WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The California Milk Processor Board v. Domains by Proxy Inc / (ERA) Holiday Real Estate, Inc.

Case No. D2011-1870

1. The Parties

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

Respondent is Domains by Proxy Inc / (ERA) Holiday Real Estate, Inc. of Ocean City, Maryland, U.S.

2. The Domain Name and Registrar

The disputed domain name <gotmilko.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2011. On October 31, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On November 1, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent Holiday Real Estate, Inc. is listed as the registrant and providing its 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 November 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2011. Respondent filed an informal response with the Center on November 11, 2011.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on November 24, 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 California Milk Processor Board is the proprietor of numerous registrations around the world for its GOT MILK? mark including U.S. Registration Nos. 3,730,703; 2,689,741; and 1,903,870 (hereinafter “the GOT MILK? Mark” or “the Mark”). Complainant also owns the Internet domain names <gotmilk.com> and <gotmilk.net>. Since 1993, Complainant has used the GOT MILK? Mark 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, in the U.S. and internationally. According to “www.sitetrail.com”, the estimated number of page views of Complainant’s “www.gotmilk.com” website exceeds 1.8 million annually.

The Domain Name was registered on May 4, 2002 with Domains By Proxy (“DBP”), a service that permitted Respondent to withhold its contact information from the public. Once Complainant commenced this action, DBP put Complainant’s counsel (Mr. Byers) in contact with Ted Smith who identifies himself as Respondent’s Director of Operations, as well as a Rental Manager, Sales Agent and Realtor. Before commencing this action, Mr. Byers communicated with Mr. Smith in an effort to settle this dispute. According to an email of record dated September 22, 2011 written by Mr. Byers (to the file) he claims that Mr. Smith informed him that Respondent got the idea for the Domain Name from its owner’s last name “Milko”. According to Mr. Byers in this email, he asked Mr. Smith why the company chose to add the word “got” before “milko” for the Domain Name and Mr. Smith responded that he did not know and it wasn’t relevant. J. Milko is identified on Respondent’s website as “Broker/President” and D. Milko is identified as “Vice President/Agent”.

5. Parties’ Contentions

A. Complainant

The Domain Name is very similar to the GOT MILK? Mark, which it reproduces in its entirety with the addition of an “o” at the end. The addition of the “o” does not avoid confusion. The generic word “.com” is an integral and technical part of the Domain Name that can be disregarded in determining confusing similarity. The lack of “?” in the Domain Name is trivial and does nothing to avoid confusing similarity. Further, the omission of the question mark is unlikely to have been Respondent’s choice as traditionally the domain name system only supports ASCII characters a-z, 0-9 and the hyphen.

There is no evidence of Respondent’s demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The Domain Name simply redirects the public to Respondent’s main site “www.holidayoc.com” for Holiday Real Estate. There is no connection between the terms comprised in the Domain Name and Respondent’s real estate activities and, therefore, no reason for Respondent to adopt the Domain Name other than to capitalize on the valuable goodwill associated with the Mark. The redirection to Respondent’s real estate website cannot be sufficient to demonstrate a bona fide offering of goods and services. Respondent did not provide Complainant’s counsel with a rationale for its selection of the name “gotmilko” even though the business owner’s last name is “Milko.”

The Domain Name was registered and is being used in bad faith. It incorporates a well-known trademark into a domain name with no plausible explanation. Further, Respondent’s intent is to divert internet traffic by creating a likelihood of confusion. Based on the reputation of the GOT MILK? Mark, Respondent in all likelihood knew of the existence of the Mark when it registered the Domain Name.

B. Respondent

Respondent Holiday Real Estate is a resort property sales and vacation rentals company in Ocean City. The company is owned by J. and D. Milko. D. Milko is its Vice President. It is quite common for realtors to use a marketing campaign highlighting their availability to customers and clients. Respondent has registered both <getmilko.com> and <gotmilko.com> to further this campaign. The intent of the campaign is to reach or “get” milko or you have reached or “got” milko to sell or buy your next property. The similarity to Complainant’s trademark is purely coincidence. In no way is the Domain Name an aberration of the GOT MILK? Mark or confusingly similar to consumers. Nobody would confuse a realtor selling homes and condos with Complainant promoting milk sales and consumption. The domain names <getmilko.com> and <gotmilko.com> direct Internet users to a sales listings page on Respondent’s website where D. Milko’s listings are advertised. D. Milko uses email addresses that incorporate both getmilko and gotmilko. D. Milko’s cell phone voicemail starts with the message “You've just got Milko...”

