WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
California Milk Processor Board v. AnonymousSpeech
Case No. D2016-1653
1. The Parties
1.1 The Complainant is California Milk Processor Board of San Clemente, California, United States of America (“United States” or “U.S.”), represented by Knox, Lemmon, Anapolsky, LLP, United States.
1.2 The Respondent is AnonymousSpeech of Osaka, Japan, represented by Intellectual Property Logium of Mumbai, India.
2. The Domain Name and Registrar
2.1 The disputed domain name <gotmilkpharmacy.com> (the “Domain Name”) is registered with Todaynic.com, Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2016. On August 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 18, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on August 18, 2016.
3.2 The Center verified that the Complaint together with 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2016.
3.4 On August 22, 2016, and it would appear in response to notification of the Complaint, the Center received an unsigned email from a person who appeared to control or represent the entity that controlled the Domain Name. In the rest of this decision (unless the context otherwise requires) references to the “Respondent” are intended to refer to that person or entity. In that August 22, 2016 email, the Respondent asserted that “Gotmilk” in the Domain Name stood for “Global Order Trade Medicine International Licensed Kool”. It claimed that the fact that the term “Got Milk?” was also used by the Complainant was “simply a coincidence”. Further, emails were sent from the Respondent but no formal response was filed in these proceedings prior to the relevant deadline.
3.5 On August 25, 2016, the Complainant sent an email communication to the Center requesting that one Manmohan Singh be added as a respondent to the proceedings, contending that this individual was the beneficial owner of the Domain Name. On September 9, 2016, the Complainant requested the Panel to allow it to file a supplemental submission addressing the contentions in the Respondent’s email of August 22, 2016. On September 13, 2016, the Complainant requested that the domain name <gotmilkpharmacy-cc.com> be added to the proceedings. The Center acknowledged receipt of these email communications and indicated that the Panel upon appointment would determine these matters.
3.6 The Center appointed Matthew S. Harris, Michelle Brownlee and Masato Dogauchi as panelists in this matter on October 12, 2016. 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.
3.7 On October 18, 2016, having considered the case file, the Panel issued a procedural order the full text of which is at Annex A to this decision (“Procedural Order No.1”). In essence, Procedural Order No. 1 indicated that the Panel did not see any need at that stage to agree to the Complainant’s requests that were sent to the Center on August 25, 2016 and September 9, 2016. However, the Panel was prepared to allow the Complainant’s request that the domain name <gotmilkpharmacy-cc.com> be added to the proceedings. It, therefore, ordered the Complainant to file an amended Complaint in this respect by no later than October 22, 2016; and provided for the Respondent to file a response limited to those amendments by no later than October 29, 2016.
3.8 The Respondent appointed lawyers in relation to this matter and it requested a seven-day extension of time to put in a response. The Complainant objected to that extension and informed the Center that if the Panel was minded to grant that extension it would withdraw its “request” to add the domain name <gotmilkpharmacy-cc.com> to these proceedings.
3.9 On October 20, 2016, the Panel issued a further procedural order in this matter the full text of which is at Annex B to this decision (“Procedural Order No.2”). In essence, Procedural Order No.2 stated that the Panel considered it to be inappropriate for the Complainant to attempt to conditionally withdraw its “request” to add another domain name to those proceedings where the Panel had already agreed (subject to certain caveats) to its inclusion in the proceedings. However, the Panel pointed out that it was open to the Complainant to unilaterally drop that domain name from these proceedings. It also stated that the Panel would only consider the Respondent’s request for an extension subsequent to any filing of an Amended Complaint pursuant to Procedural Order No. 1.
3.10 On October 21, 2016, the Complainant sent an email to the Center in which it effectively withdrew its complaint in relation to the domain name <gotmilkpharmacy-cc.com>. On October 24, 2016, the Respondent sought to file a late Response in these proceedings.
4. Factual Background
4.1 The Complainant is based in California and was formed in 1993. Its purpose is to promote the consumption of milk through marketing advertising promotion and public relations.
4.2 The Complainant is the owner of various trade marks around the world that either comprise or incorporate the term “Got Milk?”. These include:
(i) U.S. Registered trade mark no. 1,903,870 filed on October 29, 1993 and registered on July 4, 1995 for the word mark GOT MILK? in class 35.
