WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
5B Investments, Inc. v. RareNames, WebReg
Case No. D2008-0146
1. The Parties
The Complainant is 5B Investments, Inc., of Ketchum, Idaho, United States of America, represented by Hawley Troxell Ennis & Hawley LLP, United States of America.
The Respondent is RareNames, WebReg, of Washington, D.C., United States of America, represented by Lowrie, Lando & Anastasi, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with TierraNet d/b/a DomainDiscover.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2008. On February 1, 2008, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the domain name at issue. On February 1, 2008, TierraNet d/b/a DomainDiscover 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”), 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 February 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2008. The Response was filed with the Center on February 28, 2008.
The Center appointed William R. Towns as the sole panelist in this matter on March 10, 2008. 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 owns and operates a number of storage centers in the United States of America. In December 2000, the Complainant obtained a United States service mark registration for STORAGE PLUS in connection with its storage rental service, which the Complainant has maintained in force (Complaint, Annex 3).1 The record reflects the Complainant’s claim to have used of STORAGE PLUS in relation to its services since as early as February 1992 (Complaint, Annex 4).
The Complainant registered the disputed domain name in early 1998, presumably for use in advertising and promotion of its storage rental and related services (Complaint, Annex 9).2 The Complainant allowed its domain name registration to expire, and on February 14, 2001, the Respondent registered the disputed domain name (Response, Annex A).3 The Respondent states that it registers domain names that become available for registration through expiration and deletion,4 and that it offers some of the domain names it acquires for sale through B.5
The Respondent uses the disputed domain name with a website providing advertising links to third-party websites featuring self storage units, storage facilities, moving services, vehicle and equipment rentals and computer data storage. The Respondent’s website also contains links or searches relating to other categories, including travel, financial planning, e-commerce, lifestyle, real estate, and insurance (Complaint, Annex 7).6 The Respondent’s website further indicates that the website is for sale and may be purchased at B (Complaint, Annex 18).7
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Respondent either knew or had constructive notice of the Complainant’s STORAGE PLUS mark when the Respondent registered the disputed domain name in February 2001. The Complainant maintains that the disputed domain name is identical to its mark, and argues that a distinct likelihood of confusion exists because the Respondent’s “www.” website advertises services that are similar to the services that the Complainant provides under its STORAGE PLUS mark.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Complainant further contends that the Respondent has not been commonly known by the domain name and is not making a legitimate, non-commercial use of the domain name. To the contrary, according to the Complainant, the Respondent registered and is using a domain name to exploit and profit from the goodwill associated with the Complainant’s mark.
The Complainant maintains that the Respondent registered the disputed domain name in bad faith, and is using the disputed domain name in bad faith in at least the following respects: (1) offering the domain name for sale at a price greatly in excess of any documented out-of-pocket costs directly associated with the domain name; and (2) using the disputed domain name intentionally 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 or endorsement of the Respondent’s website.
B. Respondent
The Respondent does not dispute that the disputed domain name is identical to the Complainant’s mark, but contends that the Complainant does not hold exclusive rights in the term “storage plus”, which the Respondent maintains is widely used in a descriptive sense in relation to a variety of goods and services, including moving and storage services, self storage units and storage facilities, computer data storage, and computer software and hardware. The Respondent contends that it registered the disputed domain name because of its generic or descriptive qualities, without knowledge of the Complainant’s trademark rights. The Respondent argues that the Complainant’s search results confirm widespread descriptive use of “storage plus” on the Internet, as evidenced by active websites associated with the domain names , , , and , among others.
The Respondent asserts that the registration of a domain name based on its attraction as dictionary word and good faith use of the domain name in conformity therewith is a business model permitted under the Policy. According to the Respondent, this business model encompasses the descriptive use of domain names consisting of common or dictionary words to generate click through advertising revenue, and the registration of such domain names to be held primarily for sale, provided there is no intent on the part of the registrant to profit from another’s trademark rights.
In view of the foregoing, the Respondent maintains that it has established rights and legitimate interests in the disputed domain name, and that the Complainant has failed to establish that the Respondent registered and is using the disputed domain name in bad faith.
6. Discussion and Findings
A. Scope of the Policy
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 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 names are the sole remedies 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 a 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.
B. Identical or Confusingly Similar
The record beyond question reflects that the Complainant has established rights in the STORAGE PLUS mark, and the Respondent concedes that the disputed domain name is identical to the Complainant’s mark. For purposes of paragraph 4(a)(i) of the Policy, the question of identity or confusing similarity is evaluated based solely on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson,WIPO Case No. D2000-1525. Based on such a comparison, the disputed domain name is identical to the Complainant’s mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, the Complainant is required to make a prima facie showing under paragraph 4(a)(ii) of the Policy in order to shift the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name under paragraph 4(c). The Panel notes that the disputed domain name is identical to the Complainant’s mark, and it is uncontroverted that the Complainant has not authorized the Respondent to use the STORAGE PLUS mark or to register a domain name that corresponds to the mark. Nevertheless, the Respondent registered the disputed domain name, which is identical to the Complainant’s mark, and apparently is using of the domain name to generate click through advertising revenues, and also is offering the domain name for sale at a price that appears to be greatly in excess of any out-of-pocket expenses directly related to the acquisition of the domain name. In view of these circumstances, the Panel is persuaded that a prima facie showing under paragraph 4(a)(ii) has been made. See, e.g., Document Technologies, Inc., supra; Compagnie de Saint Gobain v. Com-Union Corp.,WIPO Case No. D2000-0020.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name 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 maintains that it registered the disputed domain name because of its appeal as a commonly used descriptive phrase, and not because of its value as a trademark, and asserts that it has the right to register and make a descriptive use of the disputed domain name. A number of panels have concluded that a respondent has 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 National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. Thus, where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities rather than its specific trademark value, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304. See also Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964 (domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark).
