WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The California Milk Processor Board v. Justin James
Case No. D2011-1816
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 Justin James of Rockford, Illinois, United States of America.
2. The Domain Name and Registrar
The disputed domain name <gotmilk-gaming.com> (the “Domain Name”) is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2011. On October 25, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the Domain Name. On October 25, 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 for the Domain Name.
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 November 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2011.
The Center appointed Michelle Brownlee as the sole panelist in this matter on December 2, 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 owns United States Trademark Registration Number 3730703 for the mark GOT MILK? (stylized) in connection with a variety of goods in International Classes 6, 9, 10, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28 and 30, including magnets, flashlights, pens, bumper stickers, tote bags, umbrellas, mugs and cups, lunch boxes, clothing and food items. The Complainant also owns European Community Trade Mark Registration Number 8527178 for GOT MILK? for an even broader range of goods in the same classes that are covered by the United States Registration. The Complainant also owns registrations for these marks in several other countries, including India and several countries in Africa.
The Domain Name was registered on January 2, 2010.
5. Parties’ Contentions
The Complainant began using the tagline “Got Milk?” in advertising to promote the consumption of cow’s milk in 1993. This advertising was named one of the ten best advertisements of all time in a <usatoday.com> poll. In 2005, <taglineguru.com> named GOT MILK? as the most culturally influential tagline since the advent of broadcast television. Recent ad campaigns including the slogan have featured high profile celebrities such as David Beckham, Beyoncé Knowles and Britney Spears. The Complainant operates a web site at the domain name <gotmilk.com>. This web site receives more than 1.8 million page views annually.
The Complainant contends that the Domain Name is confusingly similar to its GOT MILK? trademark. The Complainant argues that the Respondent has no rights to or legitimate interests in respect of the Domain Name, as the Domain Name is used simply for a parking page where the Respondent presumably gets revenue for click-throughs to the links listed on the page. Finally, the Complainant submits that the Respondent has registered and is using the Domain Name in bad faith. The Complainant argues that its mark is so well known that the Respondent must have been aware of it when choosing to register the Domain Name. The Respondent did not respond to a cease and desist letter sent by the Complainant, and, therefore, has not provided any alternative explanation for his actions.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the GOT MILK? trademark. There are many UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (<christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (inter alia. <leasinglexus.com> and <lexuselite.com> confusingly similar to LEXUS). Accordingly, the Panel finds that the Domain Name, which pairs the GOT MILK? trademark with the generic term “gaming” is confusingly similar to the Complainant’s GOT MILK? trademark.
The Panel finds that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; 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 at issue.
In this case, the Respondent has not presented evidence that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services; that the Respondent is commonly known by the Domain Name; that the Respondent is making a legitimate noncommercial or fair use of the Domain Name; or in any other way refuted the Complainant’s prima facie case.
The Complainant has presented evidence, which was not refuted by the Respondent, that the Respondent is using the Domain Name to provide links to web sites in order to collect click-through referral fees. This activity cannot under the circumstances be considered a bona fide offering of goods or services. See, e.g., PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.
The Panel finds that the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
“(i) circumstances indicating that the respondent has registered or acquired the domain name at issue 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 documented out-of-pocket costs directly related to the domain name; or
(ii) 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.”
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Panel finds that the Complainant’s trademark is well-known within the United States, and the Respondent therefore probably would have been aware of this trademark and the confusion that would be likely to result from the use of the Domain Name. The Respondent’s use of the Domain Name to earn referral fees by linking to other web sites attracts Internet users to the Respondent’s site by creating confusion as to source and results in commercial gain to the Respondent.
The Panel finds that the Complainant has satisfied the third element 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 <gotmilk-gaming.com> be transferred to the Complainant.
Dated: December 15, 2011