(ii) European trade mark no. 10470452 (based on an International Registration) with a date of February 15, 2011 in classes 20 and 30, which takes the following form:
4.3 The Complainant has also applied for a trade mark incorporating the term “Got Milk?” in India, but this has yet to proceed to registration.
4.4 The Complainant has extensively used this mark in the United States since 1993 to promote the consumption of cow’s milk. Various well-known celebrities have featured in its campaigns including David Beckham, Beyoncé Knowles and Britney Spears.
4.5 The Respondent appears to hold itself out as a corporation based in India, with the name Gotmilk Pharma Limited.
4.6 The Domain Name was registered on October 1, 2015. It has since registration or shortly thereafter been used for a website that offers for sale various pharmaceuticals without prescription under the name “Gotmilk Pharmacy”. That website offers to supply these pharmaceuticals around the world and contains a large amount of text that is clearly directed to potential customers in the United States. This “pharmacy” also claims to have been in business since 2011.
4.7 On October 15, 2015, the Complainant sent a cease and desist letter to “Gotmilk Pharma Ltd” at the address in Mumbai appearing on that website and sent the same by email. That letter threatened claims under the UDRP and trade mark infringement proceedings. Further letters were sent thereafter. The Respondent did not respond to these letters (although on August 11, 2016 the Complainant did receive an abusive email which appears to have come from the Respondent’s email service supplier).
4.8 This website continues in operation as at the date of this decision. However, the Panel notes that, since the commencement of the proceedings, the Respondent has changed the home page of that website so as to add the words “Global Order Trade Medicine International Licensed kool Pharmacy” after “Gotmilk Pharmacy”.
5. Parties’ Contentions
5.1 The Complainant describes its attempts to contact the Respondent prior to these proceedings. It contends that although the Respondent has used the name “Gotmilk Pharma Ltd”, there is no record of such a company on file with the Ministry of Corporate Affairs for the Government of India.
5.2 The Complainant refers to its activities and its various registered trade marks around the world that comprise or incorporate the term “Got Milk?”. It refers to numerous previous UDRP proceedings in which it has been involved in which the panels recognised the Complainant’s rights. It also refers to several proceedings in which it is said UDRP panels held that trade mark to be distinctive or well-known.
5.3 The Complainant contends that the Domain Name is confusingly similar to its mark, in that it comprises the term “got milk” with the descriptive term “pharmacy”.
5.4 The Complainant refers to the website operating from the Domain Name and contends that although this may involve an offering of goods or services, it is not a bona fide offering. The reason put forward for this is that the name “Gotmilk Pharmacy” was chosen in an attempt to trade off the fame of the Complainant’s mark and to draw Internet users to the Respondent’s website. Further, it maintains that the Respondent’s activities do not fall within any other category or right or legitimate interest identified in the Policy. It, therefore, contends that the burden of proof in showing a right or legitimate interest passes to the Respondent.
5.5 The Complainant further contends that the Domain Name was registered and has been used in bad faith. In this respect it maintains that the Respondent’s activities fall within the scope of paragraph 4(b)(iv) of the Policy. It also asserts that no plausible explanation has been offered by the Respondent for the adoption of the “Gotmilk” name.
5.6 So far as bad faith is concerned, the Complainant also asserts that the Respondent has sought to hide its true identity by using a domain name privacy service so far as the WhoIs details for the Domain Name are concerned and by adopting a “sigaint.org” email address, which offers anonymity for its users.
5.7 No formal response was filed by the Respondent by the date provided by the Rules. Instead, as has already been described, a “Response” was sent to the Center on October 24, 2016 after the Panel’s appointment. The admissibility of that document is therefore addressed later on in this decision.
5.8 However, the Response is noteworthy in that it makes very few statements of fact so far as the Respondent’s actions are concerned. It repeats the assertion that the term “Gotmilk” as used by the Respondent stands for “Global Order Trade Medicine International Licensed Kool” and claims that:
“The Respondent was first known to the fact that someone is claiming the abbreviates used in the Respondent’s domain name when the Respondent was informed of the current subject complaint.”
5.9 The Respondent also did not respond to the Complainant’s assertion that the “Got Milk Pharmacy Ltd” in not a separate corporate person incorporated under Indian law.
