19th Feb 2013
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The California Milk Processor Board of San Clemente v. Domains By Proxy, LLC / Del Polikretis
Case No. D2012-2285
1. The Parties
Complainant is The California Milk Processor Board of San Clemente, San Clemente, California, United States of America, represented by Sipara Limited, United Kingdom of Great Britain and Northern Ireland.
Respondent is Domains By Proxy, LLC and Del Polikretis of Agoura Hills, California, United States of America, represented by ESQwire.com PC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <gotmilf.com> (the “Domain Name”) 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 November 20, 2012. On November 21, 2012, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On November 23, 2012, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on November 26, 2012, 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 November 27, 2012.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced November 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response December 18, 2012. The Response was filed with the Center December 18, 2012.
The Center appointed Robert A. Badgley, James A. Barker and The Hon Neil Brown Q.C. as panelists in this matter on January 31, 2013. 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 coalition of 11 fluid milk processors located in the State of California, United States. Complainant has used the mark GOT MILK? since 1993 in media and advertising campaigns designed to promote the consumption of cow’s milk. This mark is registered in the United States and the European Union. The mark has been recognized as distinctive and well-known in prior proceedings under the Policy.
Respondent registered the Domain Name on December 15, 2010, acquiring it from a prior owner. The Domain Name had been registered to several previous parties in succession going back to March 2000. For a period of time, Respondent’s website accessible via the Domain Name contained sponsored links to various websites. For example, on September 11, 2012, some of the links included: “Meet Gay Men for Sex Now,” “Hot Sex is Here,” “Watch Adult Cams Free 18+,” and “Free Gay Men Videos.”
Complainant sent Respondent an e-mail dated September 11, 2012, in which Complainant alleged that the Domain Name and its use were in violation of Complainant’s trademark rights. Shortly thereafter, the content of Respondent’s website changed. By the time of Complainant’s October 5, 2012, follow-up letter, the website simply stated: “What’s a M.I.L.F.? – Coming soon!” It does not appear that Respondent communicated with Complainant prior to the filing of the Complaint in this proceeding.
According to Respondent, there had been communications between the parties a year earlier, in September 2011, during which Respondent disputed Complainant’s contentions and after which a year passed with no further written word from Complainant. The record does not contain these alleged written communications from September 2011. Respondent claims that there were a few telephone conversations after the September 2011 exchanges.
5. Parties’ Contentions
Complainant alleges that the Domain Name is confusingly similar to Complainant’s registered mark GOT MILK?, that Respondent lacks rights or legitimate interests in respect of the Domain Name, and that Respondent has registered and is using the Domain Name in bad faith. For these reasons, Complainant contends, it is entitled to an order transferring the Domain Name from Respondent to Complainant.
Respondent asserts that this “is a case of an obvious parody and fair use” of the Domain Name “in a colloquial sense.” Without actually stating what the colloquial term refers to, Respondent states that the Domain Name “is an obvious reference to a common, albeit somewhat distasteful, colloquial term.”
Respondent also asserts that numerous other parties have made use of “got”—formative domain names, such as <gotsoccer.com>, <gotsport.com>, <gotmusiconline.com>, etc. As Respondent asserts: “Millions of people worldwide use the “got ___” for reasons unrelated to Complainant. Respondent claims that it relied on such broad third-party usage in its decision to register the Domain Name.
Respondent claims that the Domain Name resolved to a parking page with the “inadvertent” exception of a one-week period during which the links to pornographic websites appeared at the site.
According to Respondent, he was developing a “business plan” in connection with the Domain Name, but ceased his planning activities once he heard from Complainant in September 2011. The record does not indicate anything specific about this alleged business plan.
Finally, Respondent asserts that the Complaint should be barred by the doctrine of laches, since Complainant waited too long to lodge its Complaint respecting the Domain Name.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name in order to obtain the requested remedy:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There is no doubt that Complainant holds rights, through registration and use, in the mark GOT MILK? It is also beyond doubt that the Domain Name is not identical to the mark.
The question at the heart of this dispute is whether the Domain Name is confusingly similar to Complainant’s mark.
A majority of the Panel concludes that the Domain Name is not confusingly similar to the mark.
