WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The California Milk Processor Board v. Domains By Proxy, LLC, DomainsByProxy.com and Gina Jacob

Case No. D2012-1615

1. The Parties

Complainant is The California Milk Processor Board of San Clemente, California, United States of America (“US”), represented by Sipara, United Kingdom (“UK”).

Respondent is Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, US, and Gina Jacob of Chicago, Illinois, US, represented by Terrence D. Gavin, Esq., US.

2. The Domain Name and Registrar

The disputed domain name <gotmilkglass.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 August 10, 2012. On August 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On August 16, 2012, the Center sent a Complaint deficiency email communication to Complainant inviting it to amend the Complaint, namely paragraph 6, listing the full contact information for the registrant of record as indicated by the Registrar. Complainant filed an amended Complaint on August 17, 2012.

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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced August 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response September 9, 2012. The Response was filed with the Center on September 9, 2012.

The Center appointed Lynda J. Zadra-Symes, Frederick M. Abbott and W. Scott Blackmer as panelists in this matter on October 4, 2012. 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 a dairy industry marketing board established in 1993 by order of the California Department of Food and Agriculture. Complainant, which operates as a state agency funded by commercial milk producers and administered by the California Department of Food and Agriculture, promotes the consumption of cow’s milk through marketing, advertising and public relations campaigns. These include its well-known and long-running GOT MILK? campaign on television, billboards, print media, websites and on Complainant’s own website “www.gotmilk.com”, which attracts 1.8 million visitors annually. A USA TODAY poll in 2002 named the first GOT MILK? television advertisement one of the ten best television advertisements of all time, and in 2005 taglineguru.com called the slogan, “the most culturally influential tagline since the advent of broadcast television.” Recent television campaigns using this mark have featured celebrities such as David Beckham, Beyoncé Knowles and Britney Spears.

Complainant is the owner of numerous registered marks for the standard-character mark GOT MILK? in the United States of America and other countries, including in Class 21 for “drinking glasses.” Complainant’s registrations include United States Trademark No. 1903870, registered July 4, 1995. The mark has been licensed to national milk production boards and associations in the United States and other countries and has been used in national and international advertising campaigns on television and in print media.

Respondent is the registrant of the disputed domain name, <gotmilkglass.com>, which she uses to sell her “milk glass” products. Milk glass is an opaque or translucent white glass which can be blown or pressed into a variety of shapes. Respondent registered the disputed domain name on May 30, 2012 and also operates a Twitter.com account assuming the username “GotMilkGlass.”

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar to its registered trademark GOT MILK?, that the addition of the word “glass” adds no distinctive element, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent’s use of the disputed domain name is to misleadingly divert customers to her website by creating confusion with Complainant’s trademark with the intent of creating commercial gain.

B. Respondent

Respondent contends that the disputed domain name is not confusingly similar to Complainant’s trademark as her website contains no content related to dairy products or services. Respondent argues that she has rights and legitimate interests in the disputed domain name by virtue of her use of the disputed domain name since May 30, 2012. Respondent asserts that her Twitter.com account with the username “GotMilkGlass” (with over 100 followers) is evidence that she is commonly known by the disputed domain name, and that there is no evidence of her intent to misleadingly divert consumers or to tarnish Complainant’s marks. Respondent further argues that there is no evidence that she offered to sell or transfer the disputed domain name to Complainant or that she intended to disrupt Complainant’s business.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, Complainant must prove that each of the three following elements is 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.

Under paragraph 4(a) of the Policy, the burden of proof with regard to these elements lies with Complainant.

A. Identical or Confusingly Similar

This question raises two issues: (1) does Complainant have rights in a trademark or service mark; and (2) is the disputed domain name identical or confusingly similar to such trademark or service mark.

The Panel finds that Complainant has submitted sufficient evidence to establish that it is the owner of rights in the trademark GOT MILK?, including in connection with “drinking glasses.”

The Panel also finds that the disputed domain name is confusingly similar to Complainant’s trademark. The disputed domain name includes Complainant’s trademark, but has simply removed the question mark and added the term “glass,” which is generic with respect to Respondent’s goods. The absence of punctuation in a disputed domain name does not eliminate the existence of confusing similarity, as Internet users expect web addresses to exclude such grammatical symbols.

The combination phrase “got milk” has become a distinctive advertising slogan and trademark in the United States in reference to Complainant’s goods and services. Respondent’s addition of the word “glass” does not eliminate the association with Complainant’s mark. In fact, the term “glass” is closely associated with “milk.”

In view of the foregoing, the Panel finds that Complainant has rights in the GOT MILK? trademark and that the disputed domain name is confusingly similar to that trademark.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 2.1.

Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name, and provides certain arguments in this regard, establishing a prima facie case under paragraph 4(a)(ii) of the Policy.

According to paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests in a domain name by showing any of the following elements:

(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a 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.

