In a UDRP published today, a lawyer domain holder beat back a challenge from The California Milk Processor Board on the domain name GotMilkAds.com
California Milk Processor Board is the owner of the registered trademark GOT MILK?
Its a interesting opinion especially in light of the fact that UDRP’s panels have awarded domain names to this same complainant based off of this trademark and led one domain blogger to recommend to domain holders not to mess with domains that might infringe on the Got Milk trademark.
Here are the relevant facts and findings by the one person panel:
“”The disputed domain name was registered with the registrar GoDaddy.com, Inc. on August 3, 2009.”
“The disputed domain name resolves to a parked web page provided by GoDaddy.com, which contains advertising links (“ads”) to third-party websites offering various goods or services, none of which appear to be related to the Complainant or its goods and services.”
“The Complainant maintains that the disputed domain name is confusingly similar to the GOT MILK? trademark”
“The estimated number of page views of the Complainant’s website at “www.gotmilk.com” exceeds 1.8 million annually.”
“The Complainant further contends that the fame of the GOT MILK? trademark is such that the Complainant’s advertisements are sold as memorabilia on eBay.”
“The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name.”
“”The Respondent maintains that as the parties are domiciled or incorporated in the U.S., and subject to and bound by applicable U.S. law. For purposes of the first element of the Policy, the Respondent argues from several trademark law decisions issued by the Federal Ninth Circuit Court of Appeals that the disputed domain name cannot be considered confusingly similar to the Complainant’s trademark.”
“Relying primarily on such decisions, the Respondent asserts that online consumers of products are generally quite sophisticated about such matters, and that it is unlikely that a reasonably prudent consumer encountering a domain name that includes a product name would be confused whether the website they have come to is formally affiliated with the product manufacturer. The Respondent further notes that the website to which the disputed domain name resolves contains no content in any manner affiliated or related to the Complainant’s products or services, or those of the Complainant’s competitors. The Respondent further observes that the UDRP decisions relied upon by the Complainant are largely default cases or other cases in which no real substantive response was submitted.”"
“”The Respondent asserts that the Complainant has failed to meet its burden of proof respecting the second and third elements of the Policy as well. “”
“”The Respondent avers that he registered the disputed domain name with the intent to develop a website for the purpose of selling GOT MILK? advertisements, but has yet to make such use of the disputed domain name because of his busy law practice and the development of another website at “www.brotherlylovesports.com”. “”
“”The Respondent notes that, as the Complaint itself points out, there have been significant third-party sales of GOT MILK? advertisements in the U.S. and elsewhere on a daily basis at eBay.com. The Respondent observes that the Complainant has never objected to such sales, and further notes that the Complainant does not sell GOT MILK? advertisements on its own website.”"
“”The Respondent further maintains that he disclosed to the Complainant’s counsel during their discussions preceding the commencement of this administrative proceeding that it was the Respondent’s intent to use the disputed domain name with a website offering GOT MILK? advertisements. According to the Respondent, he has sold various print advertisements and posters, including the Complainant’s advertisements, over eBay for a number of years, and he has offered evidence of his activities on eBay. In view of the foregoing, the Respondent maintains that his intention to use the disputed domain name with a website offering GOT MILK? advertisements demonstrates rights or legitimate interests in the disputed domain name.”
“”The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <gotmilkads.com> is confusingly similar to the Complainant’s GOT MILK? trademark, in which the Complainant clearly has established rights.”
“”The Respondent maintains that he has established rights or legitimate interests in the disputed domain name based on the intent to use the disputed domain name in connection with a website offering for sale GOT MILK? advertisements.”"
“”The Respondent has submitted a sworn statement attesting that this was his intention when registering the disputed domain name and he avows that it remains his intention. The Respondent maintains that this constitutes a “nominative fair use” of the disputed domain name under relevant U.S. law, which qualifies as a bona fide use of the disputed domain name in connection with an offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.”"
“”In this instance, the disputed domain name has been used since its registration in August 2009 with a parking page featuring pay-per-click advertising links. The disputed domain name is confusingly similar to the Complainant’s well-known GOT MILK? trademark, such that Internet users looking for websites associated with the Complainant are likely to arrive at the Respondent’s pay-per-click website by mistake. “”
“”Regardless of who may have benefited from this arrangement, the Respondent, as the disputed domain name registrant, ultimately is responsible for the content of the website.”"
“”However, after careful consideration of the totality of facts and circumstances reflected in the record, the Panel is not convinced that the Respondent possessed at the time of registration of the disputed domain name the bad faith intent to exploit or profit from the Complainant’s trademark rights.”
