WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
California Milk Processor Board v. Simon McKinley
Case No. D2017-0788
1. The Parties
The Complainant is California Milk Processor Board of San Clemente, California, United States of America (“United States”), represented by Knox, Lemmon, Anapolsky, LLP, United States.
The Respondent is Simon McKinley of East Palo Alto, California, United States.
2. The Domain Name and Registrar
The disputed domain name <gotdirtymilk.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2017. On April 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 27, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2017.
The Center appointed Ellen B Shankman, Michelle Brownlee and Martin Schwimmer as panelists in this matter on June 8, 2017. 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
The Complainant provided evidence of numerous registrations for its trademark GOT MILK and GOT MILK?, including inter alia,United States Trademark Registration No. 1,903,870, registered July 4, 1995, used in connection with the Complainant’s activities related to the promotion of milk consumption.
The date of the Domain Name registration was confirmed by the Registrar to be February 25, 2017.
The Panel also conducted an independent search to determine that the Domain Name resolves to a GoDaddy “parking page” with commercial links.
The Complainant also provided evidence of sending a cease-and-desist letter before commencing the proceeding, to which the Respondent did not directly answer. The Parties also exchanged emails prior to the filing of the Complaint, in which the Respondent did provide a response to the Complainant. The Respondent did not respond to this Complaint.
Since the Respondent did not respond to this Complaint, the facts regarding the use and fame of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.
5. Parties’ Contentions
The Complainant is the California Milk Processor Board, an instrumentality of the State of California in the United States. Formed in 1993, the Complainant’s purpose is to promote the consumption of milk through marketing, advertising, promotion and public relations. The Complainant is the owner of the well-known GOT MILK? trademarks in the United States and throughout the world. The Complainant has won numerous industry awards for its “got milk?” advertisement campaigns.
The Complainant alleges that the Respondent appropriated the Complainant’s GOT MILK? trademark in the Domain Name adding the word “dirty”, which does not avoid confusing similarity, and which does not detract from the immediate association with the Complainant aroused in the public mind by the trademark in question. The Complainant contends that the Respondent’s use of the Domain Name for a parking page with sponsored links is not a legitimate use and is evidence of bad faith. The Complaint argues that the Respondent is aware of the brand strength in the Complainant’s trademarks and is attempting to benefit from that association by registering the Domain Name to display pay-per-click ads, and thus the Domain Name was registered and is being used in bad faith. The Complainant further alleges that this is not the only time that the Respondent has attempted to generate revenue using a domain name that is deceptively similar to a famous trademark, providing evidence of another instance in the case of the domain name <sincityraidernation.football>.
The Complainant also provided evidence of sending a cease-and-desist letter to which the Respondent did not directly answer. The Complainant also provided evidence of an exchange of emails, in which the Respondent wrote, “There’s no law against me buying the Domain, so I suggest that you harass Godaddy.com”, and the Complainant responded, “There is a law against you using a domain that contains my client’s ‘got milk?’ trademark for commercial purposes (i.e. pay-per-click ads.).”
To summarize the Complaint, the Complainant is the owner of multiple registrations for the well-known trademark GOT MILK? in respect of a wide range of goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the word “dirty” to the trademark GOT MILK? does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, that the Domain Name was registered and is being used in bad faith, and that continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant. Thus, the Complainant contends that the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy and requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for GOT MILK and GOT MILK?. This finding is consistent with numerous UDRP panels that have found that the Complainant has rights in the GOT MILK? trademark. See, e.g., California Milk Processor Board v. AnonymousSpeech, WIPO Case No. D2016-1653 and The California Milk Processor Board v. Jade Dominguez, WIPO Case No. D2012-0878.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the word “dirty” to the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Yahoo! Inc. v. Yahoosexy.com, Yahoo-sexy.com, Yahoosexy.net, Yahousexy.com and Benjamin Benhamou, WIPO Case No. D2001-1188. See also Dell Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0721 (accepting the complainant’s general submission that a domain name incorporating a mark in its entirety is confusingly similar to that mark despite the addition of other words).
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name. The use of the Domain Name in connection with a parking page displaying sponsored links does not, in the present case, amount to a bona fide offering of goods or services, and none of the other factors set out under paragraph 4(c) of the Policy seem to apply.
The Panel finds that the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s famous trademark GOT MILK and has intentionally attempted to attract for commercial gain, Internet users to the website located at the Domain Name, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website located at the Domain Name. This holding is consistent with the Panel’s finding in The California Milk Processor Board v. Jade Dominguez, supra.
The Panel is particularly prepared to utilize respondent’s default as relevant evidence to prongs two and three, because the email in which the Respondent wrote the Complainant that “[t]here’s no law against me buying the Domain, so I suggest that you harass Godaddy.com” shows that the Respondent was on actual notice of complainant’s claims, and chose not to respond to the Complaint in the timely fashion.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant’s mark, the Respondent’s reply to the Complainant’s request for voluntary transfer of the Domain Name, and the Domain Name resolving to a commercial “parking page”, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) 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 Domain Name <gotdirtymilk.com> be transferred to the Complainant.
Ellen B Shankman
Date: June 22, 2017