WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The California Milk Processor Board v. Robert Strong
Case No. D2012-1261
1. The Parties
Complainant is The California Milk Processor Board of San Clemente, California, United States of America (the “United States” or “U.S.”), represented by Sipara, United Kingdom of Great Britain and Northern Ireland (the “U.K.”).
Respondent is Robert Strong of Beachwood, New Jersey, United States.
2. The Domain Name and Registrar
The disputed domain name <gotmilkprices.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2012. On June 21, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On June 21, 2012, GoDaddy.com, LLC 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 June 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was set as July 17, 2012. Respondent did not submit any Response. Accordingly, the Center notified of Respondent’s default on July 18, 2012.
Respondent sent an email communication to the Center on July 21, 2012. On July 26, 2012, Complainant forwarded to the Center an exchange of email communications that it had had with Respondent on July 25 and 26, 2012. On August 22, 2012, Respondent sent a further email communication to the Center.
The Center appointed Jordan S. Weinstein, Sandra J. Franklin and Steven Auvil as panelists in this matter on August 24, 2012. The Panel finds that it was properly constituted. Each member of 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 is the owner of the trademark GOT MILK?, registered in the United States and in the European Union in multiple International Classes, as well as in Ireland, South Africa, the U.K. and, through the Madrid Protocol, Botswana, Ghana, Kenya, Lesotho, Liberia, Namibia, Sierra Leone, Swaziland and Zambia. In the U.S., where Respondent is located, Complainant’s registration for GOT MILK? (Stylized) issued on December 29, 2009 and has a constructive use date of December 18, 2008. Both of these dates are prior to Respondent’s registration of the disputed domain name on September 16, 2011.
5. Parties’ Contentions
In addition to asserting ownership of its numerous registered trademarks for GOT MILK?, Complainant asserts that it has used the mark extensively in media and advertising campaigns since 1993, to promote the consumption of cow’s milk. Complainant asserts that its first television advertisement in 1993 was named one of the ten best advertisements of all time, and in 2005, its tagline GOT MILK? was named the most culturally influential tagline since the advent of broadcast television. The estimated number of page views of Complainant’s “www.gotmilk.com” website exceeded 1.8 million annually as of 2011.
Previous UDRP panels have recognized Complainant’s rights in the GOT MILK? trademark. See The California Milk Processor Board v. Edwin Caballero (<1800gotmilk.net>), WIPO Case No. D2011-0951 (<1855gotmilk.com>), and The California Milk Processor Board v. Mattia Fraulini, WIPO Case No. D2011-1077 (<gotmilkband.com>). Further, the panel in The California Milk Processor Board v. Asa Development, WIPO Case No. D2011-0914 (<momgotmilk.com>) found Complainant’s GOT MILK? mark to be distinctive and well-known in the United States.
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s mark GOT MILK?, merely omitting the question mark and adding the generic word “prices.” Complainant asserts that the addition of this descriptive or generic word to Complainant’s entire mark is to be considered confusingly similar for purposes of paragraph 4(a)(1) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name because Respondent had not used or made demonstrable presentations to use the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services prior to notice of the dispute, that the disputed domain name resolves to a parking page with sponsored links, some of which relate to organic milk, milk powder and milk crates, that Respondent has not commonly been known by the disputed domain name, and that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Complainant asserts that the presence of sponsored links related to the aforementioned milk products and services on Respondent’s parking page indicate that Respondent is using the disputed domain name for commercial gain, and not making a legitimate noncommercial or fair use of the disputed domain name.
Complainant asserts that it wrote to Respondent on May 25, 2012 inviting Respondent to inform Complainant if any of the factors set out in paragraph 4(c) of the Policy applied to it. As of the time Complainant submitted the Complaint, it asserts that it had not received a response from Respondent.
Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith because Respondent has placed links on his website attached to the disputed domain name to generate Internet traffic in an attempt to attract visitors by exploiting the goodwill of Complainant’s mark. Complainant asserts that this constitutes bad faith registration and use of the disputed domain name under paragraph 4(b)(iv) of the Policy. Complainant asserts that the links on Respondent’s website resolve to other sites competing directly with Complainant in the area of goods and services relating to milk, which attempt to mislead the public and create a false association.