Paragraph 1.2 of the Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states in relevant part:
“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms …typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. While each case must be judged on its own merits, circumstances in which a trademark may not be recognizable as such within a domain name may include where the relied-upon mark corresponds to a common term or phrase, itself contained or subsumed within another common term or phrase in the domain name (e.g. trademark HEAT within domain name theatre.com).
However: Some panels have additionally required that, for a domain name to be regarded as confusingly similar to the complainant’s trademark, there must be a risk that Internet users may actually believe there to be a real connection between the domain name and the complainant and/or its goods and services. Such panels would typically assess this risk having regard to such factors as the overall impression created by the domain name, the distinguishing value (if any) of any terms, letters or numbers in the domain name additional to the relied-upon mark, and whether an Internet user unfamiliar with any meaning of the disputed domain name seeking the complainant’s goods or services on the world wide web would necessarily comprehend such distinguishing value vis-à-vis the relevant mark.”
In the present case, the Panel majority is particularly mindful of the WIPO Overview 2.0 comments that “each case must be judged on its own merits” and that some panels have required that “there must be a risk that Internet users may actually believe there to be a real connection between the domain name and the complainant and/or its goods and services.” Id. In such instances, the WIPO Overview 2.0 states, the “overall impression created by the domain name” is to be considered. Id.
With these principles in mind, the Panel majority concludes that the Domain Name <gotmilf.com> is not confusingly similar to the mark GOT MILK? While the two are doubtless similar, they are not, in the Panel majority’s view, confusingly so.
First, the Domain Name <gotmilf.com> and the mark GOT MILK? do not sound exactly alike.
Second, and this is a minor point, there is a question mark in Complainant’s mark, which is absent from the Domain Name.
Third, even though there is only one letter’s difference between the Domain Name and the mark (an “f” being substituted for a “k”), the difference is significant. The substitution of “f” for “k” creates a new word and suggests an entirely different meaning. Internet users may consult one of a number of sources for the meaning of the acronym “milf,” but in any event it is a rather vulgar slang term in fairly widespread usage. A MILF may be defined as a mother – not one’s own, for there does not appear to be any Oedipal connotation – with whom one would fancy a carnal encounter. According to Wikipedia, the term has been in usage since the 1990s, and it achieved a boost in popularity from its appearance in the 1999 movie American Pie. The fact that the Domain Name has a meaning of its own weighs against a finding of confusing similarity to the mark.
Fourth, the Panel majority does not believe that the Domain Name can fairly be ascribed to typosquatting. A typographical error typically emerges from one of three sources: (a) the typist is mistaken about, or does not know, the correct spelling of the word he or she is trying to type; or (b) the typist “fat-fingers” the keyboard and strikes a key adjacent to the one intended; or (c) the typist carelessly omits a letter or keys in a letter twice where only once was intended.i None of these circumstances applies here. It is doubtful that anyone actually believes that “milk” is spelled with an “f” instead of a “k.” Moreover, on the QWERTY and AZERTY keyboards, “f” and “k” are separated by several letters, and hence “fat-fingering” can be ruled out. Finally, the Domain Name does not reflect the careless omission of a letter, or the unintended repetition of a letter, from the mark in question.
Under these circumstances, the Panel majority simply cannot conclude that a meaningful number of Internet users would be confused by the Domain Name, nor that Internet users would mistakenly arrive at Respondent’s website by virtue of a typographical error.
Complainant cited two cases in support of its argument that the Domain Name was confusingly similar to its mark, America Online, Inc. v. John Zuccarini also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident, WIPO Case No. D2000-1495, and Hobsons, Inc. v. Peter Carrington a/k/a Party Knight Inc., WIPO Case No. D2003-0317. The Panel majority believes that both cases are distinguishable. In Hobsons, each of the three domain names was a classic typographical error vis-à-vis the complainant’s mark COLLEGEVIEW. One domain name transposed two letters in a common misspelling (collegeveiw.com), one omitted a letter (colegeview.com), and the third substituted an incorrect vowel for the correct one in another common misspelling (collageview.com). The panel in Hobsons concluded that all three of the subject domain names “are almost identical – visually and phonetically – to Complainant’s mark COLLEGEVIEW. In fact, all three domain names are phonetically identical to Complainant’s mark.”
