WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
California Milk Processor Board v. Joseph Verdone
Case No. D2017-0825
1. The Parties
Complainant is California Milk Processor Board of San Clemente, California, United States of America (“U.S.”), represented by Knox, Lemmon, Anapolsky, LLP, U.S.
Respondent is Joseph Verdone of Scottsdale, Arizona, U.S.
2. The Domain Name and Registrar
The disputed domain name <gotcannamilk.com> 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 24, 2017. On April 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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 Respondent of the Complaint, and the proceedings commenced on May 3, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 24, 2017.
The Center appointed Lorelei Ritchie, Michelle Brownlee and Steven L. Snyder as panelists in this matter on June 15, 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
Complainant is an instrumentality of the State of California, formed in 1993 to promote the consumption of milk through marketing, advertising, promotion and public relations. Complainant owns trademarks for the term GOT MILK?, which it uses on a myriad of goods and services from association services to drinking cups and clothing, among others. These include, inter alia, U.S. Registration No. 1,903,870 (registered 1995); U.S. Registration No. 2,689,741 (registered 2003); and 3,730,703 (registered 2009). Complainant’s advertising of its GOT MILK? promotions have garnered industry awards, including CLIO and other awards beginning with its well-known “Aaron Burr” commercial and for many years since, spanning from 1994 through 2016.
The Parties to this case were involved in an earlier UDRP proceeding regarding the domain name <gotcannamilk.us>, for which a decision was rendered on March 17, 2017, ordering a transfer, finding, among other things, bad faith by Respondent. On March 28, 2017, Complainant sent an email message to Respondent asking him, in light of that decision not to renew the disputed domain name <gotcannamilk.com>. Respondent nevertheless renewed the disputed domain name on April 14, 2017.
The disputed domain name <gotcannamilk.com> was registered on April 15, 2016, and, as noted above, renewed a year later. Respondent uses the disputed domain name to resolve to a parked web page, which offers links to adult and porn websites. Respondent has no affiliation with Complainant, nor any license to use its marks.
5. Parties’ Contentions
Complainant contends that (i) <gotcannamilk.com> is identical or confusingly similar to Complainant’s trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it is the owner of the well-known GOT MILK? mark. Complainant contends that Respondent has incorporated this mark in the disputed domain name and merely added the descriptive term “canna,” which may be perceived as referring to cannabis milk, a commodity now potentially legal in California, or it may simply be perceived as referring to a “can of” milk. Complainant contends that its marks are well known, having gained industry recognition. Complainant further contends that Respondent lacks rights or legitimate interest in the disputed domain name, and rather has registered and is using it in bad faith, by offering commercial links to website that trade on the good will of Complainant’s trademarks.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether <gotcannamilk.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name incorporates in full Complainant’s registered mark, GOT MILK? with the only omission of the question mark, which does not appear in domain names, and combines it with the term “canna” which may be perceived as referring to either cannabis milk or a “can of” milk, but is in either case descriptive. The Panel finds that consumers will likely assume that “gotcannamilk.com” refers to a service endorsed or provided by Complainant.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Microsoft Corporation v. Step Web, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620 (transferring <walmartbenfits.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>).
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interest” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “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”.
No evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has the URL associated with the disputed domain name parked on a webpage with pay-per-click links to adult and porn websites. Respondent is thus trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
Given the level of exposure of Complainant’s marks in the U.S., where Respondent lists his address of record, the Panel finds that Respondent must have been aware of Complainant’s rights at the time of registration and continuing use of the disputed domain name. This comports with the findings of prior UDRP panels. See The California Milk Processor Board v. Tobias, WIPO Case No. D2012-0657 (transferring <gotmilkdistrict.com>) (finding Complainant’s mark to be “well-known”); The California Milk Processor Board v. Strong, WIPO Case No. D2012-1261 (transferring <gotmllkpricescom>) (finding Complainant’s mark to have “renown”); The California Milk Processor Board v. Dominguez, WIPO Case No. D2012-0878 (transferring <gotmilktea.com>) (finding Complainant’s mark to be “so ubiquitous and pervasive in advertising in the United States that Respondent undoubtedly knew of its existence when incorporating the entire mark into the Domain Name.”).We note also that Complainant initiated a UDRP proceeding against the same Respondent for essentially the same domain name, <gotcannamilk.us>. A decision was rendered on March 17, 2017, finding, among other things, bad faith. See The California Milk Processor Board v. Verdone,FA, Claim No. 1718561 (transferring <gotcannamilk.us>). Complainant then contacted Respondent on March 28, 2017, urging him, in light of that decision, not to renew the registration for the disputed domain name in this case, <gotcannamilk.com>. Nevertheless, he did. The Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with 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 disputed domain name, <gotcannamilk.com>, be transferred.
Steven L. Snyder
Date: June 26, 2017