5.10 Instead the “Response” consists primarily of argument and bare denial. In particular:
(i) the Respondent contends that the Complainant has failed to satisfy any of the requirements of the Policy;
(ii) the Respondent denies that the Domain Name is confusingly similar to the Complainant’s mark. In this respect it makes a comparison between the Domain Name and the stylised form of that mark. It contends that the lack of “?” and the addition of the word “pharmacy” mean that the mark and Domain Name are different in appearance, sound, meaning and overall commercial impression.
(iii) the Respondent denies the Complainant’s claims so far as rights and legitimate interest are concerned. It claims in this respect that it was using the Domain Name in connection with a bona fide offering of goods and services and that it is commonly known by the Domain Name. It also simultaneous appears to contend that the Domain Name is being used without intent for commercial gain; and
(iv) the Respondent further denies that its activities fall within any of the examples of bad faith registration and use set out in the Policy.
5.11 In support of the claim of lack of confusing similarity, the Respondent attaches approximately 140 pages of print-outs of different US trade marks that contain the word “Milk”. It also attaches a WIPO print out of marks that contain the term “Got Milk”.
5.12 The Respondent also makes references to numerous United States trade mark cases so far as confusing similarity is concerned.
6. Discussion and Findings
6.1 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements in turn. However, before it does so it is necessary to address the later service of a “Response” and to consider whether that document is admissible in these proceedings.
6.3 As the document was served out of time (and many weeks out of time at that), prima facie the Panel is entitled to ignore the same when preparing its decision. The late “Response” is akin to an unsolicited additional submission to which the comments set out at paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) apply. It is therefore for a respondent in such a case to explain why the “Response” was served late and to explain why there are “exception circumstances” that would justify that document being allowed into those proceedings.
6.4 No such explanation or exceptional circumstances are offered in the “Response”. At one point the Respondent’s lawyers appeared to contend that the Complaint had not been received by their client. However, the Panel is satisfied that a copy of the Complaint was duly sent by the Center to the Respondent to all contact details (email, post and fax) made known to the Center by the Complainant. Further, the claim that the Respondent did not receive the Complaint is at odds with the contents of the Respondent’s email of August 22, 2016. The Panel also note that this is not a point that was pursued in the “Response” itself.
6.5 Given this, the Panel would have been entitled to ignore the document in this case. However, a majority of the Panel have nevertheless agreed that it can be taken into account in these proceedings.
6.6 An unusual and complicating factor in this case is that the Complainant late in the day sought to add another Domain Name to the proceedings. There is perhaps an argument that a respondent may legitimately make a different decision as to whether or not to actively contest proceedings under the Policy, depending upon the number of domain names at stake. That argument is somewhat undermined by the fact that the Complainant subsequently dropped its complaint against the additional domain name, but by then the Respondent had already taken the steps of engaging external counsel.
6.7 But the main reason why the Panel has admitted this document is a purely pragmatic one. First, as already recorded, the “Response” in fact contains very little of substance. Second, as will become apparent whether or not this late submission is admitted into these proceedings, makes no practical difference to the outcome of this case. Accordingly, rather than consider this issue further, the Panel proceeds on the assumption that the document should be taken into account.
A. Identical or Confusingly Similar
6.8 The Panel is of the view that the most sensible reading of the Domain Name is as the English words “Got”, “Milk” and “Pharmacy” in combination with the “.com” generic Top-Level Domain (“gTLD”). The Panel is also satisfied that the Complainant is the owner of various marks that either comprise the term “Got Milk?” either in ordinary or stylised text.
6.9 In paragraph 1.2 of the WIPO Overview 2.0, the test of identity and confusing similarity is described as follows:
“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms [regarding the latter see further paragraph 1.3 below] typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”
6.10 See further exploration of these issues in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227.
6.11 The Panel has little difficulty when applying that threshold test in concluding that the Doman Name and the Complainant’s marks are similar. The Complainant’s mark is included in its entirety in the Domain Name save for a space and a “?” (neither of which can form part of a domain name). These minor differences and the addition of the word “pharmacy” in the Domain Name do not so change how the Domain Name might be sensibly read so that the threshold test is not satisfied.
