California Milk Processor Board v. Scott Amidzich
Claim Number: FA1012001362442
Complainant is California Milk Processor Board (“Complainant”), represented by Stephen J. Byers, California, USA. Respondent is Scott Amidzich (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gothempmilk.us>, registered with 1&1 INTERNET AG.
The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 8, 2010; the Forum received a hard copy of the Complaint on December 9, 2010.
On December 9, 2010, 1&1 INTERNET AG confirmed by e-mail to the Forum that the <gothempmilk.us> domain name is registered with 1&1 INTERNET AG and that Respondent is the current registrant of the name. 1&1 INTERNET AG has verified that Respondent is bound by the 1&1 INTERNET AG registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 15, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 4, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name registration be cancelled.
A. Complainant makes the following assertions:
1. Respondent’s <gothempmilk.us> domain name is confusingly similar to Complainant’s GOT MILK? mark.
2. Respondent does not have any rights or legitimate interests in the <gothempmilk.us> domain name.
3. Respondent registered and used the <gothempmilk.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, California Milk Processor Board, operates on behalf of fluid milk producers in the advertising and promotion of the sale and use of fluid milk. Complainant owns several trademark registrations worldwide for its GOT MILK? mark, including with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,903,870 issued July 4, 1995) and the European Union Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 8527178 issued June 23, 2010).
Respondent, Scott Amidzich, registered the <gothempmilk.us> domain name on April 8, 2010. Respondent’s disputed domain name previously resolved to Respondent’s website for professional fire dancing located at <vatra.org>. As of October 13, 2010, the website was changed to reflect an “under construction” webpage relating to a proposed online resource for information on animal milk alternatives.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant has presented evidence to show that it owns several trademark registrations for its GOT MILK? mark with the USPTO (e.g., Reg. No. 1,903,870 issued July 4, 1995) and the OHIM (e.g., Reg. No. 8527178 issued June 23, 2010). The Panel finds that such registrations are sufficient to establish Complainant’s rights in the GOT MILK? mark dating back to July 4, 1995. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of [UDRP] ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant contends that the <gothempmilk.us> domain name is confusingly similar to its GOT MILK? mark, because the domain name incorporates the entire mark, absent the question mark, while adding the generic term “hemp” in place of the space between the terms of the mark. Further, the Panel notes that the addition of a country-code top-level domain (“ccTLD”) is not sufficient to render the domain name distinguishable from the mark. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights and legitimate interests in the <gothempmilk.us> domain name. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show that it possesses rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under [UDRP] ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”). The Panel finds that Complainant has produced a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <gothempmilk.us> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The Panel finds that there is no evidence on record to suggest that Respondent owns a trademark or service mark for the disputed domain name or any variation thereof. Therefore, Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant argues that Respondent is neither commonly known by the <gothempmilk.us> domain name, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information identifies “Scott Amidzich” as the registrant of the <gothempmilk.us> domain name, and there is no further evidence on record that Respondent is commonly known by the disputed domain name. The Panel finds that without evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(iii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues, and submits screen-shot evidence to show, that Respondent previously used the disputed domain name to promote and advertise its fire dancing act and show. Complainant contends that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The Panel agrees and finds that Respondent’s previous use of the disputed domain name to advertise and promote its professional fire dancing show is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iv). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to [UDRP] ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to [UDRP] ¶ 4(c)(iii)).
Further, Complainant argues that after Respondent spoke with legal counsel for Complainant on October 13, 2010, that Respondent changed the disputed domain name to resolve to an “under construction” landing page. Complainant alleges that Respondent is purporting to set up a website to give information about animal milk alternatives. The Panel finds that Respondent’s current failure to make an active use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iv). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to [UDRP] ¶ 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent previously used the disputed domain name to resolve to a website for Respondent’s fire dancing show. The Panel infers that Respondent’s commercial use of the confusingly similar domain name results in Respondent’s commercial gain. Therefore, the Panel finds that Respondent’s previous use of the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the respondent registered the domain name <statefarmnews.com> in bad faith because the respondent intended to use the complainant’s marks to attract the public to the web site without permission from the complainant).
Further, Complainant alleges that Respondent changed the landing page for the disputed domain name to an “under construction” page which will purportedly provide information on animal milk alternatives. Complainant asserts that Respondent only changed the resolving website after Complainant informed him that he was violating trademark law and that Complainant would not pay him for the domain name. The Panel finds that Respondent’s failure to currently make an active use of the disputed domain name is further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the UDRP); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED..
Accordingly, it is Ordered that the <gothempmilk.us> domain name registration be CANCELLED.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 10, 2011
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