WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The California Milk Processor Board v. Ryan Archer

Case No. D2011-1812

1. The Parties

The Complainant is The California Milk Processor Board of San Clemente, California, United States of America, represented by Sipara, United Kingdom.

The Respondent is Ryan Archer of Brea, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <gotbluemilk.net>(“Domain Name”) is registered with GoDaddy.com, Inc. (“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and MediationCenter (the “Center”) on October 21, 2011. On October 21, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 2011,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 for the disputed domain name. The Center verified that the Complaint 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 the Respondent of the Complaint, and the proceedings commenced on November 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2011. The Response was filed with the Center on November 17, 2011.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 23, 2011. The Panel finds that it was properly constituted. 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 is a dairy industry marketing board established in 1993 by order of the California Department of Food and Agriculture. The 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 the 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.

The Complainant holds several registered trademarks for the standard-character mark GOT MILK? In the United States of America and other countries, including 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.

The Domain Name was registered on May 28, 2010, in the name of a domain proxy service. The Domain Name resolves to a website headed “Got Blue Milk?” with the words “Blue Milk” shaded blue, beside a cartoon figure holding a glass of blue liquid. The website features several “Lazy Bones” or “gamer webcomics” drawn by the Respondent, some of which include characters from the popular Star Wars films and novels. The webcomics expressly refer to the “blue milk” beverage mentioned in two of the Star Wars films and several of the books based on the Star Wars characters. At the time the Complainant first obtained screen shots of the website, it appears that the website did not include webcomics referring to the fictional Star Wars “blue milk” beverage.

Following correspondence from the Complainant, the domain proxy service disclaimed any interest in the Domain Name and furnished the underlying contact information for the registrant, who was identified as the Respondent, an individual residing in Brea, California. The Complainant and the Respondent subsequently exchanged emails in which the Complainant demanded the transfer of the Domain Name and the Respondent declined, with the following statement:“While I have the domain name ‘GotBlueMilk.net’ there is no violation of your trademark for ‘Got Milk’ as this is a parody only, referring to ‘Blue Milk’ in a popular fiction publication.”

The Respondent’s emails identify Mr. Archer as “Editor, Prologue Comics.”

The home page of the website associated with the Domain Name includes a disclaimer of affiliation:“This site and it’s [sic] content is not affiliated with Got Milk?™ as this is a parody and not intended to represent itself as the original trademark.”

The “About” page of the website at the Domain Name also currently includes the following explanation of the Respondent’s intent:

“GotBlueMilk.net is a parody site dedicated to the continuing social satire in the Lazy Bones Webcomic of the famed Got Milk? ads in our modern society. Through the use of the fictional Star Wars product ‘Blue Milk’ the Lazy Bones characters poke fun at the commonly known trademark with humor-based social commentary.”

The Respondent’s website includes Mr. Archer’s blog and links to other webcomics websites, including two apparently operated by Mr. Archer, “www.prologuecomics.com” and “www.legounleashed.com”. The website associated with the Domain Name does not offer products or services for sale and does not display third-party advertising links; the same is true of the website at “www.prologuecomics.com”, which reports that the Respondent’s “Lazy Bones” webcomics have been published since 2007. The website at “www.legounleashed.com” does include third-party advertising banners and frames, as well as Mr. Archer’s drawings, videos, and reviews of LEGO games and products.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the Domain Name is confusingly similar to its registered GOT MILK? mark and that the Respondent has no legitimate rights or interests in the Domain Name.

The Complainant argues that the Respondent had actual or constructive notice of the registered, well-known mark when the Domain Name was registered, and that the Respondent likely registered the Domain Name “in the hope and expectation” of attracting Internet users interested in the Complainant.

B. Respondent

The Respondent argues that the Domain Name is not confusingly similar to the Complainant’s mark, because “milk” is a generic work and “blue milk” would be “a whole other substance.”

The Respondent does not deny prior knowledge of the Complainant’s mark but argues that it was chosen in good faith for a noncommercial parody website.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Complainant holds trademark registrations for GOT MILK? and the insertion of a generic and conceivably relevant adjective in the Domain Name does not substantially lessen the likelihood of confusion with the well known mark. UDRP panels typically apply a “low threshold” test for confusing similarity under the first element of a Policy complaint, proceeding to the merits of the case under the other elements of the Policy if there is “sufficient similarity” between the disputed domain name and the relevant trademark. See, e.g., Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression.