6.12 In coming to this conclusion the Panel has found the numerous trade marks to which the Respondent has referred, and the numerous U.S. trade cases it has cited, to be of very little assistance. The fact that there are many marks that contain the word “milk”, is of very limited relevance, given that it is not this aspect of the Domain Name and its trade marks alone that the Complainant relies upon so far as confusing similarity is concerned. Further, although the existence of an entity’s rights can only be determined by reference to local law, local law plays little or no part in the comparative assessment. As is stated in the beginning of paragraph 4.15 of the WIPO Overview 2.0:
“Paragraph 15 (a) of the UDRP provides that a panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the UDRP, the UDRP Rules, and any rules and principles of law that it deems applicable. Rooted in generally-recognized principles of trademark law, and designed to operate in the context of the world wide web, the decision framework of the UDRP generally does not require resort to concepts or jurisprudence specific to national law (other than with respect to the question of whether trademark rights exist).”
6.13 Similarly, the Panel is unpersuaded by the list of “Got Milk” marks provided by the Respondent. For the most part this appears to be a list of the Complainant’s marks. This gets nowhere near establishing (if this is what the Respondent is contending) that the “Got Milk” element of the Complainant’s marks is “completely devoid of distinctive character that it is incapable of distinguishing the Complainant’s goods and services” (as to which see, for example, Souq.com FZ LLC v. Benny Bertelsen, Advanced Digital Solutions, WIPO Case No. D2015-2261).
6.14 In the circumstances, the Complainant has made out the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.15 The outcome of this case essentially turns upon whether the Panel prefers the Respondent’s contention that the term “Gotmilk” was adopted by the Respondent independently of the Complainant’s marks and has been used thereafter as an acronym for the phrase “Global Order Trade Medicine International Licensed Kool” over the contentions of the Complainant. If the Respondent’s contention were to be preferred, the Respondent is likely to have successfully persuaded the Panel that it has a legitimate interest in the Domain Name since it would have been used in connection with a bona fide offering of goods or services under paragraph 4(c)(ii) of the Policy.
6.16 For the reasons that are set out when considering the issue of bad faith below, the Panel does not accept the Respondent’s claim. On the contrary it concludes that the Domain Name was more likely to have been chosen and then used to take unfair advantage of its associations with the Complainant’s mark. In such a case the offering is not a bona fide one (see, for example, Financial Industry Regulatory Authority, Inc. v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Edward Banis, WIPO Case No. D2016-0434) and that finding provides a positive basis for the Panel to conclude that the Respondent lacks a right or legitimate interest in the Domain Name.
6.17 There is also no evidence before the Panel that paragraph 4(c)(ii) of the Policy applies. Further the Panel rejects the Respondent’s claim that its activities from the Domain Name are noncommercial as clearly and obviously false given the sale of pharmaceuticals in which the Respondent is engaged.
6.18 In the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests (as that phrase is understood under the Policy) in the Domain Name and that the Complainant has made out the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.19 The Panel does not accept the Respondent’s contention that it adopted the term “Gotmilk” as part of the name “Gotmilk Pharmacy” as an acronym for the phrase “Global Order Trade Medicine International Licensed Kool”. Instead, it has concluded that it is more likely that the term “Gotmilk” was chosen because of its associations with and in order to take unfair advantage of the Complainant’s mark, by drawing Internet users to the Respondent’s website (and in a manner that falls within the scope of the example of circumstances indicating bad faith set out in paragraph 4(b)(iv) of the Policy).
6.20 The reasons for this are as follows:
(i) “Global Order Trade Medicine International Licensed Kool” is an inherently unnatural (and grammatically awkward) name for an online pharmacy. The words “Global Order” and “Medicine” are perhaps an understandable choice, but why then add the words “Trade” or “International”, to that combination? “International” is merely a synonym of “Global”. Further, in what way are the Respondent’s activities “Licenced”, and why would the Respondent want to include that term in its name? Finally, there is “Kool”. The Panel confesses that it does not understand what this “word” is intended to be save perhaps as a moderately common slang variant of the word “Cool”. But if so, the choice of this slang word in the Respondent’s name is so at odds with the rest of the words chosen that it is verging on the bizarre.
(ii) The combination of words is so unnatural that it cries out for an explanation. Who chose it, when and why? No such explanation is provided by the Respondent. Further, no identifiable person who was likely to have direct knowledge of why the term “Gotmilk” was adopted has sought to confirm that the claim that this is an acronym is true.
(iii) There is no evidence before the Panel that suggests that prior to the commencement of these proceedings the Respondent used the words “Global Order Trade Medicine International Licensed Kool” on its website or on any other document. If the term “Gotmilk Pharmacy” was really chosen with such words in mind, it is reasonable to expect that some such material would exist.