Similarly, all of the “typosquatting” domain names at issue in the America Online case – with one exception – may be ascribed to the same types of commonplace typographical errors (misspelling, fat-fingering, omission or repetition) as characterized the domain names in the Hobsons case. Only one domain name in the America Online case – <1001winampskin.com> – was found to be confusingly similar to the complainant’s mark (WINAMP) for reasons beyond commonplace typographical errors. The panel in America Online supported its finding of confusing similarity on the “demonstrable bad faith” of the respondent in registering the domain name. In so doing, the panel cited a prior decision under the Policy, Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477, which in turn had cited to a number of United States court decisions stating that, in connection with a “likelihood of confusion” analysis in trademark infringement cases under the Lanham Act, a tribunal may consider the alleged infringer’s “intent in selecting the mark.”
Notwithstanding the partial conflation of the bad faith and confusing similarity concepts in the America Online and Wal-Mart decisions, the Panel majority in the instant case is not convinced that it is appropriate to consider Respondent’s alleged bad faith in deciding the “confusing similarity” issue under the Policy. The alleged bad faith of Respondent is a separate element under the Policy. Nothing in the WIPO Overview 2.0 suggests that bad faith is a factor in deciding confusing similarity under the Policy. In any event, the Panel majority here concludes that, even if Respondent’s allegedly bad faith motivations here are brought to bear on the question whether the Domain Name and the mark are confusingly similar, such motivations are only one factor among many, and they do not alter the result.
In sum, the Panel majority’s application of the WIPO Overview 2.0 to the facts of this case, and the Panel majority’s consideration of the authorities cited by Complainant, yield the conclusion in this admittedly difficult case that the Domain Name <gotmilf.com> is not confusingly similar to the mark GOT MILK? The Panel majority concludes that an Internet user confronted with this Domain Name is likely to be grinning, or groaning, or nonplussed – not confused.
Accordingly, the Panel concludes, by a majority, that paragraph 4(a)(i) of the Policy has not been established by Complainant.
B. Rights or Legitimate Interests
In view of the Panel majority’s disposition of paragraph 4(a)(i) above, it is unnecessary to decide whether Respondent lacks rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In view of the Panel majority’s disposition of paragraph 4(a)(i) above, it is unnecessary to decide whether Respondent has registered and used the Domain Name in bad faith.
D. Laches Defense
In view of the Panel majority’s disposition of paragraph 4(a)(i) above, it is unnecessary to decide whether Respondent’s laches defense has any merit. Nonetheless, the Panel observes here, unanimously, that Respondent’s laches defense here is unavailing. While a majority of the Panel believes that, in appropriate circumstances, laches may be a viable defense under the Policy, Respondent’s argument for application of laches here would fail. On the record here, there is no reason to conclude that Complainant sat on its rights too long. The Domain Name had been owned by other parties prior to 2010, when Respondent acquired it. For all that this record reveals, the use to which the Domain Name had been put prior to Respondent’s acquisition of it might have been benign, thus triggering little or no concern on Complainant’s part. Moreover, there has been no showing that Respondent was prejudiced by Complainant’s delay, such as proof of good-faith reliance on Complainant’s longstanding forbearance.
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
The Hon Neil Brown Q.C.
James A. Barker
I respectfully dissent with the majority in relation to their finding that the disputed domain name is not confusingly similar to the Complainant’s mark. I consider that it is. This is for the following reasons.
As noted by the majority, the WIPO Overview 2.0 states that the first element of the Policy is essentially a standing requirement. It involves a simple comparison between the mark and the disputed domain name to determine a likelihood of confusion. Prior panels have noted that this test “is effectively to assess whether a complainant has sufficient rights so as to give it standing to bring a complaint.” See, for example, Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986. Others have stated that it “is the simple appearance of similarity – to an Internet user – than can make the disputed domain name confusingly similar to the trademark.” Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited, WIPO Case No. D2010-0776.
On these established approaches, I consider that the Complainant’s mark is confusingly similar to the disputed domain name. The Complainant’s GOT MILK? mark is well-known. The California Milk Processor Board v. Justin James, WIPO Case No. D2011-1816. This has been recognised in a previous decisions as a factor in a finding of confusing similarity. (See e.g. National Collegiate Athletic Association and March Madness Athletic Association, LLC v. Cyberoad Corporation, WIPO Case No. D2000-1378).
