WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Public Storage v. Gadi Binness, Moving Insurance LLC
Case No. D2011-0438
1. The Parties
Complainant is Public Storage of Glendale, California, United States of America, represented by Lee, Tran, & Liang APLC, United States of America.
Respondent is Gadi Binness, Moving Insurance LLC of Montclair New Jersey, United States of America, respectively.
2. The Domain Name and Registrar
The disputed domain name <public-storage-insurance.com> (“Disputed Domain Name”) is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2011. On March 8, 2011, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On March 8, 2011, Dotster, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 11, 2011, providing the registrant and contact information disclosed by the Registrar and advising Complainant that the complaint was administratively deficient. Complainant filed an amended Complaint on March 14, 2011.
The Center verified that the Complaint together with 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 Respondent of the Complaint, and the proceedings commenced on March 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 6, 2011.
The Center appointed Michael A. Albert as the sole panelist in this matter on April 19, 2011. 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 in these proceedings is Public Storage, a Maryland Real Estate Investment Trust (“Complainant”). Complainant built its first self-storage facility in 1972 and is now a world leader in rentable self-storage space, currently operating over 2,100 company-owned locations in the United States and Europe. Complainant is among the largest landlords in the world.
According to the uncontested allegations made by Complainant, Complainant has been using and operating under the name “Public Storage” since 1972. Further, Complainant has continuously used and owned the trademark PUBLIC STORAGE (“PS Mark”) since at least 1973, in United States commerce, in connection with the renting of private self-storage spaces. Complainant is the owner of United States Trademark Registration No. 1,132,868 for PUBLIC STORAGE for “renting of private storage spaces with limited access,” which has been valid and subsisting on the Principal Register in the United States Patent and Trademark Office at all times since 1980. The PS Mark was registered on April 8, 1980, and claims a date of first use of April 20, 1973.
More recently, Complainant has registered PUBLIC STORAGE for a variety of goods and services related to its storage services, including locks, packing and moving materials, and retail store services for packing, moving and storage materials (U.S. Trademark Registration No. 2,363,326, registered in 2000, claiming first use in connection with these goods and services since 1998, disclaiming “storage” but not “public”); markers, pens, and delivery of merchandise for moving and transporting goods (U.S. Trademark Registration No. 2,363,327; registered in 2000, claiming first use in connection with these goods and services since 1998, no disclaimer); and paper padding for moving furniture and other packing and moving materials (U.S. Trademark Registration No. 2,487,755, registered in 2001, first use in 1998, disclaimer of “storage”). Although Complainant has no registration for the offering or sale of insurance services, Complainant does make a third-party’s insurance available at all of its facilities to allow its customers to purchase insurance to protect the goods stored at Complainant’s facilities.
Complainant has spent hundreds of millions of dollars promoting and advertising its PS Mark in connection with renting of private storage spaces with limited access, and related services, and has generated billions of dollars in revenue and good will under its PS Mark. As a result of Complainant’s extensive sales, advertising, and promotion of its services under the PS Mark, the PS Mark has become distinctive
and famous pursuant to Section 43(c) of the Lanham Act, 15 U.S.C. §1125(c).
The Panel is unaware of any further information relative to this case with regard to Respondent, except that Respondent is Gadi Binness, Moving Insurance LLC of Montclair, New Jersey, United States of America.
5. Parties’ Contentions
Complainant contends that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; that Respondent has no rights or legitimate interests in the Disputed Domain Name; and that Respondent registered and is using the Disputed Domain Name in bad faith.
Complainant is the owner of the PS Mark and common law rights associated therewith. Complainant’s PS Mark is in use by Complainant for “renting of private storage spaces with limited access.” Further, Complainant contends that its PS Mark is famous.
Complainant contends that the Disputed Domain Name is confusingly similar to Complainant’s PS Mark. Further, Complainant contends that the Disputed Domain Name creates confusion by combining PUBLIC STORAGE, Complainant’s famous mark, as well as its corporate name, with the term “insurance.”
Complainant alleges that Respondent lacks any rights or legitimate interests in the Disputed Domain Name because Respondent has never been known by the name “Public Storage”; because Respondent and Complainant are not affiliated; and because Respondent is using Complainant’s mark in the Disputed Domain Name to cause confusion and to misleadingly divert consumers. Complainant asserts that Respondent’s use of the Disputed Domain Name will cause consumers to believe that Respondent’s services are sponsored by or affiliated with Complainant, which is not the case.
Complainant says that Respondent is using the Disputed Domain Name in a misleading manner to attract consumers looking for genuine PUBLIC STORAGE with the intent of commercial gain and to misleadingly divert consumers.
Further, Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith. Complainant suggests, as evidence of Respondent’s bad faith, that it is inconceivable that Respondent did not know of Complainant or the PS Mark when registering the Disputed Domain Name. Complainant contends that the fact that Respondent appears to be in the same field of business as Complainant is further evidence of bad faith.
Finally, Complainant contends that the content, design, and words comprising the Disputed Domain Name are identical to the content, design, and domain name <publicstorageinsurance.com>, which was transferred to this Complainant in Public Storage v. Relotek LLC, WIPO Case No. D2010-1781. There, the respondent’s websites, located at the then disputed domain names: <publicstorage-insurance.com>; <publicstorageinsurance.com>; <publicstorage-insurance.net>; and <publicstorageinsurance.net>, which promoted a company called “Storage Insurance, LLC.” Complainant contends that the same entity has registered another variation of the terms “public storage” and “insurance” here, under the name “XFire”, instead of “Relotek” as in Public Storage v. Relotek LLC, supra. is further evidence of bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a Domain Name should be cancelled or transferred:
(i) the Disputed Domain Name registered by Respondent 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
Here, Respondent provided no response, and the deadline for so doing expired on April 5, 2011. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of Paragraph 4(a).
