WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The California Milk Processor Board v. Purple Bucquet
Case No. D2011-1185
1. The Parties
The Complainant is The California Milk Processor Board of San Clemente, California, the United States of America, represented by Sipara, the United Kingdom of Great Britain and Northern Ireland.
The Respondent is Purple Bucquet, of Panama City, Panama.
2. The Domain Name and Registrar
The Disputed Domain Name <got-milk.com> is registered with Power Brand Center Corp. (“Registrar”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2011. On July 13, 2011, the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the Disputed Domain Name. After several attempts to contact the Registrar, with no reply, the Center proceeded on the basis of potentially incomplete information and certain assumptions including the accuracy of information in its WhoIs database.
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 August 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2011.
The Center appointed Alistair Payne as the sole panelist in this matter on September 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
The Complainant is The California Milk Processor Board which is comprised of 11 fluid milk processors in the State of California in the United States of America. The Complainant owns numerous registered trademarks for the trademark GOT MILK?, including in the United States of America under number 3730703 registered on December 29, 2009 and in the European Union under number 008527178, registered on June 23, 2010. The Complainant operates a website at the domain name <gotmilk.com>.
The Disputed Domain Name was first registered on February 21, 1997.
The Complainant submits that it owns registered trademark rights in its GOTMILK? trademark as noted above and has used the mark since 1993 to promote the consumption of cow's milk. The Complainant says that its first television advertisement in 1993 was named one of the ten best advertisements of all time in a USATODAY.com poll. Since that time it asserts that it has undertaken numerous advertising campaigns featuring high profile figures and that its website at “www.gotmilk.com” exceeds 1.8 million views per year.
The Complainant submits that the Disputed Domain Name only differs from its GOTMILK? registered trademark in that it does not feature a question mark and instead incorporates a hyphen between the words “got” and “milk”. Accordingly, the Complainant submits that the Disputed Domain Name <got-milk.com> is identical or confusingly similar to its GOTMILK? trademark.
The Complainant notes that the Respondent has not replied to a cease and desist letter from the Complainant, dated May 27, 2011 and that the Disputed Domain Name resolves to a parking site that contains a number of links to adult materials. The Complainant notes that while there is nothing per se illegitimate in using a domain parking service, that the use of a domain name which is nearly identical to the Complainant's trademark does not provide rights or legitimate interests under the Policy where 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" (Owens Corning v. NA, WIPO Case No. D2007-1143).
As far as the third element of the Policy is concerned, the Complainant states that the Disputed Domain Name was registered and is being used in bad faith. The Complainant firstly says that the reputation of its GOTMILK? trademark is such that Respondent in all likelihood knew of the existence of Complainant's trademarks at the time when the Disputed Domain Name was registered. In addition, the Complainant submits that the Respondent is using the Disputed Domain Name to divert Internet traffic by creating a likelihood of confusion under paragraph 4(b) (iv) of the Policy. It says that the website at the Disputed Domain Name has been set up to provide links including "breast enlargement", "erectile dysfunction" and other related themes on a pay-per-click basis and that in view of the family friendly nature of the Complainant's trademark, such links are especially damaging to the Complainant's reputation, considering that Internet users searching for the Complainant's trademark online are likely to be children.
In addition, the Complainant submits that the Respondent's attempts to conceal its identity and its previous abusive domain name registrations are also indicative of its bad faith. It alleges that the Respondent attempted to conceal its identity through Privacy Proxy services offered by PrivacyProtect.org. and provides in evidence correspondence between the Complainant's representatives and PrivacyProtect.org which shows that between June 3, 2011 and June 24, 2011, the Complainant made repeated attempts to obtain the name and address details of the Respondent. As the Respondent failed to provide its contact details in breach of PrivacyProtect.org's Acceptable Use Policy, the Complainant notes that those Privacy Proxy services were withdrawn, resulting in the underlying Whols data being published.
