GotMilf.com not confusingly similar to GotMilk.com – UDRP complaint denied

A UDRP complaint for the domain name GotMilf.com was denied by a three member panel at WIPO Arbitration and Mediation Center.

The complainant that was The California Milk Processor Board (GotMilk.com) filed a complaint for the domain GotMilf.com owned by Del Polikretis, represented by Ari Goldberger’s ESQwire.com.

The Center appointed Robert A. Badgley, James A. Barker and The Hon Neil Brown Q.C. as panelists.

The Panel found that “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.“

A majority of the Panel concluded that the Domain Name was not confusingly similar to the mark so the complaint failed in the first element of the UDRP.

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.

Panel’s Discussion and Findings

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.

A majority of the Panel concludes that the Domain Name is not confusingly similar to the mark.

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.

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.

Decision

So the complaint failed at the third element of the UDRP. For the foregoing reasons, the Complaint was denied.