WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Public Storage v. AAA Personal Storages/Matt Riemann Case No. D2009-1100 1. The Parties
Complainant is Public Storage (“Complainant”), a Maryland Real Estate Investment Trust with its principal place of business in Glendale, California, United States of America.
Respondents are AAA Personal Storage, located in Pacoima, California, United States and Matt Reimann located in Canoga Park, California, United States (collectively “Respondents”). 2. The Domain Names and Registrar
The disputed domain names are and (the”Domain Names”). The registrar is Tucows, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2009. On August 17, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name(s). On August 17, 2009, Tucows Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 19, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 25, 2009. 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 the Respondent of the Complaint, and the proceedings commenced on August 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 17, 2009.
On September 17, 2009, the newly named Respondent Matt Riemann advised the Center that he was not the proper Respondent. Instead the Respondents should have been Barry Carlisi. Further communication indicated that Mr. Carlisi was “handling this matter of Mr. Riemann's behalf.” On September 28, 2009, Respondent advised Complainant of a change of name and or address for the Respondent.
The Center appointed Richard W. Page as the sole panelist in this matter on September 28, 2009. 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.
The determination of the proper identity was delegated to the Panel. After a review of the communication from the would-be Respondents in this proceeding, the Panel hereby determines that the proper Respondents are AAA Personal Storage, located in Pacoima, State of California, United States and Matt Reimann located in Canoga Park, State of California, United States (collectively “Respondents”). No Response has been filed to the Complaint. 4. Factual Background
Complainant is a world leader in rentable storage 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 135 million net rentable square feet of real estate. Complainant's other business park interests add another 19 million net rentable square feet of commercial and industrial space. Based on number of tenants, Complainant is among the largest landlords in the world and is the largest operator of self-storage in the world. Complainant is a member of the S&P 500 and the Forbes Global 200. Complainant has been using and operating under the name “Public Storage” since 1972.
Complainant has continuously used and owned the trademark PUBLIC STORAGE since at least 1973 (hereinafter the PUBLIC STORAGE Mark) in United States commerce in connection with the renting of private storage spaces.
Complainant is the owner of a United States Trademark Registration for the PUBLIC STORAGE Mark, which registration is valid and subsisting on the Principal Register in the United States Patent and Trademark Office at all times since 1980. The relevant registration is PUBLIC STORAGE Registration Number 1,132,868 in connection with the “renting of private storage spaces with limited access”. Further, Complainant is the owner of additional trademarks related to its services.
Complainant consistently and prominently displayed and advertised the PUBLIC STORAGE Mark in connection with its services. Complainant has spent millions of dollars extensively promoting and advertising the PUBLIC STORAGE Mark in connection with its services and has generated billions of dollars in revenue under the PUBLIC STORAGE Mark.
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.
As a result of Complainant's extensive sales, advertising and promotion of its services under the PUBLIC STORAGE Mark, the Mark has become distinctive and famous pursuant to Section 43(c) of the Lanham Act, 15, U.S. C. §1125 (c).
The PUBLIC STORAGE Mark is an asset of incalculable value as identifier of Complainant and its high quality services and goodwill.
The Domain Names and have been registered on November 12, 2007. 5. Parties' Contentions A. Complainant
Complainant contends that it has a registration for the PUBLIC STORAGE Mark, that its trademark registration are valid and subsisting, and that serves as prima facie evidence of Complainant's ownership and the validity of the PUBLIC STORAGE Mark. 15 U.S.C. § 1115. Complainant further alleges that its registrations are incontestable and conclusive evidence of its exclusive right to use the mark in connection with the stated goods. 15 U.S.C. §§ 1065 and 115(b).
Complainant argues that the Domain Names are confusingly similar to the PUBLIC STORAGE Mark pursuant to Paragraph 4(a)(i) of the Policy, because they wholly incorporate the PUBLIC STORAGE Mark with the addition of “for the” which is a non-distinctive term.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Names, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names.