While 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, the ultimate burden of proof with respect to all three elements of paragraph 4(a) of the Policy remains with the Complainant. Because, as discussed below, the Panel concludes that the Complainant has failed to meet its burden of proof respecting bad faith registration and use under paragraph 4(a)(iii) of the Policy, a determination whether the Respondent has established rights or legitimate interests in the disputed domain name is not necessary to the Panel’s decision in this case.
D. Registered and Used in Bad Faith
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 or 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 documented out-of-pocket costs directly related to the domain name;
(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;
(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 intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 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) 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. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
The fact that the Respondent registered the disputed domain name after the Complainant had allowed the prior registration of the domain name to lapse is not in and of itself evidence of bad faith. The primary rule in relation to domain name registrations is “first come, first served”, to which the Policy provides a narrow exception. See Macmillan Publishers Limited, Macmillan Magazines Limited and HM Publishers Holdings Limited v. Telepathy, Inc,WIPO Case No. D2002-0658. It is well settled that the registration of a domain name in order sell it to a third-party is not a violation per se of the Policy, provided that the Respondent is not seeking to capitalize on the goodwill created by the trademark owner. See M, LP, supra. Nor is the use of a domain name for third-party advertising per se illegitimate under circumstances where the respondent is not seeking to take advantage of the complainant’s rights. See, e.g., The Landmark Group v. DigiM, L.P., NAF Case No. 0285459. In this case the Respondent denies being aware of the Complainant’s trademark rights at the time it registered the disputed domain name, and has provided a sworn statement from its Intellectual Property Matters Manager to this effect.
The Panel notes that paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy.8 Media General Communications, Inc., supra. See Shaw Industries Group Inc. and Columbia Insurance Company v. Rugs of the World Inc.,WIPO Case No. D2007-1856; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062. Nevertheless, a number of panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, in the absence of circumstances indicating that the respondent is seeking to profit from and exploit the complainant’s trademark. See, e.g., National Trust for Historic Preservation v. Barry Preston, supra. In this case, the Respondent has submitted evidence of the descriptive use of “storage plus” and similar phrases by a number of businesses with respect to various goods and services, and the record reflects the Respondent’s descriptive use of the disputed domain name consistent with this practice. The Panel further notes that the USPTO required the Complainant to disclaim “storage” for purposes of the Complainant’s registration of the STORAGE PLUS mark.
While the Panel firmly is of the view that the defense of laches has no application under the Policy, the ultimate burden of proof with respect to all three elements of paragraph 4(a) of the Policy remains with the Complainant, and proving bad faith can become more problematic as the distance between the date of the domain name’s registration and the filing of the Complaint grows greater. See WWF-World Wide fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks,WIPO Case No. D2006-0975. In the final analysis, the Panel simply is unable to conclude from the totality of the circumstances presented that the Respondent registered the disputed domain name with the aim of profiting from and exploiting the Complainant’s mark. See CNR Music B.V. v. High Performance Networks, Inc.,WIPO Case No. D2005-1116. Under the circumstances presented here, the Complainant’s reliance on the principle of constructive notice arising from the registration of its mark, without more, is not sufficient to establish bad faith registration under the Policy. Accordingly, the Panel concludes that the Complainant has failed to satisfy its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, the Complaint is denied.
William R. Towns
Sole Panelist
Date: March 24, 2008
1 The United States Patent and Trademark Office (USPTO) issued a registration to the Complainant for STORAGE PLUS for “rental of space for storage of goods” in Class 39 on December 19, 2000 (Reg. No. 2,414,266). The Panel notes from the USPTO registration that the Complainant was required to disclaim “storage” apart from the mark as shown.
2 (Affidavit of Kevin Embree in Support of Complaint). Mr. Embree is an officer of the Complainant.
3 (Affidavit of Erik S. Zilinek). Mr. Zilinek is the Respondent’s Intellectual Property Matters Manager. The Respondent maintains that it has twice registered the disputed domain name. According to the Zilinek Affidavit, the Respondent sold the disputed domain name to ePlus, Inc., a Herndon, Virginia based company, in September 2001, but acquired the domain name a second time on April 26, 2006, after ePlus Inc.’s registration expired. Notwithstanding, the domain name registrar’s WHOIS record indicates the creation date for the current registration to have been February 14, 2001. See Complaint, Annex 1.
4 According to the the Zilinek Affidavit, it is the Respondent’s policy to register and maintain only domain names that incorporate common words or phrases, descriptive terms, and/or words as to which the Respondent considers no single party has exclusive rights. See Response, Annex A.
5 Id.
6 See also Response, Annex A (Zilinek Affidavit).
7 The record reflects that the Respondent’s asking price for the disputed domain name is $60,000.00.
8 Paragraph 2 of the Policy, “Your Representations”, is incorporated by reference in the registration agreements of ICANN-approved registrars, and provides as follows:
By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights. (emphasis added).
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