WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Iron Mountain Incorporated v. Iro[u]n Mountain Storage, LLC
Case No. D2007-1688
1. The Parties
Complainant is Iron Mountain Incorporated, of United States of America, represented by Wolf, Greenfield & Sacks, P.C., United States of America.
The Respondent is Iro[u]n Mountain Storage, LLC of United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <ironmountainstorage.com> is registered with Key-Systems GmbH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2007. On November 16, 2007, the Center transmitted by email to Key-Systems GmbH a request for registrar verification in connection with the domain name at issue. On November 19, 2007, Key-Systems GmbH transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The registrant of the disputed domain name is stated in the registrar’s verification response to be “Iroun Mountain Storage LLC”. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 on November 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 21, 2007.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on December 31, 2007. The Panel finds that it was properly constituted. 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 in the business of information protection and storage services and offers records storage management, data protection, and information destruction solutions. Complainant markets its products and services worldwide. Complainant has continuously used the mark IRON MOUNTAIN for the promotion and sale of the aforementioned services since 1951.
Complainant owns United States Federal Registration Nos. 2,548,868 dated March 19, 2002; 2,746,344 dated August 5, 2003; 2,970,575 dated July 19, 2005; and 2,970,577 dated July 19, 2005 for the mark IRON MOUNTAIN as well as numerous trademark registrations for the mark IRON MOUNTAIN throughout the world.
Complainant registered the domain name <ironmountain.com> in 1995 and owns numerous additional domain names which incorporate variations of its IRON MOUNTAIN trademark.
Revenues over the past five years total over $6.7 billion for goods and services under and in conjunction with Complainant’s IRON MOUNTAIN trademark.
Complainant has invested millions of dollars in the advertising and promotion of the IRON MOUNTAIN mark, associated goods and services, on “ironmountain.com” website.
Respondent registered the <ironmountainstorage.com> Domain Name at issue on April 26, 2004.
5. Parties’ Contentions
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:
Complainant has rights in the IRON MOUNTAIN mark through multiple registrations of the mark with the United States Patent and Trademark Office; and
The Domain Name <ironmountainstorage.com> is identical to Complainant’s federally registered trademark IRON MOUNTAIN except for the additional word “storage” which is not a distinguishing feature sufficient to negate a finding of confusing similarity under the Policy.
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
Respondent does not own any trademarks containing the term “iron mountain”;
Respondent is presently not making any legitimate non-commercial or fair use of the Domain Name;
Respondent is not licensed by Complainant to use the mark IRON MOUNTAIN; and
Respondent has not made use of the Domain Name, nor has Respondent made demonstrable preparations to use the Domain Name, in connection with any bona fide offering of goods or services;
Respondent did not respond to Complainant’s cease and desist letter; and
Respondent deliberately registered the Domain Name to attract Internet users to its commercial website based on a likelihood of confusion with Complainant as to the affiliation or endorsement of its website.
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:
Respondent registered a Domain Name incorporating Complainant’s entire mark;
Respondent registered the Domain Name to intentionally trade off the substantial goodwill of Complainant and intentionally divert, for commercial gain, Internet users to the “ironmountainstorage.com” website by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation or endorsement;
Respondent intends to disrupt the business of Complainant; and
Respondent has no plausible legitimate reason for its choice of a Domain Name that is confusingly similar to Complainant’s trademark.
Respondent did not reply to Complainant’s contentions.
This lack of response could be enough to find for Complainant on all reasonable allegations of fact. See Brown Thomas & Company Limited v. Domain Reservations, WIPO Case No. D2001-0592 (July 17, 2001); Policy 4(a). Even though the Center gave Respondent sufficient notice under Rule 2(a), Respondent has not responded to the Complaint. Where Respondent does not respond to the Complaint, the Panel shall decide the dispute based upon the Complaint, Rules, 5(e), 14(a). The Complaint is to be decided on the basis of the statements and documents submitted, Rules, 15(a). Under Rule 14(b), Respondent’s failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate.”