A Google web search for the GOT MILK? Mark delivers over 18 million results yet a review of the first 20 result pages delivers no results for Respondent or D. Milko. The results display hundreds of blatantly improper uses of the GOT MILK? Mark. Complainant has not demonstrated that Respondent and D. Milko’s use of her own name in <gotmilko.com> is in any way confusing to consumers interested in milk consumption nor that Respondent or D. Milko have used the Domain Name in bad faith.

Respondent’s use of the Domain Name does not infringe Complainant’s GOT MILK? Mark. Respondent has the right to use the company owner’s name in any form of advertising. Loss of the Domain Name will result in a disruption of Respondent’s advertising efforts, a minimizing of the effectiveness of their other domain name <getmilko.com>, loss of a critical email channel and a financial hardship for a small, family-owned company.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is undisputed Complainant has rights in the GOT MILK? Mark that it has been using since 1993. In addition to its long-standing common law rights, Complainant owns a number of trademark registrations for the Mark including U.S. Trademark Registration Nos. 1,903,870 and 2,689,741. Thus, the GOT MILK? Mark is entitled to a presumption of validity. See Overview of WIPO Panel Views on Selected UDRP Questions 2.0 (“WIPO Overview 2.0”), at paragraph 1.1 (“If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.”).

Respondent asserts that the Domain Name <gotmilko.com> is not confusingly similar to the GOT MILK? Mark because “[n]obody would confuse a realtor selling homes and condos with Complainant promoting milk sales and consumption.” The Domain Name entirely incorporates Complainant’s GOT MILK? Mark. The addition of the “o” and “.com” at the end of Complainant’s Mark and the elimination of the question mark do not affect the determination of confusing similarity. The California Milk Processor Board v. Purple Bucquet, WIPO Case No. D2011-1185. Previous panels have found that a domain name wholly incorporating a complainant’s registered mark may be sufficient 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. Insofar as Respondent appropriated the dominant portion of Complainant’s GOT MILK? Mark (i.e., gotmilk) in registering <gotmilko.com> as the Domain Name, the Panel finds that the Domain Name is confusingly similar to the Mark for purposes of these proceedings. Accordingly the Panel disagrees with Respondent that the Domain Name is not confusingly similar to the GOT MILK? Mark.

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.” (Policy, paragraph 4(c)).

Complainant argues that Respondent has failed to establish rights or legitimate interests in the Domain Name because Respondent has not made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. That is, it simply redirects the public to Respondent’s main site “www.holidayoc.com” for Holiday Real Estate. There is no connection between the terms comprised in the Domain Name (“gotmilko”) and Respondent’s real estate activities and, therefore, no reason for Respondent to adopt the Domain Name other than to capitalize on the valuable goodwill associated with the Mark. In discussions between the parties’ representatives that predated the filing of this proceeding, Respondent did not provide Complainant’s counsel with a rationale for selecting the name “gotmilko.com” even though the business owner’s last name is “Milko.” The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the Domain Name.

In an attempt to rebut Complainant’s prima facie case, Respondent argues that it “has the right to use the company owner’s name in any form of advertising.” The dispute here, however, is not whether Respondent can use “D. Milko” as its domain name. The dispute is over the Domain Name <gotmilko.com>. There is no evidence in the record that Respondent, or its Vice President, was ever commonly known by “gotmilko.com”. Respondent’s website indicates that D. “Milko” is the Vice President of Respondent not D. “Gotmilko.com.”

