World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The California Milk Processor Board of San Clemente v. Ryan Leonard

Case No. D2011-1665

1. The Parties

The Complainant is The California Milk Processor Board of San Clemente of San Clemente, California, United States of America, represented by Sipara, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

The Respondent is Ryan Leonard, of Huntington Valley, South Hampton and Philadelphia, Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name <gotmilkads.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2011. On October 3, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 3, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing additional registrant 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 October 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2011. The Response was filed with the Center on November 3, 2011.

The Center appointed William R. Towns as the sole panelist in this matter on November 14, 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.

The Complainant submitted an unsolicited Reply to the Response on November 17, 2011. The Panel afforded the Respondent an opportunity to submit a supplemental filing limited to issues raised in the Complainant’s Sur-Reply no later than November 28, 2011. The Respondent filed its Sur-Reply on November 28, 2011. In view of the foregoing, the date for the Panel to submit its decision to the Center was extended to December 5, 2011.

4. Factual Background

The Complainant is the owner of the registered trademark GOT MILK? in the United States of America (the “U.S.”) and other jurisdictions. The trademark has been used by the Complainant since 1993 to promote the consumption of cow’s milk. The Complainant’s GOT MILK? television and print advertisements are quite popular, and often feature high profile celebrities. The notoriety of the GOT MILK? advertisements are such that they are sold as memorabilia on eBay. At times there have been as many as 1500 GOT MILK? advertisements items listed on eBay. The Complainant’s trademark has been found to be distinctive and well-known in the U.S. by at least one UDRP panel. See The California Milk Processor Board v. Asa Development, WIPO Case No. D2011-0914.

The disputed domain name was registered with the registrar GoDaddy.com, Inc. on August 3, 2009. The disputed domain name resolves to a parked web page provided by GoDaddy.com, which contains advertising links (“ads”) to third-party websites offering various goods or services, none of which appear to be related to the Complainant or its goods and services. According to the WhoIs records presently maintained by the concerned registrar, the Respondent is the owner of the disputed domain name, although earlier WhoIs records reflect the use of a privacy protection service, Domains By Proxy, Inc.

5. Parties’ Contentions

A. Complainant

The Complainant maintains that the disputed domain name is confusingly similar to the GOT MILK? trademark, which the Complainant asserts is a distinctive and well-known trademark. The Complainant observes that is has used the trademark since 1993 and has obtained numerous registrations in several jurisdictions, including the U.S. and the European Union. According to the Complainant, GOT MILK? advertisements are extremely well-known, and GOT MILK? was named in 2005 as the most culturally influential tagline since the advent of broadcast television. The estimated number of page views of the Complainant’s website at “www.gotmilk.com” exceeds 1.8 million annually. The Complainant further contends that the fame of the GOT MILK? trademark is such that the Complainant’s advertisements are sold as memorabilia on eBay.

The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant, through its legal counsel, contacted the Respondent prior to the commencement of this administrative proceeding to discuss its concerns regarding the Respondent’s registration and use of the disputed domain name. According to the Complainant, during the course of those conversations the Respondent, who is an attorney, made an unsolicited offer to sell the disputed domain name to the Complainant for the sum of USD 10,000, and further noted that contesting the Complaint would be good publicity for his law firm. The Complainant contends that the Respondent’s use of the disputed domain name with a parking page featuring pay-per-click advertising links does not give rise to rights or legitimate interests.

The Complainant further maintains that the Respondent otherwise has offered no credible explanation regarding any use of the disputed domain name that would give rise to rights or legitimate interests therein. In that regard, the Complainant contends that the Respondent’s proffered intent to use the disputed domain name with a website offering GOT MILK? advertisements is insufficient to establish rights or legitimate interests based on the use the disputed domain name with a bona fide offering of goods or services. Further, the Complainant maintains that the Respondent has no right to register a domain name appropriating the Complainant’s trademark for such use without the Complainant’s authorization.