The Complainant also submits that the Respondent has registered the Disputed Domain Name in order to prevent the Complainant from reflecting the trademark in a corresponding domain name, and has engaged in a pattern of such conduct. The Complainant submits a list of 18 UDRP decisions finding abusive domain name registrations made by the Respondent, including in particular: Mac Trucks Inc, v. Privacypratect.org/Purple Bucquet, WIPO Case No. D2011-0089; Starwood Hotels & Resorts Worldwide Inc. and Westin Hotel Management LP v. PrivacyProtect.org/Purple Bucquet, WIPO Case No. D2010-0525; Elite Licensing Company SA, Elite Model Management v. Privacyprotect.org/Purple Bucquet, WIPO Case No. D2010-1441; Government Employees Insurance Company v. PrivacyProtect.org/Purple Bucquet, WIPO Case No. D2010-1746; AB Electrolux v. Purple Bucquet/PrivacyProtect.org, WIPO Case No. D2010-1853; Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Purple Bucquet/Privacy Protect.org, WIPO Case No. D2010-1787; Morningstar, Inc. v. Purple Bucquet c/o Purple, NAF Case No. FA1002001310402; Wells Fargo & Company v. Purple Bucquet, NAF Case No. FA1009001347807; Morgan Stanley v. Purple Bucquet / Purple, NAF Case No. FA1007001336613; Continental Airlines, Inc. v. Purple Bucquet / Purple, NAF Case No. FA1007001334508; AOL Inc. v. Purple Bucquet, NAF Case No. FA1007001334349.
The Complainant also notes that the Respondent acquired (by transfer or otherwise) the Disputed Domain Name after June 25, 2008 and that prior to that time it had been registered to the company VDomains at an address in California. A cease and desist letter to VDomains was returned as being undeliverable. The Complainant says that it is unaware of the circumstances in which the Respondent acquired the Disputed Domain Name but submits that the strength of the Complainant's trademark together with the surrounding circumstances including the Respondent’s pattern of conduct suggests that the transfer amounted to an example of cyber flight.
The Complainant notes that the Respondent has not replied to its letter of June 3, 2011 and therefore the Complainant is unaware of any explanation from the Respondent which would justify the use of the Disputed Domain Name in this way.
The Respondent did not reply to the Complainant’s contentions.
5. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trademark rights in its GOT MILK? trademark under registration numbers 3730703 in the United States of America and in the European Union under Community Trade Mark 0008527178.
The Disputed Domain Name differs from the Complainant’s trademark only in that it has a hyphen between the words “got” and “milk” and does not feature a question mark. The key element however is the word mark “GOT MILK?” which the Panel finds to be a distinctive expression even though it is based on common English words. This expression is wholly included in the Disputed Domain Name and the Panel finds that the differences between the Disputed Domain Name and the Complainant’s registered trademark are not material for the purposes of a determination of confusing similarity. The Panel notes that previous panels have found that hyphenation is immaterial for this purpose (see Lockheed Martin Corporation v.Deborah Teramani, WIPO Case No. D2004-0836).
As a result, the Panel finds that the Complainant has demonstrated its trade trademark rights and finds that the Disputed Domain Name <got-milk.com> is confusingly similar to the Complainant’s trademark GOT MILK?. The Complaint therefore succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
There is no evidence before the Panel to demonstrate that the Respondent is commonly known by a trademark that is equivalent to the Disputed Domain Name or otherwise has trademark rights in an equivalent trademark.
As further set out below in relation to bad faith, the Panel notes that the Respondent does not appear to use the Disputed Domain Name for a bona fide purpose and has made no effort to respond to the Complainant’s cease and desist letter or to explain itself in these proceedings. As a result the Panel finds that there is nothing before it to rebut the case made by the Complainant under this element of the Policy and the Panel therefore finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Complaint succeeds under the second element of the Policy.