“While, as noted earlier, the Respondent has not used or made a showing of demonstrable preparation to use the disputed domain name with a website offering GOT MILK? advertisements for sale, his claim to have registered the disputed domain name with the intention of doing so is plausible. ”
“There is nothing in the record reflecting that the Respondent is a professional domainer, nor evidence that the Respondent has in the past engaged in a pattern of registering domain names comprised of the well-known trademarks of third parties. At the same time, based on the parties’ submissions there is an established online market that exists and has existed for some time for the sale (resale) of GOT MILK? advertisements. And the Respondent has presented documentation (in the form of a sworn affidavit) supporting his claim already to have sold GOT MILK? advertisements on eBay.”"
“”To the Panel’s appreciation, the issue in this administrative proceeding is not whether the Respondent (or others) has a right per se to sell (or resell) the Complainant’s GOT MILK advertisements. “”
“”Rather, the issue is whether the Respondent consistent with the Policy may register and use a domain name incorporating the Complainant’s trademark for that purpose. In that regard, the consensus view of UDRP panelists is that a reseller or distributor making a bona fide offering of trademarked goods or services using a domain name which contains the trademark has a legitimate interest in the disputed domain name.”"
“”Under the Oki Data decision, a reseller may establish rights or legitimate interests in a domain name incorporating the manufacturer’s trademark if the following conditions are met:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
“”Several panel decisions have concluded that the application of the Oki Data criteria may be appropriate under the Policy where the respondent is not purely a reseller or distributor of a trademark owner’s goods or services, so long as the respondent operates a business genuinely revolving around the trademark owner’s goods or services. See National Association for Stock Car Auto Racing, supra; Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, Westin Hotel Management L.P. v. Media Insight a/k/a Media Insights, WIPO Case No. D2010-0211 (hereinafter “Starwood Hotels & Resorts”). Additionally, panels subscribing to the principles established in Oki Data have determined it may be applicable to both authorized and unauthorized resellers. See WIPO Overview 2.0, at paragraph 2.3.”"
“”As this Panel has previously noted, such an approach is not only consistent with the Policy, but also is consistent with the nominative fair use principles that apply under the trademark law of the U.S., which is relevant here given that both parties are from the U.S. Starwood Hotels & Resorts, supra. Further, the Oki Data approach considers and applies nominative fair use principles not in the broader context of traditional trademark disputes, but with reference to the limited scope of the Policy, and specifically with respect to the a respondent’s use of the complainant’s trademark in a disputed domain name.”"
“However, it is difficult to make an affirmative finding under these principles in the Respondent’s favor, because as noted the Respondent is not presently making any active “use” of the disputed domain name to offer the goods or services at issue – though he certainly claims an intention to do so, which is supported to some extent by the evidence in this case. This is a factor which has given the Panel serious pause for thought in so far as the assessment of the Respondent’s likely intentions on registration of the disputed domain name are concerned. Does the fact that the Respondent’s claimed intentions with respect to the disputed domain name have not yet materialized mean that the Panel should therefore conclude that the disputed domain name was registered and is being used in bad faith because it is passively held? In the circumstances of this present case, the Panel is not prepared to go that far on this record.”"
“”The Panel is not persuaded that the facts and circumstances of this case are sufficiently analogous to those in Telstra Corporation Limited v. Nuclear Marshmallows, supra, to sustain a finding of bad faith registration and use based on the Respondent’s passive holding of the disputed domain name. As the panel in Telstra made clear, a finding of bad faith based on passive holding necessarily depends on the particular facts of a specific case. The Telstra panel relied on several bad faith indicators that are not clearly present in the instant record, (which, unlike the Telestra case includes a submission of a sworn statement) and found bad faith based on a conclusion that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate”. The Panel is unable to reach such a categorical conclusion in this case for the reasons discussed above.”"
“”The Respondent in his sworn statement denies any benefit from the advertising links on the parking page to which the disputed domain name resolves. The record indicates that the parking page was provided by the registrar GoDaddy.com, Inc., a factor that supports the Respondent’s averment not to be directly responsible for the links appearing on the site. While the Panel does not retreat from the basic precept that the domain name registrant ultimately is responsible for the content on his or her website, the Panel still is not convinced from the overall facts and circumstances in the record before it at present that the Respondent (who does not appear to have a history of cybersquatting) registered the disputed domain name intending to trade on the Complainant’s trademark in order to generate pay-per-click revenue.”"”
“”Finally, whatever the hotly disputed circumstances surrounding the Respondent’s offer to sell the disputed domain name to the Complainant may have been, the Panel also is not persuaded from the totality of circumstances in the record in these Policy proceedings that the Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainant at an exorbitant cost.”"
“”In conclusion, the Panel wishes to note that while it is to some extent, giving the Respondent the benefit of the doubt with respect to its claimed intended use of the disputed domain name, if in the future such use would not materialize, or the use would change in such a way to suggest a clear abusive intent, this may well constitute a relevant consideration in any future dispute brought over the disputed domain name”"
“”In any event, for the reasons outlined above, the Panel finds that the Complainant has, on balance, failed in these Policy proceedings to satisfy the requirements of paragraph 4(a)(iii) of the Policy.”"
“”For all the foregoing reasons, the Complaint is denied.”"