The Complainant contends that the disputed domain was registered and is being used in bad faith. According to the Complainant, the Respondent clearly was aware of the Complainant’s well-known trademark when registering the disputed domain name, and is trading on the confusing similarity of the disputed domain name to attract Internet visitors to a parked, pay-per-click website for commercial gain. The Complainant maintains that whether or not the Respondent or GoDaddy.com is responsible for the content of the parking page is immaterial to the bad faith issue, just as whether advertising revenues accrue directly to the Respondent or to GoDaddy.com is of no moment respecting bad faith. The Complainant also contends that the Respondent’s bad faith is demonstrated by his unsolicited offer the sell the disputed domain name to the Complainant for an amount greatly in excess of the out-of-pocket costs related to the disputed domain name. The Complainant observes that cybersquatters often wait until a trademark owner launches a complaint or otherwise establishes contact before asking for payment.

B. Respondent

The Respondent maintains that as the parties are domiciled or incorporated in the U.S., and subject to and bound by applicable U.S. law. For purposes of the first element of the Policy, the Respondent argues from several trademark law decisions issued by the Federal Ninth Circuit Court of Appeals that the disputed domain name cannot be considered confusingly similar to the Complainant’s trademark.1 Relying primarily on such decisions, the Respondent asserts that online consumers of products are generally quite sophisticated about such matters, and that it is unlikely that a reasonably prudent consumer encountering a domain name that includes a product name would be confused whether the website they have come to is formally affiliated with the product manufacturer. The Respondent further notes that the website to which the disputed domain name resolves contains no content in any manner affiliated or related to the Complainant’s products or services, or those of the Complainant’s competitors. The Respondent further observes that the UDRP decisions relied upon by the Complainant are largely default cases or other cases in which no real substantive response was submitted.

The Respondent asserts that the Complainant has failed to meet its burden of proof respecting the second and third elements of the Policy as well. The Respondent avers that he registered the disputed domain name with the intent to develop a website for the purpose of selling GOT MILK? advertisements, but has yet to make such use of the disputed domain name because of his busy law practice and the development of another website at “www.brotherlylovesports.com”. The Respondent notes that, as the Complaint itself points out, there have been significant third-party sales of GOT MILK? advertisements in the U.S. and elsewhere on a daily basis at eBay.com. The Respondent observes that the Complainant has never objected to such sales, and further notes that the Complainant does not sell GOT MILK? advertisements on its own website.

The Respondent further maintains that he disclosed to the Complainant’s counsel during their discussions preceding the commencement of this administrative proceeding that it was the Respondent’s intent to use the disputed domain name with a website offering GOT MILK? advertisements. According to the Respondent, he has sold various print advertisements and posters, including the Complainant’s advertisements, over eBay for a number of years, and he has offered evidence of his activities on eBay. In view of the foregoing, the Respondent maintains that his intention to use the disputed domain name with a website offering GOT MILK? advertisements demonstrates rights or legitimate interests in the disputed domain name.2

The Respondent further argues, as the Complaint notes, that “there is nothing per se illegitimate in using a domain parking service”. The Respondent denies the Complainant’s contention that the disputed domain name was registered in order to attract Internet users searching for information about the Complainant’s business activities to the parking page provided by GoDaddy.com. The Respondent denies any responsibility for the content on the parking page, which the Respondent attributes to GoDaddy.com, Inc., and further observes that there is no content on the parking page related to the Complainant’s business activities or those of the Complainant’s competitors. The Respondent also asserts that he has rights or legitimate interests in the disputed domain name based on its passive holding.

The Respondent maintains that the record is devoid of any evidence of bad faith registration and use. According to the Respondent, the Complainant has misstated and mischaracterized the prior communications between the Respondent and the Complainant’s counsel. The Respondent denies registering the disputed domain name in order to sell it to the Complainant, and maintains that the Complainant solicited the settlement offer of USD 10,000 made by the Respondent during such communications.3 The Respondent feels he was baited into making the settlement offer by the Complainant’s counsel in order to manufacture a baseless bad faith claim by the Complainant. The Respondent further argues that under U.S. law the settlement offer and negotiations are inadmissible in relation to the merits of the dispute. In any event, the Respondent maintains that an offer to negotiate a settlement for an amount greater than the out-of-pocket costs associated with the disputed domain name does not per se constitute bad faith under the Policy.

