Complainant is California Milk Processor Board, an instrumentality of the State of California, of San Clemente, California, United States of America (“United States” or “U.S.”), represented by Knox, Lemmon & Anapolsky, LLP, United States.
Respondent is Whois Privacy Shield Services of Irvine, California, United States / Tiffany Petropolis, Domain Re seller Services of Lake Elsinore, California, United States.
The disputed domain name <gotmilk-pharmacy.com> is registered with Pheenix, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2018. On April 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2018, the Registrar 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 June 4, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 5, 2018.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 8, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2018. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2018.
The Center appointed Brian J. Winterfeldt, William F. Hamilton and Michelle Brownlee as panelists in this matter on July 27, 2018. 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.
Complainant California Milk Processor is a California entity formed in 1993 whose purpose is to promote the consumption of milk through marketing, advertising promotion, and public relations.
Complainant is the owner of various trademarks around the world that either comprise or incorporate the term “Got Milk?” including, for example, U.S. registration no. 1,903,870 filed on October 29, 1993 and registered on July 4, 1995 for the word mark GOT MILK? in class 35. Complainant has extensively used this mark in the United States since 1993 to promote the consumption of cow’s milk.
Complainant’s use of the GOT MILK? mark pre-dates the registration of the disputed domain name, <gotmilk-pharmacy.com>, which occurred on October 25, 2017.
Respondent in this case was initially identified as “Whois Privacy Shield Services”, a proxy service provider located in California, United States and, upon provision of additional registrant information from the Registrar, is identified as “Tiffany Petropolis, Domain Re seller Services”, also located in California, United States.
The disputed domain name resolved to a website which advertised the sale of marijuana, anabolic steroids, stimulants, hallucinogens, and similar substances.
Complainant asserts that it owns valid and enforceable rights in the GOT MILK? mark for use in connection with various goods and services, including association services provided to fluid milk producers in the state of California; namely, the advertising and promotion of the sale and use of fluid milk.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s registered trademark, GOT MILK?, as it contains this mark in its entirety – with the exception of the “?” symbol which cannot be represented in a domain name – and is not sufficiently distinguished by the addition of a hyphen and the generic term “pharmacy” and the generic Top-Level Domain (“gTLD”) “.com”.
Complainant asserts that Respondent has no rights or legitimate interest in the disputed domain name, as Respondent’s use of the disputed domain name to offer controlled substances for sale does not constitute a bona fide offering of goods and services. Complainant further asserts that Respondent selected the disputed domain name to elicit an association with or cause confusion with Complainant’s GOT MILK? mark to drive more Internet traffic to Respondent’s website. Complainant also notes that Respondent is not commonly known by the disputed domain name, and is not making a legitimate noncommercial or fair use given that the disputed domain name is being used to facilitate the sale of illegal drugs. Therefore, Complainant asserts it has made a prima facie showing that Respondent lacks any rights or legitimate interests in the disputed domain name, which Respondent has failed to rebut.
Complainant contends that Respondent has registered and used the disputed domain name in bad faith. Respondent has pointed the disputed domain name to a website that is set up for the exclusive purpose of selling primarily illegal drugs and therefore that Respondent has intentionally attempted to attract for commercial gain, Internet users to the website located at the disputed domain name, by creating a likelihood of confusion with Complainant’s GOT MILK? marks as to the source, sponsorship, affiliation, or endorsement of the website located at the disputed domain name or of a product or service on the website. Complainant also asserts that Respondent’s bad faith is further evidenced by its failure to respond to any of Complainant’s prior correspondence in connection with the disputed domain name. Complainant asserts that bad faith is also evidenced by the fact that the website located at the disputed domain name does not contain any disclaimer of affiliation to Complainant, and by the fact that Respondent registered the disputed domain name (containing “gotmilk”) about 25 years after Complainant began to use and widely promote its world-famous GOT MILK? marks.
Accordingly, Complainant has requested that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. Complainant has provided evidence that it has rights in the GOT MILK? mark, which has been registered in the United States and elsewhere internationally well before Respondent registered the disputed domain name.
With Complainant’s rights in the GOT MILK? mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the gTLD in which it is registered, in this case “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s GOT MILK? mark because it is fully incorporated into the disputed domain name at the second level and the addition of a hyphen and the generic term “pharmacy” appended to the mark do not sufficiently distinguish the disputed domain name from the mark. As noted above, the addition of the gTLD “.com” does not distinguish the disputed domain name from Complainant’s mark. This finding is supported in the prior determination concerning the similar <gotmilkpharmacy.com> domain name. See California Milk Processor Board v. AnonymousSpeech, WIPO Case No. D2016-1653. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the GOT MILK? mark and in showing that the disputed domain name is identical or confusingly similar to this mark.
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the GOT MILK? mark and does not have any rights or legitimate interests in the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that Respondent has used the disputed domain name to divert Internet users to its own website, where Respondent offers primarily illegal drugs for sale. The use of a domain name for illegal activity (e.g., the sale of illegal pharmaceuticals) can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13.1; see also, e.g., Philip Morris USA Inc. v. Domain Admin / Whois Privacy Corp., WIPO Case No. D2016-0910 (finding no respondent rights or legitimate interest in disputed domain name, where the disputed domain name resolved to a website offering illegal drugs for sale, including hashish).
Complainant has established with sufficient evidence that it owns rights in the GOT MILK? mark. Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the disputed domain name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the disputed domain name. Thus, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
Use of a domain name incorporating a trademark by an unauthorized third party to redirect Internet users to a respondent-owned website for commercial gain is evidence of bad faith under paragraph 4(b)(iv) of the Policy. See WIPO Overview 3.0, section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: … redirecting the domain name to a different respondent-owned website….”). Respondent’s use of the disputed domain name to maintain a website through which it sells primarily illegal drugs is clear evidence of bad faith registration and use under Policy paragraph 4(b)(iv). See, e.g., Hardee’s Food Systems, Inc. v. Morgan Kelsey, WIPO Case No. D2011-1757.
Respondent’s failure to respond to Complainant’s prior communications concerning the disputed domain name also support a finding of bad faith in this case. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
In light of this activity and given that Respondent registered the disputed domain name without Complainant’s authorization long after Complainant’s rights in this mark had been established, the Panel can only conclude that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Panel finds that Complainant succeeds under this element 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, <gotmilk-pharmacy.com>, be transferred to Complainant.
Brian J. Winterfeldt
Presiding Panelist
William F. Hamilton
Panelist
Michelle Brownlee
Panelist
Date: August 15, 2018