Complainant asserts that its reputation in the United States, where Respondent is located, is of such renown that Respondent in all likelihood knew of the existence of Complainant’s trademark at the time the disputed domain name was registered, and that the notoriety of Complainant’s GOT MILK? trademark increases the likelihood of confusion with the disputed domain name. Complainant asserts that Respondent’s incorporation of Complainant’s well-known trademark into the disputed domain name with no plausible explanation for doing so may itself be an indication of bad faith. Complainant asserts that Respondent is clearly trying to capitalize on the confusion of users attempting to reach Complainant’s website, and that Respondent’s incorporation of the terms “got milk” in the disputed domain name was an attempt intentionally to create a likelihood of confusion as to the source, sponsorship, affiliation and endorsement of Respondent’s website. Combining the aforementioned assertions with Respondent’s failure to avail himself of the opportunity to explain to Complainant his reasons for registering the domain name by responding to Complainant’s aforementioned letter of May 25, 2012, Complainant submits that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
Complainant has requested that the disputed domain name be transferred to it.
The Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
In order to prevail in a proceeding under the Policy, a complainant must typically prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
However, the Policy, paragraph 4(b), states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [Respondent has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to 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) [Respondent 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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.
These circumstances are non-exclusive, and a panel may consider other circumstances as constituting registration and use of a domain name in bad faith.
Where, as here, Respondent is in default, the Panel may draw such inferences as it considers appropriate, according to the Rules, paragraph 14(b).
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <gotmilkprices.com> is confusingly similar to Complainant’s registered and well-known trademark GOT MILK?. The disputed domain name contains Complainant’s mark in its entirety except for the question mark, a trivial omission which, the Panel notes, could not appear in a domain name letter string in any case. Deleting the “?” at the end of the disputed domain name is a trivial difference and does nothing to avoid confusing similarity. See The California Milk Processor Board v. Fernando Howard, WIPO Case No. D2011-1025 (<egotmilk.com>); The California Milk Processor Board v. Mattia Fraulini, WIPO Case No. D2011-1077 (<gotmilkband.com>). The sponsored links on Respondent’s website resolve to commercial business websites including milk products and services, products related to the goods and services identified by Complainant’s registered trademarks. The word “prices” fails to diminish the likelihood of association between the disputed domain name and Complainant’s well-known trademark, as it could indicate to Internet users that the connected website is for locating the best price for milk sponsored by Complainant.
The Panel notes that Complainant’s registrations for GOT MILK? do not cover milk per se, nor even International Class 29, which includes milk. This Panel finds that the omission does not diminish Complainant’s case, however, because the registration identifies a cornucopia of promotional items to which the mark is affixed, from ornamental novelty magnets to posters, umbrellas, novelty license plates, golf towels, t-shirts, and buttons. Furthermore, the registration includes food products complimentary to milk, such as chocolate milk and chocolate powder. Furthermore, Complainant has made of record its efforts to publicize its GOT MILK? trademark to promote the drinking of milk, and provided evidence that the efforts have borne fruit. Incorporating GOT MILK? in its entirety into the disputed domain name does not fail to cause a likelihood of confusion simply because milk is not among the products covered by Complainant’s U.S. registration.
The Panel finds that Complainant has established element 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Complainant asserts, and Respondent has failed to rebut, that Respondent has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services; that Respondent has not been commonly known by the disputed domain name, and that Respondent has not made a legitimate noncommercial or fair use of the disputed domain name. In addition to its default in this proceeding, Respondent also failed to respond to Complainant’s good faith effort prior to filing this Complaint to ascertain from Respondent what legitimate use of the disputed domain name Respondent might have been making. In view of the foregoing, this Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in respect of the disputed domain name, which showing Respondent has failed to rebut. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 and cases cited therein. As a result, Complainant has established the second element, paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Panel finds that Complainant has provided sufficient evidence to satisfy paragraph 4(a)(iii) of the Policy, namely that by using the disputed domain name, Respondent intentionally intended to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
In view of the renown of Complainant’s GOT MILK? trademark, dating from long prior to registration of the disputed domain name, and in view of Respondent’s default in this proceeding, this Panel makes the inference that Respondent was aware of the existence of Complainant’s well-known trademark when he registered the disputed domain name, and intended to exploit the goodwill of Complainant’s mark by using the disputed domain name incorporating the entire word portion of Complainant’s GOT MILK? trademark and to generate Internet traffic for commercial gain resulting from the consumer confusion Respondent likely intended to create.
As a result, Complainant has established the third element 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 <gotmilkprices.com> be transferred to Complainant.
Jordan S. Weinstein
Sandra J. Franklin
Dated: September 10, 2012