The Respondent denies that he registered the disputed domain name to exploit or profit from the Complainant’s trademark rights. According to the Respondent, he does not and never has derived income or benefit from the disputed domain name. The Respondent maintains that he had no idea that GoDaddy.com, Inc. was placing advertisements on the parking page before being contacted by the Complainant’s counsel, and that he subsequently contacted GoDaddy.com, Inc. seeking removal of the advertisements, but was informed that no changes could be made to the website because it was “on hold” due to the domain name dispute.4 The Respondent reiterates that his sole intent in registering the disputed domain name was and remains to make a “nominative fair use” in connection with the sale of GOT MILK? advertisements.

The Respondent further argues that the passive holding of a domain name without a showing of other circumstances of bad faith at the time of registration and thereafter does not constitute bad faith use, citing Wildfire, Inc. v. Namebase, WIPO Case No. D2007-1611. According to the Respondent, the Complainant cannot demonstrate such circumstances, because the Respondent has never placed content or advertisements on the parking page associated with the disputed domain name, has never directed a third party to place any content or advertising on the page, and now has no control over the removal of such content because of the dispute initiated by the Complainant. The Respondent further asserts that he is not a cybersquatter and has no history of registering domain names incorporating well known third-party trademarks.5

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the disputed domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <gotmilkads.com> is confusingly similar to the Complainant’s GOT MILK? trademark, in which the Complainant clearly has established rights. In considering the question of identity or confusing similarity, the first element of the Policy stands essentially as a standing requirement.6 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

This is commonly tested by comparing the trademark and the disputed domain name in appearance, sound, meaning, and overall impression. Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011. See also RUGGEDCOM, Inc. v. James Krachenfels, WIPO Case No. D2009-0130 (at the heart of paragraph 4(a)(i) is whether the trademark and the disputed domain name look, sound, and “feel” sufficiently similar that Internet users looking for websites associated with the complainant would be likely to arrive at a website at the disputed domain name) (majority opinion).

In this instance, the disputed domain name incorporates the Complainant’s trademark in its entirety, and the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark under the foregoing standard. The confusing similarity resulting from the use of the Complainant’s trademark is not diminished by the addition of the common or descriptive word “ads”, particularly where the Complainant’s GOT MILK? trademark has become well-known in reference to the Complainant’s television and print advertisements. See Pfizer Inc. v. The Magic Islands, WIPO Case No. D2003-0870. See also National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524 (hereinafter “National Association for Stock Car Auto Racing”).

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the Respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The disputed domain name is confusingly similar to the Complainant’s well-known trademark. Further, the record reflects that the disputed domain name since its registration by the Respondent in August 2009 has resolved to a pay-per-click parking site. There is no indication that the Respondent has been commonly known by the disputed domain name, nor indication that the Complainant has authorized the Respondent to use the Complainant’s trademark.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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 maintains that he has established rights or legitimate interests in the disputed domain name based on the intent to use the disputed domain name in connection with a website offering for sale GOT MILK? advertisements. The Respondent has submitted a sworn statement attesting that this was his intention when registering the disputed domain name and he avows that it remains his intention. The Respondent maintains that this constitutes a “nominative fair use” of the disputed domain name under relevant U.S. law, which qualifies as a bona fide use of the disputed domain name in connection with an offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

As has been recognized in panel decisions under the Policy, however, including the decision of the distinguished three-member panel in Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270, cited in the Response, paragraph 4(c)(i) of the Policy requires a showing of “demonstrable preparations to use” the disputed domain name “in connection with a bona fide offering of goods or services” once the Complainant makes a prima facie showing under paragraph 4(a)(ii). While the Panel does not consider the examples provided in paragraph 4(c) of the Policy necessarily to be exhaustive of the ways in which a respondent may demonstrate rights or legitimate interests, reliance solely on intent to use the disputed domain name in connection with a bona fide offering of goods and services is not sufficient to confer rights or legitimate interests under the Policy. Rather, it incumbent upon the Respondent to provide evidence of demonstrable preparations, prior to any notice of the dispute, to make such use. See Document Technologies, Inc. v. International Electronic Communications, Inc., supra. The Respondent has not done so, at least not in respect of the disputed domain name as such.7