Respondent also argues that it has rights or legitimate interests in the Domain Name because it is quite common for realtors to use a marketing campaign highlighting their availability to customers and clients. According to Respondent it registered both <getmilko.com> and <gotmilko.com> to further such a campaign. More specifically, the intent of the campaign is that you reach or “get” Milko or you have reached or “got” Milko to sell or buy your next property. Respondent claims that D. Milko uses email addresses that incorporate both “getmilko” and “gotmilko” and that D. Milko’s cell phone voicemail starts with the message “You’ve just got Milko...” There are a number of problems with Respondent’s argument. As an initial matter, there is nothing in the record, including on Respondent’s website, that evidences a “marketing campaign” to highlight Respondent’s availability either generally to customers and clients or, more specifically, in terms of the public reaching (“get or got”) the Milko’s. Since the purpose of such a “campaign” is to get the word out about Respondent’s availability, the Panel would expect to see evidence of an actual “campaign” that might include prominent advertising on its website, on brochures, on stationary, and on business cards. For example Respondent’s website features prominently the tag line “Serving Ocean City for Over 35 Years” at the top of every page of its website to indicate clearly to the public how well-established Respondent is in Ocean City. The website is bereft of any indication that Respondent has launched a marketing campaign as indicated for the first time in its submission that touts its or its agents’ (or the Milko’s) availability to customers and clients. Furthermore, putting oneself in the position of a current or potential customer or client, it is difficult for the Panel to believe that an existing customer or client looking for their realtor D. Milko or a new customer or client searching for a realtor would type in <gotmilko.com> to find either. For these reasons, the Panel finds Respondent’s marketing campaign explanation to be implausible.

Respondent’s website has the address: “www.holidayoc.com/ocean_city_maryland_real_estate_sales”. This address actually relates to Respondent’s business, which it describes as a resort property sales and vacation rentals company in Ocean City Maryland. On the other hand, the Domain Name <gotmilko.com> does not relate to Respondent’s business. As Complainant points out, the Domain Name simply redirects the public to Respondent’s website. That is, Respondent adopted a Domain Name that is confusingly similar to the GOT MILK? Mark to capitalize on the notoriety associated with it. That was the real “marketing campaign” here. Respondent argues that it “has the right to use the company owner’s name in any form of advertising.” But that is not what Respondent did. The dispute is not over <jerrymilko.com> or “denisemilko.com”; it’s over <gotmilko.com>.

Respondent also laments that the loss of the Domain Name “will result in a disruption of Respondent’s advertising efforts, a minimizing of the effectiveness of [<]getmilko.com[>], loss of a critical email channel and a financial hardship for a small family owned company.” Considering the fact that Respondent has a domain address for its website and is infringing Complainant’s Mark using the Domain Name, Respondent does not have a legitimate loss to allege.

For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered the Domain Name in bad faith. Respondent registered the Domain Name on May 4, 2002, approximately nine (9) years after Complainant began using the GOT MILK? Mark. Given the notoriety of the GOT MILK? Mark, as well as the U.S. trademark registrations for it, the Panel finds it is highly unlikely Respondent was unaware of the GOT MILK? Mark when it registered the Domain Name. Indeed, the Panel believes it is more likely that Respondent intentionally sought to take advantage of the play on words from the well-known GOT MILK? Mark in registering <gotmilko.com>. If Respondent simply wanted to reflect its President/Vice President’s surname in a domain name it could have registered simply <milko.com> or their full names <JerryMilko.com> or <DeniseMilko.com>. Respondent opted to register a domain name that is confusingly similar to Complainant’s well-known Mark.

With regard to bad faith use, as discussed above, Respondent already has a domain address for its website that reflects its business. It is using the Domain Name as a lure to divert the public to its website, taking advantage of the fact that <gotmilko.com> is essentially a typographical misspelling of the GOT MILK? Mark. Respondent laments that it should be able to use the “Milko” surname in advertising but, as discussed above, it has chosen not to do so but, rather, to appropriate Complainant’s Mark. The Panel concludes that by using the Domain Name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s GOT MILK? Mark within the meaning of paragraph 4(b)(iv) of the Policy. Even if the Internet users who access Respondent's website may conclude that it is not what they were originally looking for, Respondent has already succeeded in its purpose of using Complainant’s mark to attract users for commercial gain. See Red Bull GmbH v. Unasi Management Inc., WIPO Case No. D2005-0304.

For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <gotmilko.com> be transferred to Complainant.

Harrie R. Samaras
Sole Panelist
Dated: December 8, 2011