The Complainant is Public Storage of Glendale, California, United States of America, represented by McGuireWoods LLP, United States of America.
The Respondent is Domain Discreet / Hugh A. Anderson, Jr. c/o Alec Anderson of Fort Lauderdale, Florida, United States of America.
The disputed domain names are listed below. Each of the disputed domain names is registered with Register.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2009. On June 12, 2009, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name(s). On June 15, 2009, Register.com transmitted by email to the Center its verification response identifying the registrant of the disputed domain names as being a different entity from that named in the Complaint as Respondent. The Center provided the Complainant with notice of the change in registrant information on June 16, 2009. The Complainant filed an Amended Complaint on June 18, 2009. The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 the Respondent of the Complaint, and the proceedings commenced on June 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 13, 2009.
The Center appointed William R. Towns as the sole panelist in this matter on July 17, 2009. 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.
The Complainant is in the business of renting private storage spaces. The Complainant began using the mark PUBLIC STORAGE with its business in 1973, and has continuously used the mark in commerce since that time. Additionally, the Complainant owns a United States trademark registration for the PUBLIC STORAGE mark in connection with the “renting of private storage spaces with limited access”. The Complainant is a member of the S&P 500 and the Forbes Global 2000, and with more than 2,000 storage facilities in the United States and Europe providing in excess of 135 million net rentable square feet, the Complainant is among the largest landlords in the world.
The Respondent registered the disputed domain names on July 27 and 28, 2008. The disputed domain names currently resolve to portal websites populated with advertising links, including links to third-party websites featuring self storage units, storage facilities, moving services, vehicle and equipment rentals, and other storage related goods and services.
At the time the original Complaint was submitted to the Center, the WhoIs database maintained by Register.com listed Domain Discreet as the holder of the disputed domain names. It appears that Domain Discreet is the name of a privacy protection service that Register.com provides to its customers. In response to the Center's request for registrar verification, Register.com so indicated, disabled its privacy service, and identified Hugh A. Anderson Jr. c/o Alec Anderson as the underlying registrant of the disputed domain names. After receiving notice from the Center regarding the change in registrant information, the Complainant elected to file an Amended Complaint to include Hugh A. Anderson Jr. c/o Alec Anderson.1
The Complainant maintains that the disputed domain names are confusingly similar to its PUBLIC STORAGE mark, which the Complainant contends has become distinctive and famous as a result of Complainant's extensive sales, advertising, and promotion of its services under the mark. According to the Complainant, it has spent millions of dollars advertising and promoting the PUBLIC STORAGE mark in connection with its services and has generated billions of dollars in revenue utilizing the mark.
The Complainant asserts that the disputed domain names are nearly identical to its distinctive and well-known mark, and merely add locations, types of items stored, or discounts similar to those offered by the Complainant under the PUBLIC STORAGE mark. The Complainant notes that its various discounts include a “First Month for Just $1” special.
The Complainant asserts that the Respondent is using the disputed domain names to promote various services in a commercial setting in a manner likely to cause confusion in the marketplace whether the Respondent's goods and services are sponsored by or affiliated with the Complainant. The Complainant denies any connection with the Respondent, and further asserts that the Respondent has never been commonly known by the name “Public Storage”.
The Complainant contends that the Respondent registered and is using the disputed domain names in a bad faith attempt to profit from their confusingly similarity to the Complainant's PUBLIC STORAGE mark. The Complainant asserts that the Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation and/or endorsement of the Respondent's website or the products and services on the Respondent's website.
The Respondent did not reply to the Complainant's contentions.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain names are confusingly similar to the Complainant's PUBLIC STORAGE mark, in which the Complainant has established rights through registration and continuous and extensive use. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. In this instance, each or the disputed domain names incorporates the Complainant's mark in its entirety. The confusing similarity thereby created is not diminished by the insertion of common words such as “rental”, “warehouse”, “garage”, and “furniture”, or phrases such as “1st month free”. If anything, these additional descriptive words and phrases tend call to mind the Complainant's business activities, and may actually heighten such confusion. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc., WIPO Case No. D2007-1524.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is undisputed that the Complainant has not authorized the Respondent to use the Complainant's mark, and there is no indication that the Respondent has been commonly known by any of the disputed domain names. Nevertheless, the record reflects the Respondent's registration of multiple domain names incorporating the Complainant's mark, and their use to divert Internet traffic to the Respondent's websites, presumably to generate click-through advertising revenue.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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.
The Respondent has not submitted a formal Response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.2 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
There is no indication in the record that the Respondent has ever been commonly known by any of the disputed domain names, and it is undisputed that the Complainant has not authorized the Respondent to use its PUBLIC STORAGE mark or to appropriate that mark for use in domain names. Nor does the record reflect the Respondent's use or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. While it appears to be generally accepted that the use of a domain name to generate paid advertising revenues is not a per se violation of the Policy, provided there is no intent to exploit and profit from another's trademark, the record in this case strongly suggests that the Respondent's intent was to exploit and profit from the Complainant's mark through the creation of initial interest confusion. See Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986 (and decisions cited at ¶ 6.18 therein). Such use does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See Barceló Corporación Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946; Edmunds.com v. Ult. Search, Inc., WIPO Case No. D2001-1319.3
As a result, the Panel finds no basis in the record upon which the Respondent could assert rights or legitimate interests in the disputed domain name under the safe harbor provisions of paragraph 4(c) of the Policy. The Complainants' prima facie showing under paragraph 4(a)(ii) of the Policy thus stands unrebutted.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
As noted earlier, the Panel considers it a reasonable inference from the record that the Respondent knew of and had in mind the Complainant's mark when registering the disputed domain names. See Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551. The Respondent, lacking any connection to the Complainant, has registered and used multiple confusingly similar domain names to drive Internet traffic to what by all appearances is a pay-per-click advertising website. Absent any explanation from the Respondent, the Panel can ascribe no motive for the Respondent's opportunistic registration and use of the disputed domain names except to capitalize on or otherwise take advantage of the Complainant's rights. See Aubert International SAS and Aubert France SA v. Tucows.com Co., supra. Under the circumstances presented here, the Panel is of the opinion that the Respondent has used the disputed domain names in bad faith to attract Internet users to the Respondent's website for commercial gain, by creating a likelihood of confusion in terms of paragraph 4(b)(iv) of the Policy. See Edmunds.com v. Ult. Search, Inc., supra.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 following domain names be transferred to the Complainant:
William R. Towns
Dated: July 31, 2009
1 The term “Respondent” as used herein refers to Hugh A. Anderson Jr. c/o Alec Anderson unless otherwise indicated.
2 Some panels have held that a respondent's lack of response in particular circumstances can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent's failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
3 A number of Panels, including this one, have concluded that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant, provided it has not been registered with the complainant's trademark in mind. See, e.g., National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424. The Panel finds such decisions inapposite in the circumstances of this case. The registration of the Complainant's PUBLIC STORAGE mark on the USPTO Principal Register is evidence of the mark's distinctiveness, and the record further reflects that the Complainant's mark is well known and has come to be associated by the public with the Complainant's services. In the absence of any explanation from the Respondent, the Panel considers it more likely than not that the Respondent had the Complainant's mark in mind when registering the disputed domain names.