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 Jeff Pendleton, Harvest Properties, LLC of Denham Springs, Louisiana, United States.
The disputed domain name <gotmilkyet.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2018. On August 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 16, 2018, 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.
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 August 20, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2018.
The Center appointed Thomas P. Pinansky, Michelle Brownlee and Gregory N. Albright as panelists in this matter on October 1, 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.
The following factual information is derived from the Complaint and supporting materials submitted by the Complainant:
The Complainant is an instrumentality of the State of California, United States, formed in 1993 to promote the consumption of milk through marketing, advertising, promotion, and public relations, and it is the owner of the trademark GOT MILK?. The Complainant owns numerous GOT MILK? service marks and trademarks registrations and applications in the United States and throughout the world, the earliest of which dates back to July 4, 1995 (United States Reg. No. 1,903,870). The GOT MILK? trademark is used for various goods and services such as key holders, baby bottles, picture frames, coffee cups, clothing, golf tees, etc., and the trademark has been promoted extensively through media, featured by many celebrities such as David Beckham, Beyoncé Knowles, and Britney Spears.
The disputed domain name <gotmilkyet.com> was registered with GoDaddy.com on May 9, 2018. The website associated with the disputed domain name contains numerous pay-per-click ads. Also, according to the documentary evidence submitted by the Complainant, the Respondent owns almost 400 domain names which incorporate famous trademarks or misspellings of famous trademarks such as <fiftyshadeofgray.com>, <frappaccino.com>, <jimminiycricket.com>, etc. On May 18, 2018, the Complainant, through its attorney, sent a cease and desist letter to the Respondent. On June 25, 2018, the Respondent emailed the Complainant’s attorney proposing the sale of the disputed domain name for USD 5,000. When the offer was rejected by the Complainant, the Respondent made another offer to sell the disputed domain name for USD 2,500, which was also rejected by the Complainant. On July 19, 2018, the Complainant sent a second cease and desist letter to the Respondent.
The Complainant argues that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights, asserting that i) the disputed domain name includes the Complainant’s trademark in its entirety save for a question mark; ii) the omission of the question mark does not alleviate the confusing similarity between the disputed domain name and the Complainant’s trademark; and iii) the addition of the generic word “yet” does not avoid the confusing similarity.
The Complainant further contends that the Respondent has no rights or legitimate interest in respect of the disputed domain name because i) the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; ii) the Respondent has not been commonly known by the disputed domain name; and iii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Lastly, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith because i) it attempted to attract, for commercial gain, Internet users to the pay-per-click website and ii) it registered and is using the disputed domain name primarily for the purpose of selling it to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
The Respondent neither replied to the Complaint nor responded to the Center’s communication, and the Center found the Respondent in default. The consensus view of the UDRP panels in case of default is that “the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP.” Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942.
However, paragraph 14 of the Rules provides in the event of default that a panel “shall draw such inferences therefrom as it considers appropriate.” Paragraph 15(a) of the Rules instructs that “[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 or principles of law that it deems applicable.” “Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts.” Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413; see also Time Equipment Corp. v. Stage Presence, WIPO Case No. D2003-0850; Express Scripts, Inc. v. Roy Duke, Apex Domains aka John Barry aka Domains for Sale and Churchill Club aka Shep Dog, WIPO Case No. D2003-0829; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004.
The disputed domain name incorporates the Complainant’s trademark GOT MILK? in its entirety except for the question mark. In numerous previous UDRP proceedings involving the Complainant’s trademark GOT MILK?, UDRP panels already held that disputed domain names that incorporated the trademark GOT MILK? with an omission of the question mark and an addition of a descriptive or generic word such as “pharmacy”, “rice”, “tea”, “glass”, and “scholarship” are confusingly similar to the Complainant’s trademark. See The California Milk Processor Board v. Domains by Proxy Inc/ (ERA) Holiday Real Estate, Inc., WIPO Case No. D2011‑1870; The California Milk Processor Board v. AnonymousSpeech, WIPO Case No. D2016-1653; The California Milk Processor Board v. Sergio Cueva / This Domain Is For Lease, WIPO Case No. D2013‑0693; The California Milk Process Board v. Jade Dominguez, WIPO Case No. D2012-0878.
In light of the previous UDRP decisions and based on the inference in favor of the Complainant as allowed under the Rules, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Complainant asserts that the Respondent lacks any rights or legitimate interests in the disputed domain name.
The consensus view of UDRP panels is that 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 burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1; see also, Accor v. Eren Atesmen, WIPO Case No. D2009-0701. The failure to submit a response by a respondent in some cases supports a finding of the lack of such rights, particularly in the absence of any license from the complainant to use the complainant’s trademark or incorporate it in a domain name. AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017.
By demonstrating that (i) the Complainant is the registered owner of the trademark; (ii) the Complainant has neither authorized nor given its consent to the Respondent to register and use the trademark; (iii) the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; (iv) the Respondent has not been commonly known by the disputed domain name; and (v) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, the Complainant has met its initial burden of making a prima facie case showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The burden thus shifts to the Respondent to demonstrate any such rights or legitimate interests. WIPO Overview 3.0, section 2.1
By never responding to the Complainant’s contentions, the Respondent failed to show any of the circumstances provided in paragraph 4(c) of the Policy that can demonstrate its right or legitimate interests.
Therefore, the Panel finds that the Complainant has carried its burden of making a prima facie case under paragraph 4(a)(ii) of the UDRP, and the Respondent failed to show its rights or legitimate interests in the disputed domain name.
Paragraph 4(b)(i) of the Policy provides that the registration and use of a domain name in bad faith is found when there are circumstances indicating that a respondent has registered or acquired a 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 for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. The Complainant showed in the Complaint that the Respondent attempted to sell the disputed domain name for USD 5,000. When that offer was rejected, the Respondent tried to sell it again for the reduced price of USD 2,500. The Panel finds no purpose of the Respondent for using the disputed domain name other than for the sale of the disputed domain name.
Further, paragraph 4(b)(iv) of the Policy provides that the registration and use of a domain name in bad faith is found if a respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website 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 its website. The Complainant asserted in the Complaint that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the pay-per-click website located at the disputed domain name by using the disputed domain name that is deceptively similar to the Complainant’s trademark. The Complainant reinforced this assertion by showing that the Respondent owns almost 400 domain names that also incorporate famous trademarks or misspellings of famous trademarks and contain pay-per-click ads.
Based on the combination of the above two factors and the inference in favor of the Complainant allowed under the Rules due to the Respondent’s failure to respond, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
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 <gotmilkyet.com>, be transferred to the Complainant.
Thomas P. Pinansky
Presiding Panelist
Michelle Brownlee
Panelist
Gregory N. Albright
Panelist
Date: October 15, 2018