The Complainant’s rights in that mark arose before registration of the disputed domain name by the Respondent. Phonetically, visually, and in overall impression, the Complainant’s mark and the disputed domain name are closely similar. In my view, Internet users could reasonably be confused about the connection between the two, at least on an initial interest test.
Decisions under the Policy often refer to confusion to “an Internet user”. The Mejeriforeningen case, supra., is one. There is of course no single “Internet user” or a single body of Internet users. Rather, in my view, this term is used in reference to a hypothetical, ”Reasonable Internet user”. In other words, the central question under paragraph 4(a)(i) of the Policy is: Could a reasonable Internet user be confused about the connection between the disputed domain name and the mark?. Issues of, for example, side-by-side comparison, typosquatting, distinctiveness, and overall impression are essentially different forms of reasoning to answer this central question.
In this respect, I disagree with the majority finding that no meaningful number of Internet users could reasonably be confused by the disputed domain name. There is evidence in the case file that at least one portion of Internet users (although not quantifiable) may not be confused. These would be users who would understand the term “milf”. On the majority approach, these users would not reasonably consider there was any connection between the Complainant’s mark and the disputed domain name, which carries a pornographic connotation. However, such an argument, in circumstances also involving sexual-related terms, has been rejected by previous panels: see e.g. Arizona Board of Regents for and on behalf of Arizona State University v. Value Holdings, Inc., WIPO Case No. D2001-0445; General Electric Company v. Basalt Management, WIPO Case No. D2000-0925; and Microsoft Corporation v. S.L., Mediaweb, WIPO Case No. D2003-0538. It is an approach that has also been previously rejected by this Panelist (LEGO Juris A/S v. P N S Enterprises, WIPO Case No. D2009-0170). It is an argument that rests on the whole public being aware of all the associations of the Complainant’s mark.
There is no reason to think that all Internet users would have that level of awareness. The majority view rests substantially on the change of meaning rendered by the substitution of the letter “f” with the letter “k” in the disputed domain name. However, this meaning would be entirely lost on Internet users who did not understand the term “milf”. I think it reasonable to conclude that a meaningful number of Internet users would not understand that term and so would likely be confused about the connection between the disputed domain name and the Complainant’s mark. The term “milf” does not appear in a dictionary (at least, not one owned by this Panelist) and, as such, does not appear to be a common term. It no doubt has currency for one portion of Internet users. But the test of confusing similarity involves consideration of whether a meaningful portion of Internet users could be reasonably confused, rather than in finding some group of Internet users who might not be confused. . Previous panels have taken this approach in considering confusion arising in various contexts, e.g. a particular geographic area. Blue Cross and Blue Shield Association (BCBSA) v. Domain Deluxe, WIPO Case No. D2005-0209; and Skype Limited v. Benjamin Decraene, WIPO Case No. D2005-1112.
While not necessary for the conclusions reached above, this Panelist has also taken into account the Respondent’s likely intention in registering the disputed domain name. It seems unlikely that the Respondent was not aware of the Complainant’s mark and intended to benefit from the association between it and the disputed domain name. (There is, is acknowledged, a division of Panelist opinion on whether a respondent’s intent is relevant to the issue of confusing similarity. See e.g. The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571, in which the panel considered that such intention is not relevant. In other cases, panels have found that it is relevant: Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477.)
This Panelist’s conclusion is not affected by considerations of whether this is a case of typosquatting. A negative finding on this point does little to affect this Panelist’s conclusions above. Other matters raised in the majority view are relatively minor (the non-appearance of the “?” which appears in the Complainant’s mark; the finding that the disputed domain name and mark do not sound exactly alike).
Despite this finding the minority of the Panel, like the majority, has found this a difficult case. The term “milf” has no doubt gained a meaning for a portion of Internet users. A Google search for “got milf” does not prominently feature results for the Complainant’s mark. Nevertheless, I consider that the stronger view, for the reasons above, is that the disputed domain name is confusingly similar to the mark.
Because of the majority finding on this issue, I agree it is unnecessary for the Panel to make a finding under paragraphs 4(a)(ii) and (iii) of the Policy.
James A. Barker
Date: February 19, 2013