(iv) The lack of any explanation for the choice of these words and the lack of evidence of any prior use led to the natural conclusion that this alleged acronym was only contrived upon receipt of the Complaint.
(v) The fact that the words “Global Order Trade Medicine International Licensed Kool” was added to the website after the proceedings were commenced is also inherently suspicious and is yet further evidence that this is an after the event explanation.
(vi) The Respondent did not respond to the Complainant’s various cease and desist letters. If the Respondent really had a good reason why the term “Gotmilk” was chosen, it has had ample opportunity to explain this to the Complainant. Again this suggests that the Respondent had no legitimate explanation.
(vii) The Panel accepts that “Got Milk?” is a term that has developed a significant degree of fame at least in the United States.
(viii) Although the Respondent would appear to be based in India, it is clear from its website that its activities are to a significant degree directed to customers in the United States.
6.21 Therefore, in the absence of any other credible explanation, the Panel concludes that the most likely explanation for the adoption of this term “Gotmilk” in the Domain Name is because of its associations with the Complainant’s mark in order to draw Internet users to the website.
6.22 Another factor that points to bad faith in this case is the Respondent’s efforts to conceal its identity. This is not just a case of the use of privacy services in relation to the Domain Name registration (as to which see paragraph 3.9 of the WIPO Overview 2.0) or the use of an inherently anonymous email address, but the adoption of a corporate name that according to the uncontested evidence of the Complainant in this respect, is not the name of any company in India. If, as seems to be the case, the Respondent is falsely representing itself as a corporate entity when it is not, it also casts serious doubts on the truthfulness of the Respondent’s other factual assertions in these proceedings.
6.23 In the circumstances, the Panel concludes that the Domain Name was registered and has been used in bad faith and that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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 <gotmilkpharmacy.com> be transferred to the Complainant.
Matthew S. Harris
Date: November 4, 2016
ANNEX A to D2016-1653
PROCEDURAL ORDER No. 1
California Milk Processor Board v. AnonymousSpeech
Case No. D2016-1653
WHEREAS the Panel has reviewed the case file and, without prejudice to any subsequent findings of fact or law or any decision on the interpretation of any aspect of the Uniform Dispute Resolution Policy (the “Policy” or “UDRP”) or the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) or the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”), notes and comments as follows:
(i) In an email dated August 25, 2016, the Complainant’s attorneys made a request that it be allowed to amend the Complaint so as to add Manmihan Singh as a named respondent in these proceedings;
(ii) In an email dated September 9, 2016, the Complainant’s attorneys made a request that the Complainant be allowed to file a supplemental filing to address the Respondent’s claim in an unsigned email dated August 22, 2016 that “Gotmilk” stands for “Global Order Trade Medicine International Licensed Kool Pharmacy”.
(iii) On September 13, 2016 the Complainant’s attorneys filed a Request for leave to file a Second Amended Complaint to add the domain name <gotmilkpharmacy-cc.com> to these proceedings. In addition to the legal arguments contained in that Request, the Complainant sets out (at lines 6 to 15 on page 4 of that Request) alleged additional facts that it wishes to bring to the Panel’s attention and to evidence in that amended Complaint.
(iv) The Panel is minded to allow the Complainant to amend its Complaint to add the domain name <gotmilkpharmacy-cc.com> to these proceedings, but is of the view that the Respondent should be afforded an opportunity to set out its reasoned objections (if any) to that addition and also to respond to any facts and matters added to the Complaint in any amended Complaint.
(v) The Panel presently considers the amendment and supplemental filing identified at (i) to (ii) above to be unnecessary, but considers it unnecessary to make any final decision in this respect at this stage of the proceedings.
The Panel, pursuant to paragraphs 10, 11 and 12 of the Rules HEREBY MAKES THE FOLLOWING ORDER:
(1) The Complainant shall file with the Center by email (copied to the other party) an amended Complaint in this case by no later than 9:00am Central European Time on Saturday October 22, 2016:
(i) limited to adding the domain name <gotmilkpharmacy-cc.com> to that Complaint and the facts and matters identified at lines 6 to 15 on page 4 of the Request filed by the Complainant’s attorneys on September 13, 2016;
(ii) either be in a form that is text searchable (for example, a .doc Word document or a text searchable PDF document) or be accompanied by a copy that is text searchable.