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (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. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Given the over 50 years of use of the IRON MOUNTAIN mark and the existence of the United States and foreign trademark registrations for IRON MOUNTAIN, the Panel finds that Complainant has trademark rights in the IRON MOUNTAIN mark.
The Panel also finds that the Domain Name <ironmountainstorage.com> is likely to be confused with Complainant’s IRON MOUNTAIN mark since the dominant portion of Complainant’s mark and of the disputed Domain Name is “Iron Mountain.”
The addition of the word “storage” does not eliminate the confusion. The mere addition of a generic or descriptive term is not sufficient to avoid confusion. Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888 (January 6, 2004). (The fact that the word “autoparts” is added to Complainant’s trademark does not eliminate the identity, or at least the similarity, between Complainant’s trademark and the disputed domain name, as “autoparts” is a descriptive component of the disputed domain name.) See also, Bayer Aktiengesellschaft v. Dangos & Partners, WIPO Case No. D2002-1115 (February 3, 2003) (addition of generic words “healthcare” to form <bayerhealthcare.com> domain name deemed “confusingly similar to the BAYER trademark”); Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037 (March 9, 2005) (addition of “ordinary descriptive” term “buy” to mark LANTUS in domain <buylantus.com> “does nothing to dispel and serves only to reinforce the connection in the public mind between the word LANTUS and the Complainants, and therefore increases the risk of confusion”); PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696 (October 28, 2003) (finding domains such as <pepsibasketball.com>, <pepsigames.com>, <pepsihockey.com>, and <pepsisoccer.com> confusingly similar to Complainant’s PEPSI mark; stating that “[t]hat the mere addition of common terms such as ‘sports,’, ‘basketball’ or ‘soccer’ to the PEPSI mark is of no import”).
The Panel accordingly finds for Complainant under the first element of the Policy.
B. Rights or Legitimate Interests
In order for the Respondent to demonstrate rights or legitimate interests in the Domain Name, it must show
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
With respect to 4(c)(ii) of the Policy, there is no evidence that establishes that Respondent is commonly known by the Domain Name. Although the words “iron mountain” currently appear predominately on the website at the disputed domain name, this of itself does not establish that Respondent is commonly known by such name.
With respect to 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate non-commercial or fair use of the Domain Name and has not used the Domain Name, or a name corresponding to it, in connection with a bona fide offering of goods or services. At the time the UDRP complaint was filed and presently, the Domain Name is used for a website that advertises and promotes Respondent’s storage facilities. Respondent’s services appear to compete directly with those of Complainant.
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263 (April 28, 2005); see also Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455 (August 21, 2003); Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 (April 14, 2004). The Panel finds that the circumstances enumerated above establish a prima facie case showing that Respondent has no rights or legitimate interests in the Domain Name at issue.
The Panel accordingly finds for Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered the Domain Name in bad faith.
Complainant’s IRON MOUNTAIN mark has been used since 1951 and has been registered since 2002. Moreover, Complainant registered the domain name <ironmountain.com> in 1995 which domain name has been used since that time to promote Complainant’s information protection and storage services. Respondent registered the <ironmountainstorage.com> Domain Name on April 26, 2004. In view of the above, it is not plausible that Respondent registered the Domain Name at issue without knowledge of Complainant’s IRON MOUNTAIN trademark.
Respondent is not assisted in this matter by its failure to provide any explanation for its choice of a domain name so evidently similar to Complainant’s long-established mark.
The Panel also finds that Respondent’s use of the Domain Name in conjunction with offered storage facility services in apparent direct competition with Complainant to be evidence of bad faith use and registration. Specifically, Respondent’s conduct is covered by Policy 4(b)(iv): “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel accordingly finds for Complainant under the third element of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <ironmountainstorage.com> be transferred to Complainant.
Lawrence K. Nodine
Date: January 16, 2008