WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Public Storage v. Southwest Self Storage Advisors / Jeff Cain
Case No. D2011-1396
1. The Parties
The Complainant is Public Storage of Glendale, California, United States of America, represented by Lee, Tran & Liang APLC, United States of America.
The Respondents are Southwest Self Storage Advisors and Jeff Cain, both of San Diego, California, United States of America, represented by Jeff Cain, United States of America.
2. The Domain Names and Registrar
The disputed domain names <bostonpublicstorage.com>, <cheappublicstorage.com>, <public-storageauctions.com>, <publicstoragechicago.com>, <publicstoragecoupons.com>, <publicstoragedallas.com>, <publicstoragedenver.com>, <publicstoragehouston.com> <publicstorage-losangeles.com>, <publicstorage-newyork.com>, <publicstoragephiladelphia.com> <publicstoragesanantonio.com>, <publicstoragesandiego.com>, <publicstoragesanfrancisco.com>, and <publicstorageseattle.com> (the “Domain Names”) are all registered with FastDomain, Inc. (“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2011. On August 18, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 19, 2011, the Registrar 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 the Respondent of the Complaint, and the proceedings commenced on August 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2011. The Response was filed with the Center on September 13, 2011.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 20, 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
The Complainant is a real estate investment trust organized under the laws of the State of Maryland, United States of America, with its principal place of business in Glendale, California, United States. Directly or through its investment interests in PS Business Parks, Inc., a publicly traded company, the Complainant owns and operates more than 2000 personal storage facilities in the United States and Europe, as well as multi-tenant office and industrial space rented to companies and individuals. The Complainant is listed among the Forbes Global 2000 largest corporate groups in the world.
The Complainant asserts that it has associated its storage services with the mark PUBLIC STORAGE since 1973. It obtained United States trademark registration for that mark (No. 1132868) in 1980, followed by other registered marks consisting of, or including, the “Public Storage” name. The mark is used on the Complainant’s website at “www.publicstorage.com” and on signage at the storage, office, and warehouse facilities, as well as in advertising and promotions. According to the Complaint, the Complainant has spent hundreds of millions of dollars promoting the PUBLIC STORAGE mark, and the mark is associated with billions of dollars in sales.
Previous UDRP panels have found that the Complainant’s mark is well known and long established, particularly in the United States. See, e.g., Public Storage v. Moving In Ca.com, WIPO Case No. D2009-1373; Public Storage v. Domain Discreet, WIPO Case No. D2009-0775; Public Storage v. AAA Personal Storages, WIPO Case No. D2009-1100; Public Storage v. Domain Discreet, WIPO Case No. D2009-0775; Public Storage v. Texas International Property Associates, WIPO Case No. D2010-1782; Public Storage v. Relotek LLC, WIPO Case No. D2010-1781; Public Storage v. Cardinal Development Company, WIPO Case No. D2010-1780.
The Domain Names each resolve to websites with some content concerning self-storage and warehouse services and also featuring advertising links to a variety of commercial self-storage and warehouse service providers, as well as links to one or more of the other Domain Names. The landing pages for the Domain Names incorporating city names also include quotations from Wikipedia about the city in question, as well as a paragraph or two about finding low-priced self-storage facilities in that metropolitan area. The pages do not identify the Respondent but typically include phrases congruent with the relevant Domain Name, such as “We at Public Storage-Los Angeles”, which imply that the Domain Name reflects the name of the website operator. The pages also display advertising links for other kinds of commercial enterprises, from moving services to used car sales.
Communications between the parties in June and July 2011 failed to result in a settlement of the Complainant’s claims of trademark infringement and its demand for the transfer of the Domain Names. However, the Respondent added to the landing pages of the websites associated with the Domain Names a prominent disclaimer of affiliation with the Complainant.
5. Parties’ Contentions
The Complainant contends that all of the Domain Names are confusingly similar to the Complainant’s well established PUBLIC STORAGE mark, and that the Respondent has no legitimate rights or interests in the names.
The Complainant infers that the Respondent registered and uses the Domain Names in a bad faith effort to mislead Internet users for commercial gain in its own business and from advertising revenues derived from the Complainant’s competitors and other enterprises.
(i) Respondent Identity
The Domain Names were registered on various dates ranging from June 27, 2010 to May 1, 2011 in the name of Southwest Self Storage Advisors / Jeff Cain, although in communications with the Center the Registrar named only Jeff Cain as the registrant. The Response states that “[t]he Respondent has owned and operated public-self-mini storage facilities in Arizona since 1991, renting thousands of storage units during that time.” It also appears from its website at “www.selfstorageforsale.az” that the Respondent Southwest Self Storage Advisors is in the business of brokering the sale of self-storage properties. Mr. Cain, who submitted the Response in this proceeding and identifies himself as the representative of “the Respondent”, is shown on the Respondent’s website as the “Designated Broker” for the company. According to the online business entity database maintained by the Arizona Corporation Commission, Southwest Self Storage Advisors LLC is an Arizona limited liability company, of which Mr. Cain is the only listed member. Accordingly, the Panel will treat Southwest Self Storage Advisors and Jeff Cain collectively as “the Respondent” for purposes of this proceeding.