(2) The Center is requested as soon as possible to issue a verification request to the registrar of the domain name <gotmilkpharmacy-cc.com>.
(3) Paragraph 1 of this Procedural Order is without prejudice to the Panel’s decision as to whether it is permissible to include in these proceedings the <gotmilkpharmacy-cc.com> domain name and whether the Panel should proceed to any substantive decision in relation to that domain name.
(4) The Respondent if and insofar as it wishes to (a) file a reasoned objection to the addition of the domain name <gotmilkpharmacy-cc.com> to these proceedings; or (b) respond the facts and matters alleged in the amendments to any amended Complaint filed by the Complainant pursuant to paragraph 1 of this Procedural Order, may by email (copied to the other party) and by no later than 9:00am Central European Time on Saturday October 29, 2016, file a Response limited to those matters provided that any such Response complies with the requirements of paragraph 5 of this Procedural Order.
(5) Any Response filed pursuant to paragraph 4 of this Procedural Order must:
(i) include a declaration signed by a named individual as follows:
“The Respondent certifies that the information contained in this submission is to the best of the Respondent’s knowledge complete and accurate, that this submission is not being presented for any improper purpose, such as to harass, and that the assertions in this submission are warranted under the Policy and the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”
(ii) identify that named individual’s connection with the party upon whose behalf the submission has been filed and why that individual has knowledge of the matters referred to in the submission.
(iii) comply with sub-paragraphs 5 (c)(ii), (iii), (vi) and (ix) of the Rules and paragraph 10(b) of the Supplemental Rules.
(6) The date by which the Panel’s decision should be forwarded to the Center in accordance with paragraph 15(c) of the Rules is extended to November 4, 2016.
Matthew S. Harris
Presiding Panelist for and on behalf of the Panel
Date: October 18, 2016
ANNEX B to D2016-1653
PROCEDURAL ORDER No. 2
California Milk Processor Board v. AnonymousSpeech
Case No. D2016-1653
By means of its Procedural Order No. 1, dated October 18, 2016 the Panel permitted the Complainant to amend its Complainant so as to add the domain name <gotmilkpharmacy-cc.com> (the “Additional Domain Name”) to these proceedings (subject to the provisos set out in paragraph 3 of that Order).
The Panel notes that on October 19, 2016 the Respondent sent an email requesting an extension to the time provided for filing a Response in accordance with paragraph 4 of Procedural Order No. 1, because it intended to seek specialist legal advice. The Panel also notes that since that date the Respondent appears to have appointed attorneys in relation to this matter.
The Panel has also considered an email from the Complainant’s attorneys stating that if the Panel “is inclined to grant the extension [sought by the Respondent], then [the] Complainant is willing to withdraw its request to amend the complaint to allow the Panel to proceed to a decision on [the] Complainant’s current Complaint”.
In this respect the Panel rules and comments as follows:
1. The Panel does not consider it to be appropriate for the Complainant to attempt to conditionally withdraw its request in the manner offered. The Panel has already acceded to the Complainant’s request and as a consequence a registrar verification request has been sent out by the Center in relation to the Additional Domain Name.
2. It is open to the Complainant at any time to withdraw its Complaint in relation to any particular domain name. If the Complainant wishes to withdraw its Complaint in relation to the Additional Domain Name, it should do so by sending an unequivocal email to the Center to this effect.
3. In the unusual circumstances of this case, if the Complainant fails to file an Amended Complaint in compliance with paragraph 1 of Procedural Order No. 1, the Panel will also deem the Complainant to have withdrawn its Complaint in relation to the Additional Domain Name.
4. The Panel will only consider the Respondent’s request for an extension if and when an Amended Complaint in compliance with paragraph 1 of Procedural Order No. 1 is filed in these proceedings.
5. Both Parties are reminded that the amendment and submission permitted by paragraphs 1 and 4 of Procedural Order No. 1 are limited in scope. Any submission or any part of any amendment or submission that goes beyond that permitted by these paragraphs will be treated as if it were an unsolicited supplemental filing. The Parties’ attention is drawn in this respect to paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0). Whether or not the Panel will allow or take notice of any such unsolicited supplemental filing is something that will then be considered by the Panel in its substantive decision in due course and nothing in this Procedural Order No. 2 is intended to limit the scope of the Panel’s discretion in this respect.
Matthew S. Harris
Presiding Panelist for and on behalf of the Panel
Date: October 20, 2016