The Panel also disagrees with the Respondent’s contention that his “passive holding” of the disputed domain name without more is sufficient in the circumstances of this case to demonstrate rights or legitimate interests under the Policy, once the Complainant makes a prima facie showing. That the Respondent was aware of the Complainant’s trademark when registering the disputed domain name is beyond serious dispute. Further, paragraph 2 of the Policy plainly requires a domain name registrant “to determine whether your domain name infringes or violates someone else’s rights”.

In this instance, the disputed domain name has been used since its registration in August 2009 with a parking page featuring pay-per-click advertising links. The disputed domain name is confusingly similar to the Complainant’s well-known GOT MILK? trademark, such that Internet users looking for websites associated with the Complainant are likely to arrive at the Respondent’s pay-per-click website by mistake. Regardless of who may have benefited from this arrangement, the Respondent, as the disputed domain name registrant, ultimately is responsible for the content of the website. See, e.g., Grisoft, s.r.o. v. Original Web Ventures Inc., WIPO Case No. D2006-1381. Yet the Respondent by his own admission made no effort for more than two years to prevent the disputed domain name from being used to attract Internet visitors to a pay-per-click advertising site. The Respondent acted, if at all, only after being placed on notice by the Complainant of this dispute.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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

(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. However, it is paramount that panels decide cases based on the very limited scope of the Policy. Match.com, LP v. Bill Zag and NWLAWS.ORG, supra. The Policy provides a remedy only in cases where a complainant proves that the disputed domain name has been registered and is being used in bad faith.

After careful consideration of the totality of facts and circumstances reflected in the record, the Panel is not convinced that the Respondent possessed at the time of registration of the disputed domain name the bad faith intent to exploit or profit from the Complainant’s trademark rights. While, as noted earlier, the Respondent has not used or made a showing of demonstrable preparation to use the disputed domain name with a website offering GOT MILK? advertisements for sale, his claim to have registered the disputed domain name with the intention of doing so is plausible. There is nothing in the record reflecting that the Respondent is a professional domainer, nor evidence that the Respondent has in the past engaged in a pattern of registering domain names comprised of the well-known trademarks of third parties. At the same time, based on the parties’ submissions there is an established online market that exists and has existed for some time for the sale (resale) of GOT MILK? advertisements. And the Respondent has presented documentation (in the form of a sworn affidavit) supporting his claim already to have sold GOT MILK? advertisements on eBay.

To the Panel’s appreciation, the issue in this administrative proceeding is not whether the Respondent (or others) has a right per se to sell (or resell) the Complainant’s GOT MILK advertisements. Rather, the issue is whether the Respondent consistent with the Policy may register and use a domain name incorporating the Complainant’s trademark for that purpose. In that regard, the consensus view of UDRP panelists is that a reseller or distributor making a bona fide offering of trademarked goods or services using a domain name which contains the trademark has a legitimate interest in the disputed domain name. See WIPO Overview 2.0, at paragraph 2.3. The leading decision is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (hereinafter “Oki Data”). Under the Oki Data decision, a reseller may establish rights or legitimate interests in a domain name incorporating the manufacturer’s trademark if the following conditions are met:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

Several panel decisions have concluded that the application of the Oki Data criteria may be appropriate under the Policy where the respondent is not purely a reseller or distributor of a trademark owner’s goods or services, so long as the respondent operates a business genuinely revolving around the trademark owner’s goods or services. See National Association for Stock Car Auto Racing, supra; Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, Westin Hotel Management L.P. v. Media Insight a/k/a Media Insights, WIPO Case No. D2010-0211 (hereinafter “Starwood Hotels & Resorts”). Additionally, panels subscribing to the principles established in Oki Data have determined it may be applicable to both authorized and unauthorized resellers. See WIPO Overview 2.0, at paragraph 2.3.

