If merely registering a domain name incorporating a trademark secured a right or legitimate interest “every respondent in proceedings under the Policy would be found to have rights in the respective domain name, without having regard to any other circumstances,” The California Milk Processor Board v. Mattia Fraulini, D2011-1077 (WIPO August 25, 2011). This hints that it takes more than registering the domain name to be entitled to hold it against an aggrieved complainant. If the complainant presents a prima facie case that the respondent lacks rights or legitimate interests in the domain name, the respondent must affirmatively show that it does. Paragraph 5(b)(i) of the Rules explains the expectations. The respondent must “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name.”
Respondent in California Milk residing in Italy registered an almost ubiquitous slogan composed of two common English words “got” and “milk.” The combination of the two words is not common. In a pre-submission to the Panel, the Respondent offered one explanation and in response to the complaint offered another. The Panel found the two explanations “mutually incompatible”:
With his first communications to the Center, he presented himself as a person of little knowledge of English, who has chosen two simple generic words for the name of his rock band without any particular reason, and without having any idea for the existence of Complainant and its trademark. Then, with the formal Response, a new version was put forward – that the name was purposefully chosen in order to make a joke with the lost childhood of humankind, and again there was no knowledge of Complainant.
Incompatibility of “diverging” explanations raises credibility issues. Geographic distance (Italy and California) and “simple generic words” are givens, while asserting ignorance of a complainant or its trademark is known only to the Respondent. Sometimes the givens are conclusive of good faith, particularly where the domain name is used in a manner consistent with their meanings, but the less common the combination of “simple generic words” the greater the scrutiny of the respondent’s denial. In California Milk, the Panel analyzed the “diverging” explanations to pierce the Respondent’s denial and “on balance, finds both of them artificial and unsatisfactory.” Why? Because in the Panel’s view
the first of them fails to explain why Respondent (allegedly not having [a] good command of English) has chosen English words for the name of its band, why he has chosen precisely the words “got” and “milk”, and why their appearance on Respondent’s website is so similar graphically to the registered trademark of Complainant. On the balance of probabilities, the claim that this was just a coincidence does not appear as credible to the Panel.
The second explanation is also implausible, because it
contradicts the initial explanation in two ways: it is unclear how Respondent could have come up with the idea to express himself by joking with the lost childhood of humankind through the use of a foreign language that is allegedly difficult for Respondent to comprehend; and it simply negates the first explanation that the choice of words was random and without particular reason.
It appears more likely than not that the Respondent chose the combination “gotmilk” after seeing Complainant’s commercials. “On the balance, the Panel is inclined to accept that Respondent has chosen to register and use the Domain Name being aware of Complainant’s brand and of its value, and in attempt to benefit from it by attracting attention to his newly-formed band. This does not appear to the Panel as a genuine good faith use of the Domain Name that would give rise to rights and legitimate interests in it to Respondent.”
The Panel makes it clear, however,that whether or not the Respondent can use “Got Milk” for the name of its rock band – a trademark infringement rather than an abusive registration question – cannot be answered in a UDRP proceeding. “[S]uch decision is reserved for the courts of competent jurisdiction.”