WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Public Storage v. PrivacyProtect.org / Trade Out Investments Ltd
Case No. D2011-0452
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 Respondent is PrivacyProtect.org / Trade Out Investments Ltd of Moergestel, Netherlands and Caracas, Venezuela, respectively.
2. The Domain Name and Registrar
The disputed domain name <publistorage.com> (the “Domain Name”) is registered with Power Brand Center Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2011. On March 10, 2011, the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the Domain Name. On March 14, 2011, Power Brand Center Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 15, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant chose not to amend its Complaint.
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 March 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2011.
The Center appointed Steven A. Maier as the sole panelist in this matter on April 28, 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 an operator of rentable storage space. It is the owner of a United States registered trade mark PUBLIC STORAGE, registered in 1980.
The Domain Name was registered on August 6, 2005.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant states that it is a world leader in rentable storage space, having built its first self-storage facility in 1972. It operates over 2,100 company-owned locations in the United States and Europe, totalling more than 135 million net rentable square feet of real estate. The Complainant’s business parks interest adds another 19 million rentable square feet of commercial and industrial space. Based on number of tenants, the Complainant is among the largest landlords in the world.
The Complainant has been using and operating under the name “Public Storage” since 1972. It has continuously used and owned the trademark PUBLIC STORAGE since at least 1973 in the United States in connection with the renting of private self-storage spaces.
The Complainant is the owner of United States Trademark Registration Number 1,132,868 for PUBLIC STORAGE, registered in 1980 in connection with the “renting of private storage spaces with limited access”.
The Complainant consistently and prominently displays and advertises the mark PUBLIC STORAGE in connection with its services. It has spent millions of dollars extensively promoting and advertising the mark in connection with its services and has generated billions of dollars in revenue under the mark.
As a result of the Complainant’s extensive sales, advertising and promotion of its services under the PUBLIC STORAGE name and mark, and through favourable industry acceptance and recognition, the relevant consuming public and trade have come to recognize and identify the Complainant as the source of the high quality of services offered in connection with the name and mark. The name and mark are both distinctive of the Complainant and famous.
The Domain Name is nearly identical to the Complainant’s PUBLIC STORAGE name and mark and simply misspells the name and mark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Respondent is using the Domain Name to promote various services that compete with the Complainant, as well as other various services, in a commercial setting. Specifically, the Respondent has created a website designed to profit from user “typos” and directs the user to the competitors of the Complainant.
These types of websites are known as “link farms” in the Internet commerce industry, and all of the links on the Respondent’s website relate to Public Storage, storage supplies, and storage services.
The use of the Domain Name by the Respondent in this manner will create confusion in the marketplace regarding whether the Respondent’s goods and services are sponsored by, or affiliated with,
Complainant, which they are not.
There is no connection between the Complainant and the Respondent, despite the obvious similarity between the PUBLIC STORAGE name and mark and the Domain Name.
Further, the Respondent has never been known by the name “Public Storage”, or any misspelling of “Public Storage”, as the Domain Name suggests.
The Complainant contends that the Domain Name was registered and is being used in bad faith.
There is evidence of bad faith registration and use where, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
There have been numerous UDRP decisions that have held that websites which are “link farms,” i.e., a list of sponsored links, amounts to unduly taking advantage of the well-known nature of a complainant’s mark to attract more Internet users and generate revenue.
Furthermore, panels have found evidence of bad faith where the Respondent uses privacy protection services to avoid submission to UDRP proceedings. Privacyprotect.org has been involved in prior UDRP proceedings, all of which resulted in the transfer of the disputed domain name.
By using the Domain Name as alleged in the Complaint, the 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 Complainant’s PUBLIC STORAGE name and mark as to 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.
The Complainant requests a transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its complaint, the Complainant is required to prove that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Panel observes that, although the Respondent has failed to file a Response, it is still for the Complainant to prove its case. Further, while the factual assertions made by the Complainant may be uncontradicted by the Respondent, the Panel must nevertheless examine the circumstances that are apparent from the Complaint itself in arriving at its conclusions.
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of both registered and unregistered trademark rights in the mark PUBLIC STORAGE. The Panel further finds that the Domain Name is confusingly similar to the Complainant’s said mark. The Domain Name is identical to the mark (ignoring the space between the words) but for deletion of the letter “c”. Accordingly, this first element of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Other than by its use of the Domain Name itself, there is no evidence that the Respondent has ever traded under the Domain Name or a name similar to it or that it has rights in any such names. The Panel accepts the Complainant’s submission that it has no connection with the Respondent and finds that the Complainant has never licensed or authorised the Respondent to use its mark. Accordingly, the second element of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel accepts that the Respondent is using the Domain Name to link to a “link farm” site offering services competitive with those of the Complainant. The Panel has found that the Domain Name is confusingly similar to the Complainant’s mark and that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has declined to offer any explanation for the registration of the Domain Name. The Panel infers from the circumstances that the Respondent deliberately registered the Domain Name for the purpose of typosquatting”, i.e., taking advantage of Internet users looking for the Complainant’s own website who may mistype the URL in question. Such actions are designed to take unfair advantage of the Complainant’s goodwill and constitute bad faith for the purposes of the Policy.
Specifically, the Panel finds that, by using the Domain Name, the Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s PUBLIC STORAGE name and mark as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s website or of the products and services on the Respondent’s website. Accordingly, the third element of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <publistorage.com> be transferred to the Complainant.
Steven A. Maier
Dated: May 12, 2011