As this Panel has previously noted, such an approach is not only consistent with the Policy, but also is consistent with the nominative fair use principles that apply under the trademark law of the U.S., which is relevant here given that both parties are from the U.S. Starwood Hotels & Resorts, supra. Further, the Oki Data approach considers and applies nominative fair use principles not in the broader context of traditional trademark disputes, but with reference to the limited scope of the Policy, and specifically with respect to the a respondent’s use of the complainant’s trademark in a disputed domain name.

However, it is difficult to make an affirmative finding under these principles in the Respondent’s favor, because as noted the Respondent is not presently making any active “use” of the disputed domain name to offer the goods or services at issue – though he certainly claims an intention to do so, which is supported to some extent by the evidence in this case. This is a factor which has given the Panel serious pause for thought in so far as the assessment of the Respondent’s likely intentions on registration of the disputed domain name are concerned. Does the fact that the Respondent’s claimed intentions with respect to the disputed domain name have not yet materialized mean that the Panel should therefore conclude that the disputed domain name was registered and is being used in bad faith because it is passively held? In the circumstances of this present case, the Panel is not prepared to go that far on this record.

The Panel is not persuaded that the facts and circumstances of this case are sufficiently analogous to those in Telstra Corporation Limited v. Nuclear Marshmallows, supra, to sustain a finding of bad faith registration and use based on the Respondent’s passive holding of the disputed domain name. As the panel in Telstra made clear, a finding of bad faith based on passive holding necessarily depends on the particular facts of a specific case. The Telstra panel relied on several bad faith indicators that are not clearly present in the instant record, (which, unlike the Telestra case includes a submission of a sworn statement) and found bad faith based on a conclusion that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate”. The Panel is unable to reach such a categorical conclusion in this case for the reasons discussed above.

The Respondent in his sworn statement denies any benefit from the advertising links on the parking page to which the disputed domain name resolves. The record indicates that the parking page was provided by the registrar GoDaddy.com, Inc., a factor that supports the Respondent’s averment not to be directly responsible for the links appearing on the site. While the Panel does not retreat from the basic precept that the domain name registrant ultimately is responsible for the content on his or her website, the Panel still is not convinced from the overall facts and circumstances in the record before it at present that the Respondent (who does not appear to have a history of cybersquatting) registered the disputed domain name intending to trade on the Complainant’s trademark in order to generate pay-per-click revenue.

Finally, whatever the hotly disputed circumstances surrounding the Respondent’s offer to sell the disputed domain name to the Complainant may have been, the Panel also is not persuaded from the totality of circumstances in the record in these Policy proceedings that the Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainant at an exorbitant cost.

In conclusion, the Panel wishes to note that while it is to some extent, giving the Respondent the benefit of the doubt with respect to its claimed intended use of the disputed domain name, if in the future such use would not materialize, or the use would change in such a way to suggest a clear abusive intent, this may well constitute a relevant consideration in any future dispute brought over the disputed domain name,

In any event, for the reasons outlined above, the Panel finds that the Complainant has, on balance, failed in these Policy proceedings to satisfy the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

William R. Towns
Sole Panelist
Dated: December 5, 2011



1 The Respondent cites as authority Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011), and Toyota Motor Sales v. Tabari, 610 F.3d 1171 (9th Cir. 2010).

2 In addition, the Respondent takes exception to the Complainant’s contention that the Respondent offered no explanation why he selected the disputed domain name or why he had rights or legitimate interests therein on the grounds that he was never asked by the Complainant’s counsel to do so during their earlier conversations.

3 The Respondent also denies that he encouraged the Complainant to bring this administrative proceeding so that the Respondent could “garner publicity” for his law firm.

4 The Respondent maintains that the only case cited by the Complainant for the proposition that the any profit derived by GoDaddy.com, Inc. can be imputed to the Respondent, Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912, is inapplicable and mistakenly relies on principles of agency.

5 In a footnote, the Respondent observes that while he is not pursuing a claim for reverse domain name hijacking he believes the record in this case would satisfy such a claim.

6 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.

7 The Panel will further consider the Respondent’s claims of sales of GOT MILK? advertisements on eBay under the next element below.

 

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