World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Public Storage v. Cardinal Development Company

Case No. D2010-1780

1. The Parties

Complainant is Public Storage, a Maryland Real Estate Investment Trust, United States of America represented by Lee, Tran, & Liang APLC, United States of America.

Respondent is Cardinal Development Company of Costa Mesa, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <publicstoragesantaclarita.com>, <publicstoragevalencia.com>,

<santaclaritapublicstorage.com> and <valenciapublicstorage.com> (“Domain Names”) are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2010. On October 25, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Names. On October 25, 2010, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on November 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2010. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2010.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on December 8, 2010. 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 Public Storage is the world leader in rentable storage self-space. Complainant built its first self-storage facility in 1972. Today it operates over 2,100 company-owned locations in the United States and Europe, totaling more than 140 million net rentable square feet of real estate. Complainant’s interest in PS Business Parks, Inc., (NYSE: PSB) adds another 21 million rentable square feet of commercial, primarily flex, multitenant office and industrial space. Complainant is a member of the S&P 500 and the Forbes Global 2000. Complainant has been using and operating under the name “Public Storage” since 1972.

Since at least 1973, Complainant has used continuously in United States commerce the PUBLIC STORAGE trademark (hereinafter, the “PUBLIC STORAGE Mark”) in connection with the renting of private self-storage spaces. Complainant owns United States Trademark Registration Number 1,132,868 for that mark.

Complainant consistently and prominently displays and advertises the PUBLIC STORAGE Mark in connection with its services and has spent hundreds of millions of dollars extensively promoting and advertising the PUBLIC STORAGE Mark in connection with those services, generating billions of dollars in revenue. As a result of Complainant’s extensive sales, advertising and promotion of its services under the PUBLIC STORAGE Mark, and through favorable industry acceptance and recognition, the relevant consuming public and trade have come to recognize and identify Complainant as the source of the high quality of services offered in connection with the PUBLIC STORAGE Mark.

5. Parties’ Contentions

A. Complainant

As a result of Complainant’s extensive sales, advertising, and promotion of its services under the PUBLIC STORAGE name and Mark, both have become distinctive and famous pursuant to Section 43(c) of the Lanham Act, 15 U.S.C. §1125(c). Also, the PUBLIC STORAGE name and Mark are assets of incalculable value as identifiers of Complainant and its high quality services and goodwill.

The Infringing Domain Names are nearly identical to the PUBLIC STORAGE name and Mark, simply adding location names. Another Panel has found that incorporating the PUBLIC STORAGE Mark in its entirety is adequate to establish that a domain name is identical or confusingly similar to Complainant’s registered trademark. In previous cases involving the PUBLIC STORAGE name and Mark, the “Panel has found that the addition of a geographical term to a trademark within a domain name does not reduce the identity or confusing similarity of the domain name with the trademark”.

Respondent is making an illegitimate commercial use of the Domain Names with the intent of commercial gain and to misleadingly divert consumers. Use of the Domain Names would tarnish the PUBLIC STORAGE Mark. Respondent is using the infringing Domain Names to promote its self-storage facilities in a commercial setting, despite the fact that Respondent’s storage company is called “Extra Storage.” The use of the Domain Names by Respondent in this manner will create confusion in the marketplace regarding whether Respondent’s goods and services are sponsored by, or affiliated with, Complainant – which they are not. There is no connection between Complainant and Respondent and Respondent has never been known by the name “Public Storage”.

Respondent registered the Domain Names in bad faith, aware of them, because the Domain Names incorporated the PUBLIC STORAGE Mark in its entirety and Respondent is in the same field of business as the Complainant. Furthermore, by using the infringing Domain Names as alleged herein, Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent’s web site by creating a likelihood of confusion with the PUBLIC STORAGEMark and the source, sponsorship, affiliation, and/or endorsement of the Respondent’s web site or of the products and services on the Respondent’s web site. This is especially the case because Complainant has several facilities in the Santa Clarita, California and Valencia, California areas. Respondent is also profiting from the use of the Domain Names, which are confusingly similar to Complainant’s PUBLIC STORAGE Mark.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be 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 in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds Complainant has rights in the PUBLIC STORAGE Mark. It is undisputed that Complainant has been using the PUBLIC STORAGE Mark continuously since 1972 and it has registered the Mark on the Principal Register in the U.S. Patent and Trademark Office. Thus, the Mark is entitled to a presumption of validity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”), at paragraph 1.1 (“If the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights.”).