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

With respect to the first test, the Panel finds that the disputed domain name is not being used in connection with a bona fide offering of goods or services. While it is true that Respondent began using the disputed domain name to sell her goods in May 30, 2012, prior to being notified of this dispute, that alone does not amount to a “bona fide offering of goods or services.” Respondent chose a domain name that is confusingly similar to a nationally popularized trademark. Respondent must have been aware of the GOT MILK? mark and must have noticed that her domain name was strikingly similar to that mark. Respondent has not asserted any plausible relationship or history with the term “got” with respect to her domain name or company that would explain her use of it for purposes other than causing a confusing association with Complainant’s mark. The Panel finds that Respondent’s choice of domain name was an attempt to elicit an association with or cause confusion with Complainant’s GOT MILK? trademark to drive more Internet traffic to her website. Such actions preclude finding of a “bona fide offering of goods or services.”

With respect to the second test, the Panel finds that Respondent has not been commonly known by the disputed domain name. Respondent argues that on May 30, 2012 she registered an account on Twitter.com under the user name “GotMilkGlass” and that she has over 100 “followers” keeping track of her ongoing Twitter.com messages related to her milk glass products. Respondent has had her Twitter.com account only since May 30, 2012 whereas Complainant began its famed GOT MILK? campaign in 1993 and registered the trademark in 1995. Respondent’s Twitter.com account was registered many years after the GOT MILK? campaign had reached popularity, so she must have been aware of the trademark when she chose the user name. In all likelihood, Respondent chose the user name because of its close association with Complainant’s trademark. Registration of a user name through a social media account, such as Twitter.com, using a name confusingly similar to a well-known trademark, does not substantiate a claim to be “commonly known” under that domain name in accordance with paragraph 4(c)(ii) of the Policy. Given that Respondent has only held the disputed domain name since May 2012 and only claims a minor number of Twitter followers compared to the great strength and public presence that Complainant has developed with respect to its trademark, Respondent’s argument does not satisfy paragraph 4(c)(ii) of the Policy. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name.

With respect to the third test, the Panel finds that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Respondent alleges that there is no evidence of any intent to misleadingly divert dairy milk consumers or to tarnish any trademarks. The Panel notes that Respondent was very likely aware of Complainant’s well-known GOT MILK? trademark at the time Respondent registered the disputed domain name. Indeed, it is highly likely that Respondent chose to register and use the disputed domain name in attempt to benefit from Complainant’s well-known mark by attracting attention to her newly-formed company. This is not a genuine good faith use of the disputed domain name that would give rise to rights and legitimate interests in the domain name. Respondent’s argument that her webpage suffices as a legitimate use because it does not make direct reference to dairy milk consumers is unconvincing. A potential consumer searching the Internet for a GOT MILK? drinking glass could very well be misdirected to Respondent’s “www.gotmilkglass.com” website. That would drive traffic to Respondent’s website where she is selling her products. Given these facts, the Panel finds that the disputed domain name was intended to misleadingly divert customers to the disputed domain name for Respondent’s commercial gain.

In view of the foregoing, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) provides as an instance of registration and use in bad faith, circumstances indicating that:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.”

The Panel is satisfied that these circumstances are fulfilled in this case.

Respondent has registered and used a domain name which incorporates Complainant’s trademark, with only the addition of the generic term “glass” following the mark. The disputed domain name directs users to Respondent’s website where she sells her milk glass products. It is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the respondent uses the disputed domain name because of its similarity to another’s trademark in the hope and expectation that such similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name.

There is no evidence that Respondent has any legitimate connection with the word “got” in her <gotmilkglass.com> disputed domain name, suggesting that its sole purpose is to cause confusion among Internet users with Complainant’s well-known trademark. It is insignificant that when the Internet user arrives at Respondent’s website, it then becomes clear that the website is unconnected with the trademark holder (see Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364). The Toyota case upon which Respondent relies is not persuasive (Toyota Motor Sales v. Tabari, 610 F.3d 1171 (9^th Cir. 2010)). This case involved fair use of the LEXUS mark in a domain name by a broker of LEXUS cars. Respondent is not using the disputed domain name to indicate that she is selling (or brokering) Complainant’s genuine products (so as to be analogous to Toyota v. Tabari, id., and without expressing an opinion as to how such brokering activity might be relevant to bad faith in contexts not present here). In the present case, this Panel finds it unconvincing that Respondent could have registered the disputed domain name without knowledge of Complainant’s trademark and intention of commercially benefiting from confusion with Complainant’s trademark.

For these reasons the Panel finds that Complainant has established its case under paragraph 4(b)(iv) of the Policy.

7. Decision

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 <gotmilkglass.com> be transferred to Complainant.

Lynda J. Zadra-Symes
Presiding Panelist

Frederick M. Abbott
Panelist

W. Scott Blackmer
Panelist

Dated: October 17, 2012