(ii) Respondent contention
The Respondent contends that the Domain Names are not confusingly similar to the Complainant’s PUBLIC STORAGE mark and that the Respondent has a legitimate interest in employing descriptive words in Domain Names that promote the Respondent’s business related to the sale or rental of public storage facilities. (The Respondent also alleges that the Complainant’s attempt to force the transfer of the Domain Names amounts to a violation of United States antitrust laws, which the Panel notes is beyond the scope of the present proceeding.)
The Respondent does not deny awareness of the Complainant and its mark at the time the Respondent registered the Domain Names. However, the Respondent asserts that the Domain Names are descriptive rather than confusing and that the disclaimer added to the Respondent’s websites “completely eliminates” the possibility of confusion with the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name 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.
Under paragraph 15(a) of the Rules:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Complainant holds several trademark registrations for the PUBLIC STORAGE mark, which is incorporated in its entirety in each of the 15 Domain Names. Each of the Domain Names adds to these words the name of a city in the United States or another generic word (“cheap”, “auctions”). These geographic and generic additions do not lessen the likelihood of confusion with the mark, particularly since they would appear to be relevant to the Complainant’s nationwide self-storage rental business.
As the Respondent observes, the Complainant’s mark consists of a descriptive English phrase that could conceivably refer generally to the business of leasing storage space, a business in which numerous firms are engaged. Nevertheless, the mark has been registered precisely because that phrase has acquired distinctiveness in the market for storage services in the United States.
The Panel concludes that the Domain Names are confusingly similar to the Complainant’s mark for purposes of the first element of the Complaint.
B. Rights or Legitimate Interests
The Policy, paragraph 4(c), lists nonexclusive circumstances under which a respondent could demonstrate rights or legitimate interests in a domain name, including:
“(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 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’s use of the Domain Names is clearly commercial, and the Respondent does not appear to have used a name corresponding to any of the Domain Names in business, other than references on the websites associated with the Domain Names themselves such as, “We at Public Storage-Los Angeles”. These references are somewhat misleading, as there is no evidence in the record or on the websites of any business operating under those names. The Respondent asserts a legitimate interest in using descriptive Domain Names relevant to the Respondent’s business. That could be a valid interest under the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, section 2.2), unless the Complaint established the probability that the Domain Names were chosen for their trademark rather than generic value, to take advantage of the fame associated with the Complainant’s mark. That factual question is addressed in the following section, in the context of the element of bad faith.
C. Registered and Used in Bad Faith
The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following, on which the Complainants implicitly rely:
“(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.”
It is uncontested that the Complainant’s PUBLIC STORAGE mark is well known and long established in the self-storage industry in the United States. The Respondent, which is involved in that very industry, does not deny prior knowledge of the Complainant’s mark. The Respondent claims descriptive, generic use of the words “public storage”, but the United States Patent and Trademark Office has determined that those words have acquired distinctiveness in the market for rental storage services, referring to the Complainant. The Respondent, notably, does not appear to have registered multiple domain names based on other generic terms for the same business, such as “self-storage” and “storage rental”. Instead, the Respondent registered 15 Domain Names incorporating the mark of a competitor. This suggests that the Domain Names were chosen for their trademark value rather than their generic value.
The Respondent has recently added a disclaimer of affiliation on the websites associated with the Domain Names. This does not eliminate the “initial interest confusion” that affects Internet users presented with Domain Names that appear to be associated with the Complainant. See WIPO Overview, supra, section 3.5. The confusion engendered by the Domain Names themselves can be expected to drive traffic to the associated websites, where at least some of the users are likely to linger. Moreover, the Respondent’s failure to identify itself on the websites lends credence to the notion that the Respondent hoped to take advantage of possible confusion with the Complainant.
The Panel concludes that the third element of the Complaint has been established: on the available record it appears probable that the Domain Names were registered and used in bad faith within the meaning of the Policy. The same evidence and reasoning also negates the Respondent’s claim of a legitimate interest in the Domain Names for purposes of the second element of the Complaint.
For the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <bostonpublicstorage.com>, <cheappublicstorage.com>, <public-storageauctions.com>, <publicstoragechicago.com>, <publicstoragecoupons.com>, <publicstoragedallas.com>, <publicstoragedenver.com>, <publicstoragehouston.com> <publicstorage-losangeles.com>, <publicstorage-newyork.com>, <publicstoragephiladelphia.com> <publicstoragesanantonio.com>, <publicstoragesandiego.com>, <publicstoragesanfrancisco.com>, and <publicstorageseattle.com>, be transferred to the Complainant.
W. Scott Blackmer
Dated: October 4, 2011