WIPO Upholds GotMilkAds.com Domain Name Over California Milk Processor’s Complaint
California – An Administrative Panel (the “Panel”) for the World Intellectual Property Organization (“WIPO”) ruled that the California Milk Processor Board’s (“Milk Board”) domain name “www.gotmilk.com” was not infringed by the domain name “www.gotmilkads.com”owned by Ryan Leonard.
The Milk Board implemented the famous “Got Milk?” phrase in the 1990s as an advertising campaign to get consumers to drink more milk. The widely successful campaign has now become a cultural tagline with as many as 1500 advertisement-related items for sale on Ebay. The derived domain name “www.gotmilk.com” receives over 1.8 million hits a year. Leonard registered the “www.gotmilkads.com” in 2009 but the website remained a parked website that only provided pay-per-click ads to third party websites unrelated to milk. Leonard made an offer to sell the website to the Milk Board for $10,000 but the two sides were unable to come to an agreement.
To cancel or transfer a domain name, the Uniform Domain Name Dispute Policy (“UDRP”) requires a complainant to prove all three elements: the domain name registered is identical or confusingly similar to a trademark of the complainant’s; the respondent has no rights or legitimate interests in the domain name; and the domain name has been registered in bad faith.
The Panel ruled that Leonard’s domain name was confusingly similar to the Milk Board’s domain name because Leonard’s domain nameincorporated the “Got Milk” trademark in its entirely in his domain name. The Panel found that the use of “ads” as an addition or descriptive word in the domain name did not diminish this effect. The common test for “confusingly similar” compares the appearance, sound, meaning, and overall appearance between the trademark and the disputed domain name.
The Panel also ruled that Leonard had no rights or legitimate interests in his domain name. Leonard submitted a sworn statement that his intention was to use the website to sell “Got Milk?” advertisements. However, the Panel was unpersuaded because of Leonard’s “passive holding” of the website for more than two years. Because the Panel found that Leonard’s domain name was confusingly similar to the Milk Board’s, they ruled that Leonard had more of a duty to establish a right or legitimate interest in “www.gotmilkads.com” rather than allow the website to remain unused for more than two years.
However, the Panel did rule that Leonard did not register his domain name in bad faith to exploit or profit from the Milk Board’s trademark rights. The Panel found that Leonard was not a professional domain squatter and the use of his website was plausible since several advertisements of the “Got Milk?” tagline are sold and re-sold on online auction sites such as Ebay. The Panel concluded from previous cases that a finding of bad faith based on a passive holding of a website depends on the particular facts of a specific case. The Panel was unpersuaded that neither the pay-per-click revenue from Leonard’s website nor his offer to sell his website to the Milk Board amounted to a bad faith attempt to exploit or profit money from the Milk Board’s trademark.
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