A. Identical or Confusingly Similar
Complainant has provided sufficient evidence that it is the owner of valid and subsisting United States Trademark Registration No. 1,132,868 for PUBLIC STORAGE for “renting of private storage spaces with limited access.”
The Disputed Domain Name, however, is not identical to the PS Mark. Therefore, the first issue is whether the Disputed Domain Name and the PS Mark are confusingly similar.
The Disputed Domain Name combines three elements: (1) Complainant’s PS Mark; (2) the term “insurance”; and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “public-storage-insurance”), as it is well established that the top-level domain name (i.e., “.com”) should be disregarded for this analysis. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.
Prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 (finding <attelephone.com> confusingly similar to the ATT trademark); and Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding <quixtarmortgage.com> legally identical to the QUIXTAR trademark).
Furthermore, the proper approach is to look at the overall impression or idea created by the mark and compare the result with the domain name. See Yell Limited. v. Ultimate Search, WIPO Case No. D2005-0091. Applying the test described in Yell Limited. v. Ultimate Search, supra., the Panel finds that the overall impression created in the present case is that the Disputed Domain Name is a reference to Complainant or to Complainant’s PS Mark. As the Disputed Domain Name uses the entirety of Complainant’s PUBLIC STORAGE trademark, the Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s mark here.
Additionally, Respondent’s addition of the word “insurance” in the Disputed Domain Names does not prevent a finding of confusing similarity under the Policy. It is well accepted that the addition of common terms to a trademark in forming a domain name generally does not diminish the confusing similarity between the domain name and the trademark. F. Hoffmann-La Roche AG v. Kasturba Nagar, N/A, WIPO Case No. D2007-0711. Further, the fact that Complainant offers insurance at its storage facilities makes it likely that consumers would confuse the disputed domain names as coming from, or being sponsored by or affiliated with, Complainant.
For all of the foregoing reasons, this Panel finds that the Disputed Domain Name, <public-storage-insuance.com>, is confusingly similar to Complainant’s PS Mark in which Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the Disputed Domain Name, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
It is uncontested that Complainant has neither licensed nor otherwise authorized Respondent to use the PS Mark, or variations thereof, in connection with Respondent’s business or as part of the Disputed Domain Name. Complainant has thus made a prima facie showing that Respondent lacks rights to the Disputed Domain Name. See i.e. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261.
Complainant has provided uncontroverted evidence that Respondent is using the Disputed Domain Name in a misleading manner to attract consumers looking for genuine PUBLIC STORAGE services. Respondent owns and operates “Storage Insurance LLC”, an online insurance agency. The evidence suggests that Respondent is using the Disputed Domain Name to promote its insurance agency in a commercial setting, despite Respondent’s rights in the PS Mark. Respondent’s services are directly competitive with those of Complainant. Prior panels have found that such offerings are not a bona fide offering of goods or services within the meaning of Paragraph 4(c)(i). See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (finding no bona fide use where <pfizerforwomen.com> redirected to online pharmacy); see also Clad Holdings Corp. v. Kentech, Inc., WIPO Case No. D2006-0837 (“[n]or does the Respondent appear to be using the domain names in relation with a bona fide offering of goods or services… The Respondent only appears to provide links leading to websites unrelated to the Respondent where ALL-CLAD products or competing products may be purchased.”)
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. The evidence suggests that Respondent is using the Disputed Domain Name for commercial benefit to misleadingly divert consumers to its websites and confuse those consumers into believing that there is some relationship, sponsorship, affiliation or
endorsement with Complainant. Therefore, the Panel finds that Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith set forth in Policy, paragraph 4(b)(iv), can occur when a respondent attempts to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark(s) as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or of a product or service offered on the respondent’s website.
It is well established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner. See Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc., WIPO Case No. D2004-0433. Here, because Respondent is in the business of offering a third-party’s insurance for property stored at its self-storage facilities, it is fair to infer that Respondent is using the Disputed Domain Name to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s PS Mark. The Panel finds that this use is in bad faith.
Further, the Panel finds compelling circumstantial evidence that Respondent likely knew of Complainant and Complainant’s PS Mark when it registered the Disputed Domain Name. Complainant has asserted, and Respondent has not refuted, that Complainant has well-established rights in the PS Mark and that this mark is famous. Taken together, these facts make it likely that Respondent knew of Complainant’s mark and unlikely that Respondent innocently registered the Disputed Domain Name without such knowledge.
Respondent’s knowledge of Complainant and Complainant’s PS Mark is strong evidence of bad faith. Based on the foregoing, the Panel finds that Respondent registered the Disputed Domain Name in bad faith. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names without any knowledge of Complainant and its … trademarks.”); and Société Air France v. R Blue, WIPO Case No. D2005-0290 (“Respondent must have been aware of the Complainant’s trademarks while registering the domain name in dispute. This finding leads to the conclusion that the domain name in dispute has been registered in bad faith.”)
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel finds that Complainant has proven the third and final 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 Disputed Domain Name <public-storage-insurance.com> be transferred to Complainant.
Michael A. Albert
Dated: April 26, 2011