Respondents own and operate AAA Person Storage (a.k.a. Lowest Price Storage), a self storage company that rents storage space similar to Complainant. Respondents are using the Domain Names to promote their self storage facilities in a commercial setting, despite the fact that Respondents' storage company is called “AAA Personal Storage” (and /or “Lowest Price Storage”)). The use of the Domain Names by Respondents in this manner will create confusion in the market place regarding whether Respondent's good and services are sponsored by or affiliated with, Complainant - which they are not.
There is no connection between Complainant and Respondents, despite the obvious similarity between the PUBLIC STORAGE Mark and the Domain Names. Further, Respondents have never been known by the name “Public Storage” as the Domain Names suggest.
Respondent cannot demonstrate rights or legitimate interests in the Domain Names under Paragraph 4(c)(ii) because it is not commonly known under either of the Domain Names. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the PUBLIC STORAGE Mark in a domain name or in any other manner.
Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of Paragraph 4(a)(iii). By using the Domain Names as alleged herein, the Respondents are intentionally attempting to attract for commercial gain Internet users to the Respondents' website by creating a likelihood or confusion with the Complainants PUBLIC STORAGE Mark and the source sponsorship, affiliation, and/or endorsement of the Respondents' website or for the product and services of the Respondents' website. B. Respondent's contentions
Respondent has chosen not to contest the allegations of Complainant. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”
Because both Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie,WIPO Case No. D2000-1772. A. Failure to File a Response
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. See also, Hewlett-Packard Company v. Full System S.a.S., NAF Claim No. FA 94637; David G. Cook v. This Domain is For Sale, NAF Claim No. FA 94957 and Gorstew Limited and Unique Vacations, Inc. v. Travel Concierge, NAF Claim No. FA94925.
Even though Respondent has failed to file a Response or to contest Complainant's assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) that 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) 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. B. Enforceable Trademark Rights
Complainant contends that it has a registration for the PUBLIC STORAGE Mark, that its trademark registration are valid and subsisting, and that serves as prima facie evidence of Complainant's ownership and the validity of the PUBLIC STORAGE Mark. 15 U.S.C. § 1115. Complainant further alleges that its registrations are incontestable and conclusive evidence of its exclusive right to use the mark in connection with the stated goods. 15 U.S.C. §§ 1065 and 115(b).
Respondent has not contested these allegations. Therefore, the Panel finds that for purposes of these proceedings, Complainant has enforceable rights in the PUBLIC STORAGE Mark. C. Identity or Confusing Similarity
Complainant argues that the Domain Names are confusingly similar to the PUBLIC STORAGE Mark pursuant to Paragraph 4(a)(i) of the Policy, because they wholly incorporate the PUBLIC STORAGE Mark with the addition of “for the” which is a non-distinctive term.
Therefore, the Panel finds that the Domain Names are confusingly similar to the PUBLIC STORAGE Mark pursuant to the Policy paragraph 4(a)(i). D. Rights or Legitimate Interest.
Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights or legitimate interests in the Domain Names. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See, Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
Respondent has no relationship with or permission from Complainant for the PUBLIC STORAGE Mark.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Domain Names:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
Complainant has sustained its burden of coming forward with allegations that Respondent lacks rights or legitimate interests in the Domain Names.
Respondent has offered no evidence to refute the allegations of Complainant and the Panel finds nothing in the file which contains evidence that the use of the Domain Names meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii). E. Bad Faith.
Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names, Complainant has alleged that the actions of Respondent meet the criteria of Paragraph 4(b)(iv). Respondent has not contested these allegations. Therefore, the Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv). 7. Decision
The Panel concludes (a) that the Domain Names and are confusingly similar to Complainant's registered PUBLIC STORAGE Mark, (b) that Respondent has no rights or legitimate interest in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, Panelist orders that the Domain Names and be transferred to Complainant.
Richard W. Page
Sole Panelist
Dated: October 27, 2009
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