WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The California Milk Processor Board v. Transure Enterprise Ltd/ Above.com Pty. Ltd
Case No. D2011-1993
1. The Parties
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.
Respondent is Transure Enterprise Ltd of Tortola, Virgin Islands (British), United Kingdom of Great Britain and Northern Ireland; Above.com Pty. Ltd of Beaumaris, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <gotmilkbottles.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2011. On November 15, 2011, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 16, 2011, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 16, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Per request from Complainant, the Center extended the due date for submitting the amendment to November 25, 2011. Complainant filed an amended Complaint on November 23, 2011.
The Center verified that the Complaint together with the amended 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 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 15, 2011.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on December 23, 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 uses the GOT MILK? trademark to promote the consumption of cow’s milk and owns registrations in several jurisdictions, including the United States (Reg. No. 3730703, filed on December 18, 2008) and the European Union (Reg. No. 00852178, filed on September 3, 2009). Such registrations cover goods and services in a large number of classes, including class 35 in which the specification of services covers “marketing assistance; market research; advertising and promotion services; advisory, consultancy and information services relating to the aforesaid services”.
The GOT MILK? trademark is extensively used by Complainant since 1993. Complainant’s website is located under the domain name <gotmilk.com>. On several UDRP disputes between Complainant and third parties relating to domain names which incorporated the expression “got milk”, WIPO UDRP panels awarded the domain names to Complainant, such as The California Milk Processor Board v. Edwin Caballero, WIPO Case No. D2011-0951: <1800gotmilk.net> and <1855gotmilk.com>; The California Milk Processor Board v. Mattia Fraulini, WIPO Case No. D2011-1077: <gotmilkband.com>; and The California Milk Processor Board v.Asa Development, WIPO Case No. D2011-0914: <momgotmilk.com>.
The disputed domain name was created by Respondent on October 2, 2011.
5. Parties’ Contentions
Complainant argues that the disputed domain name is confusingly similar to the GOT MILK? trademark owned by Complainant; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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.
The burden of proving these elements is on Complainant.
A. Identical or Confusingly Similar
To prove this element, Complainant must have rights in a trademark or service mark, and the disputed domain name must be identical or confusingly similar to Complainant’s trademark. Complainant uses and has registered the GOT MILK? trademark, as mentioned in paragraph 4 above. The Panel is therefore satisfied that the Complainant has registered trademark rights in the expression GOT MILK?.
The fact that the disputed domain name does not reproduce the interrogation mark of Complainant’s trademark is not relevant since the interrogation mark is not allowed in domain names and the lack of such mark does not eliminate the confusion with Complainant’s trademark.
Respondent has used Complainant’s trademark almost in its entirety and added the word “bottles”, which is a term obviously connected with the advertised product “milk”. In the present case, the word “bottles” can be considered to be a generic word that does not effectively distinguish the disputed domain name from Complainant’s GOT MILK? trademark. Several prior UDRP decisions have held that a domain name is confusingly similar to a trademark when a respondent uses complainant’s trademark and adds a neutral word that fails to distinguish the disputed domain name from the trademark (see, for example, the early WIPO UDRP cases Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102; Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275; Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755).
The Panel therefore finds that, in the circumstances of this case, the disputed domain name is confusingly similar to Complainant’s GOT MILK? trademark. Consequently, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The disputed domain name was registered on October 2, 2011, that is, several years after Complainant started to use the GOT MILK?, in 1993, as well several years after Complainant’s trademark application was filed in the United States, in 2008. Therefore, the prior rights over such trademark are clearly on Complainant’s side.
In addition, Respondent does not run any legitimate business activity in connection with the disputed domain name. On the contrary, Respondent runs under the disputed domain name a pay-per-click site, which is not considered to be a legitimate business activity in the meaning of the Policy in circumstances such as the present case.
Complainant has established a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Since Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel has found no indication that any of the circumstances described in paragraph 4(c) of the Policy could apply to the present matter.
Therefore, given the circumstances described above, the Panel concludes that the disputed domain name is not rightfully used by Respondent in connection with any bona fide offering of goods and services and finds that Respondent has no rights or legitimate interests in the disputed domain name (Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad Faith
Complainant submits that Respondent was aware of the existence of the trademark GOT MILK? and, therefore, that the disputed domain name was registered in bad faith.
In the Panel’s view, the fact that Complainant has made a long and ample use of the GOT MILK? trademark to advertise the consumption of cow’s milk, including through the mass media (television and printed press), is an indication that Respondent indeed could not fail to have prior knowledge of Complainant’s trademark.
Moreover, the use of the word “bottles” by Respondent appears to this Panel to be also an indication that Respondent is willing to create an association of its website with Complainant’s products because internet users are led to believe that Respondent sells under license of Complainant bottles containing milk, or to be used to store milk.
The Panel is therefore satisfied that Respondent has registered and used the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 <gotmilkbottles.com> be transferred to Complainant.
Gabriel F. Leonardos
Dated: January 6, 2012