Applying that test, the Panel concludes that the Domain Name is confusingly similar to the Complainant’s mark for purposes of the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

It is undisputed that the Complainant has not authorized the Respondent to use the GOT MILK? mark. The Policy, pararaph 4(c), lists other, nonexclusive circumstances demonstrating rights or legitimate interests in a domain name, including this one: “(iii) you are 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 Respondent implicitly relies on this by referring to his use of the Domain Name for a “parody” of the Complainant’s GOT MILK? tagline.

The Respondent explains that he is a Star Wars fan like his “Lazy Bones” cartoon character, and that his work appeals to an audience of Star Wars fans who identify with such a character and would be familiar with the fictional “blue milk” described more fully in the Star Wars books. The Respondent says he chose the Domain Name to refer to Star Wars in the form of a parody of the Complainant’s GOT MILK? advertisements. The Respondent states his intention to further develop the website associated with the Domain Name as a noncommercial Star Wars parody website, “for the entertainment of his readers and other Star Wars fans.” The Respondent reports that he selected the Domain Name because <gotbluemilk.com> was already registered to a third party – not the Complainant, incidentally, but a professional motorsports photographer.

The Complainant challenges the parody nature of the website and asserts that Star Wars references did not appear in webcomics on the website associated with the Domain Name before this dispute arose. The Respondent replies that the website was still under development at that time, with only a non-searchable landing page. The Panel finds numerous Star Wars references are archived in the “Lazy Bones” webcomics on the Respondent’s website at “www.lazybonescomic.com”, as early as 2007. The Panel also finds no evidence of any commercial use of the Domain Name. Thus, it is plausible that the Domain Name was indeed chosen for noncommercial, parody purposes, referring both to “Star Wars” and the Complainant’s popular GOT MILK? advertisements.

Trademark law in the United States, where both parties are located, recognizes a fair-use parody defense where the allegedly infringing mark cleverly invokes a trademark but in a manner that consumers are unlikely to believe originated with the trademark owner. See, e.g., Louis Vuitton Malletier, S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4^th Cir. 2007). It is not clear to the Panel that the Respondent has succeeded in striking this delicate balance. However, given the Panel’s conclusions below on the third element of the Complaint, it is not necessary to parse the trademark parody defense in this proceeding, and in the interest of judicial economy the Panel will not decide the question of whether the Respondent has established a “legitimate” noncommercial fair use on this ground.

C. Registered and Used in Bad Faith

The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Complainant argues precisely that the Respondent sought to mislead Internet users for commercial gain. The problem with that argument is that there is no evidence of actual or intended commercial use of the Domain Name. The Respondent appears to operate this website and others simply as an outlet for his creative works and to support others who create webcomics and videos. The Domain Name is not used to generate advertising revenue, which would undermine the Respondent’s claim of noncommercial purpose. Thus, the facts in this proceeding differ from those in previous UDRP proceedings involving the Complainant, in which respondents clearly had a commercial purpose in using a domain name confusingly similar to the Complainant’s mark.

A noncommercial website could conceivably tarnish the reputation associated with a mark, which could constitute bad faith for Policy purposes. But in this case, the Panel finds that there is no manifestly objectionable content in the Domain Name or the associated website. It also seems unlikely that the Respondent seriously hoped to divert Internet users seeking information about the Complainant, The California Milk Processor Board. The possibility of initial interest confusion is relatively slight, because the Complainant itself promotes “real milk” over all substitutes. Moreover, the content of the website would not readily be confused with the Complainant’s efforts to promote the benefits of drinking cow’s milk.

As described in the previous section, the Respondent had plausible reasons for choosing a variation on the Complainant’s mark to refer to the “blue milk” known to Star Wars aficionados, for a website designed to entertain Star Wars fans, while making Internet users think of the Complainant’s popular GOT MILK? advertisements. This may or may not meet the standards for the parody defense under United States trademark law, but it is a sufficiently plausible, good-faith motive to outweigh the Complainant’s inference of bad faith within the meaning of the Policy.

The Panel notes that this conclusion in the current administrative proceeding does not foreclose a subsequent UDRP proceeding if the Respondent’s future use of the Domain Name casts doubt on the Respondent’s current account of his intentions in registering the Domain Name; nor does it preclude a judicial action under trademark law that would test the parody defense. But on the present record, the Panel concludes that the third element of the Complaint, on which the Complainant has the burden of proof, has not been established.

7. Decision

For all the foregoing reasons, the Complaint is denied.

W. Scott Blackmer
Sole Panelist
Date: December 9, 2011