C. Registered and Used in Bad Faith
The Disputed Domain Name was first registered in 1997 and as at June 2008, it was registered to VDomains of Sherman Oaks, California and subsequently transferred to the Respondent. The Complainant first sent a cease and desist letter to VDomains in June 2008 but received no response. In 2011, it appears to have reinitiated its efforts to contact the owner of the Disputed Domain Name but on searching, the Complainant discovered that a privacy service was currently protecting the registrant’s details. Following the registrant’s failure to contact the privacy service upon the Complainant’s request, the privacy service removed privacy protection from the registration details and the Respondent’s details appeared on the record.
Whether transfer to the Respondent followed on or not from the Complainant’s initial approach to VDomains and amounts to an example of “cyber flight” cannot be determined based on the material before the Panel.
What is clear to the Panel is that the Respondent made no attempt to respond to the Complainant’s or the privacy service’s attempts to contact it, which is at least indicative of bad faith.
It appears that the Respondent did not acquire the Disputed Domain Name before June 2008 and that by this date the Complainant’s trademark GOTMILK? had been extremely well publicized and had gained a substantial reputation. In view of the long list of past cases against the Respondent, as cited above by the Complainant, it seems very likely that the Respondent took a transfer of the Disputed Domain Name in 2008 in full knowledge of the repute attaching to the Complainant’s trademark. The Panel notes that these cases, as set out below, also involved well reputed trademarks owners, mostly based in the United States of America, and that in many cases the Respondent sought to hide its identity using a privacy service and in each case it was found by the panel to have engaged in cybersquatting. See Mac Trucks Inc, v. Privacypratect.org / Purple Bucquet, WIPO Case No. D2011-0089; Starwood Hotels & Resorts Worldwide Inc. and Westin Hotel Management LP v. PrivacyPratect.org / Purple Bucquet, WIPO Case No. D2010-0525; Elite Licensing Company SA, Elite Model Management v. Privacyprotect.org / Purple Bucquet, WIPO Case No. D2010-1441; Government Employees Insurance Company v. PrivacyProtect.org / Purple Bucquet, WIPO Case No. D2010-1746; AB Electrolux v. Purple Bucquet / PrivacyProtect.org, WIPO Case No. D2010-1853; Dr. Martens International Trading GmbH,Dr. Maertens Marketing GmbH v. Purple Bucquet / Privacy Protect.org, WIPO Case No. D2010-1787; Morningstar, Inc. v. Purple Bucquet c/o Purple, NAF Case No. FA1002001310402; Wells Fargo & Company v. Purple Bucquet, NAF Case No. FA1009001347807; Morgan Stanley v. Purple Bucquet / Purple, NAF Case No. FA1007001336613; Continental Airlines, Inc. v. Purple Bucquet / Purple, NAF Case No. FA1007001334508; AOL Inc. v. Purple Bucquet, NAF Case No. FA1007001334349.
The Complainant further submits that the Respondent is using the Disputed Domain Name to divert Internet traffic by creating a likelihood of confusion under paragraph 4(b)(iv) of the Policy. Based on the nature of the “pay-per-click “links which have nothing to do with milk consumption but include, in particular, links for breast enlargement, erectile dysfunction and other related products and services, the Panel infers that this is unlikely to be a simple placekeeper site created automatically by the place keeper provider and over which the Respondent has no element of control. The links would appear to have been chosen for commercial gain and certainly have no relation to the nature of the Disputed Domain Name. When taken together with the Respondent’s use of a privacy service, its history of past conduct of cybersquatting and its failure to respond to the Complainant’s cease and desist letter or to explain itself in the course of these proceedings, then the only reasonable inference, in the opinion of the Panel, is that the Respondent has registered and is using the Disputed Domain Name in bad faith in terms of paragraph 4 (b)(iv) of the Policy.
As a result, the Panel finds that the Complaint succeeds under 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 Disputed Domain Name, <got-milk.com>, be transferred to the Complainant.
Dated: September 18, 2011