s trademark (only the question mark is missing), and the “band” element could easily be regarded as descriptive of the activities of Respondent. Therefore, it is likely that the attention of an average Internet user would be mainly attracted by the “gotmilk” element of the Domain Name. Notably, Respondent does not dispute what it calls the “homonymy” between the Domain Name and Complainant’s trademark.
Taking the above into account, the Panel finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant claims that Respondent has no rights or legitimate interests in the Domain Name, and provides certain arguments in this regard. Thus, Complainant establishes a prima facie case under the Policy, paragraph 4(a)(ii).
It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary.
Respondent alleges that it has legal rights over the Domain Name by virtue of its registration with the Registrar. However, it is well established that the rights arising with the registration are not per se sufficient as a ground to decide that a respondent has rights and legitimate interests under the Rules, paragraph 5(b)(i). Otherwise, every respondent in proceedings under the Policy would be found to have rights in the respective domain name, without having regard to any other circumstances.
Respondent has provided two diverging and mutually incompatible explanations of his actions. With his first communications to the Center, he presented himself as a person of little knowledge of English, who has chosen two simple generic words for the name of his rock band without any particular reason, and without having any idea for the existence of Complainant and its trademark. Then, with the formal Response, a new version was put forward – that the name was purposefully chosen in order to make a joke with the lost childhood of humankind, and again there was no knowledge of Complainant.
The Panel has carefully analyzed these two theories, and, on balance, finds both of them artificial and unsatisfactory.
In the Panel’s view, the first of them fails to explain why Respondent (allegedly not having good command of English) has chosen English words for the name of its band, why he has chosen precisely the words “got” and “milk”, and why their appearance on Respondent’s website is so similar graphically to the registered trademark of Complainant. On the balance of probabilities, the claim that this was just a coincidence does not appear as credible to the Panel.
The Panel does not find the second explanation plausible either. It contradicts the initial explanation in two ways: it is unclear how Respondent could have come up with the idea to express himself by joking with the lost childhood of humankind through the use of a foreign language that is allegedly difficult for Respondent to comprehend; and it simply negates the first explanation that the choice of words was random and without particular reason. At the same time, the idea of making a joke with the combination “gotmilk” appears as more likely than not to be related to the various commercials and other advertising used by Complainant in its activity over the years, as a simple search in Google and Youtube suggests.
Taken together, the explanations advanced by Respondent do not convince the Panel. Firstly, the content of the Response shows that Respondent has good command of English. Secondly, the graphical similarity between the “gotmilk” sign on Respondent’s website and Complainant’s trademarks appears as more than a coincidence, especially taking into account Respondent’s own allegation that the choice of the Domain Name was meant to be a joke, which in itself suggests the likelihood of an influence of Complainant’s commercials on Respondent. On the balance, the Panel is inclined to accept that Respondent has chosen to register and use the Domain Name being aware of Complainant’s brand and of its value, and in attempt to benefit from it by attracting attention to his newly-formed band. This does not appear to the Panel as a genuine good faith use of the Domain Name that would give rise to rights and legitimate interests in it to Respondent.
Taking all the above into account, and in view of the requirement for Respondent under the Rules, paragraph 5(b)(i) to respond specifically to the statements and allegations contained in the Complaint and include any and all bases for Respondent to retain the registration and use of the Domain Name, the Panel finds that Respondent has failed to rebut Complainant’s prima facie case for lack of rights and legitimate interests.
Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the Domain Name.
At the same time, the Panel wishes to point out that these conclusions are made on the basis of the limited evidence available to it, and solely for the purposes of reaching a decision under the Policy. No finding or decision as to whether Respondent is entitled to use the Gotmilk brand as the name of its rock band and as to whether such use would constitute a trademark infringement is hereby made, and definitely such decision is reserved for the courts of competent jurisdiction.
C. Registered and Used in Bad Faith
For the purposes of the Policy, 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 the holder has registered or 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 your website or location or of a product or service on the holder’s website or location.
In the present case, the Domain Name is confusingly similar to Complainant’s GOT MILK? trademark. The website associated to the Domain Name contains a prominent sign that is very similar visually to Complainant’s trademark, and contains no disclaimer of any affiliation to Complainant. Internet users that reach the website of Respondent may well believe that this website and Respondent’s band are somehow affiliated to or sponsored by Complainant. As discussed in the section on rights and legitimate interests above, the Panel has accepted that at the time of the registration of the Domain Name, Respondent must have been aware of Complainant’s trademark and of its goodwill.
Therefore, and in the lack of any contrary evidence, the Panel is prepared to accept that Respondent has registered and used the Domain Name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to the website at the Domain Name by creating a likelihood of confusion with Complainant’s trademark as to sponsorship, affiliation, or endorsement of this website. This constitutes bad faith registration and use of the Domain Name under the Policy, paragraph 4(b)(iv).
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 <gotmilkband.com> be transferred to Complainant.
Dated: August 25, 2011