The Panel further finds that the Domain Names <publicstoragesantaclarita.com>, <publicstoragevalencia.com>, <santaclaritapublicstorage.com> and <valenciapublicstorage.com> are identical to the PUBLIC STORAGE Mark, except for the addition of the suffix “.com” and geographic terms. The addition of the gTLD “.com” is without legal significance from the standpoint of comparing the Domain Names to the PUBLIC STORAGE Mark because use of a gTLD is required of domain name registrants, “.com” is one of such gTLD's, and it does not serve to identify a specific enterprise as a source of goods or services. See SBC Communications v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602 (July 13, 2001).

Furthermore, the Domain Names <publicstoragesantaclarita.com>, <publicstoragevalencia.com>, <santaclaritapublicstorage.com> and <valenciapublicstorage.com> simply add the geographic terms “Santa Clarita” and “Valencia,” before and after Complainant’s PUBLIC STORAGE Mark. It is well-established that the incorporation of a trademark in its entirety in a domain name is sufficient to establish confusing similarity, and that the addition of a geographically descriptive term to a trademark is usually not sufficient to escape a finding of confusing similarity because it fails to change the overall impression of the designations as being connected to Complainant. See, Public Storage v. Moving In Ca.com, WIPO Case No. D2009-1373 (finding that the addition of the geographical terms “California” “Los Angeles” and “Southern California” to a trademark within a domain name does not reduce the identity or confusing similarity of the domain name with the trademark); VeriSign, Inc. v. NandiniTandon, WIPO Case No. D2000-1216 (finding confusing similarity where the disputed domain name merely added the word “India” to the Complainant’s VERISIGN mark). Furthermore, insofar as Complainant does business in Santa Clarita, California and Valencia, California, Respondent’s addition of the geographic terms corresponding to those locations to Complainant’s PUBLIC STORAGE mark simply compounds the confusion.

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

It is uncontested that Complainant has not authorized Respondent to use its PUBLIC STORAGE Mark in connection with Respondent’s website. Insofar as Complainant has made a prima facie showing that Respondent lacks rights to the Domain Names (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261, this shifts the burden to Respondent to show by concrete evidence that it has rights or legitimate interests in the Domain Names. See, e.g. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, Respondent may satisfy its burden by demonstrating any of the following: (i) before any notice of the dispute, 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) 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.

Respondent has provided no evidence to carry its burden. In fact it is undisputed that Respondent registered the Domain Names long after Complainant adopted and used its PUBLIC STORAGE Mark and obtained a United States registration for it.

For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.

Considering (1) Complainant’s long-standing use of the PUBLIC STORAGE Mark over 30 years before Respondent registered the Domain Names, (2) Complainant’s U.S. Trademark Registration for the PUBLIC STORAGE mark issued many years before Respondent registered the Domain Names, (3) that Respondent is in the same field of business (storage services) as Complainant, and (4) that Respondent registered four domain names including the PUBLIC STORAGE Mark in its entirety, the Panel concludes that Respondent must have been aware of Complainant’s long-standing rights in the PUBLIC STORAGE Mark when it registered the Domain Names. See Public Storage v. Moving In Ca.com, WIPO Case No. D2009-1373 (a respondent's knowledge of a complainant's trademark when registering a domain name containing that mark often has been found by panels to constitutes evidence of bad faith registration); Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (holding that to have proceeded with registration of an infringing domain name knowing of Complainant’s rights in the mark and use of the mark demonstrates Respondent’s bad faith registration).

Lacking any connection to Complainant, it appears that Respondent registered and used multiple confusingly similar domain names to drive Internet traffic to a website advertising and selling services akin to Complainant’s services –storage. Absent any explanation from Respondent, the Panel can ascribe no motive for Respondent's opportunistic registration and use of the Domain Names except to capitalize on or otherwise take advantage of Complainant's long-standing trademark rights. Under the circumstances presented here, the Panel is of the opinion that Respondent has used the Domain Names in bad faith to attract Internet users to Respondent's website for commercial gain, by creating a likelihood of confusion in terms of paragraph 4(b)(iv) of the Policy.

For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

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 Names: <publicstoragesantaclarita.com>, <publicstoragevalencia.com>, <santaclaritapublicstorage.com> and <valenciapublicstorage.com>, be transferred to Complainant.

Harrie R. Samaras
Sole Panelist
Date: December 22, 2010

 

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