WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Public Storage v. Moving In Ca.com Case No. D2009-1373 1. The Parties
Complainant is Public Storage, Glendale, California, United States of America, represented by McGuireWoods LLP, United States of America.
Respondent is Moving In Ca.com, Tarzana, California, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , and are registered with Tucows, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2009. On October 16, 2009, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the disputed domain names. On the same day, Tucows, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2009. Respondent did not submit any formal response except for an email communication sent on November 19, 2009. That response was both late and not in compliance with paragraph 5(a) of the Rules. Accordingly, the Center had notified Respondent's default on November 13, 2009.
The Center appointed Andrew Mansfield as the sole panelist in this matter on November 19, 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. 4. Factual Background
Complainant owns and operates 2,100 rentable storage space locations. Complainant's locations, and interests in business parks, provide it with more than 135 million rentable square feet of storage space. Complainant is a member of the S&P 500 and the Forbes Global 2000.
Complainant is the owner of United States Trademark Registration Number 1,132,868 for the word mark PUBLIC STORAGE in connection with the “renting of private storage spaces with limited access” (hereinafter referred to as “the PS Trademark”). This registration, on the Principal Register in the United States Patent and Trademark Office, was granted in 1980. Complainant owns other trademarks related to its services not relevant to this proceeding.
The disputed domain name, , was registered on March 6, 2004, the disputed domain name, , was registered on September 9, 2004. The disputed domain names, and , were registered on October 25, 2009. The disputed domain name, , was registered on November 26, 2005. 5. Parties' Contentions A. Complainant
As indicated above, Complainant is the owner of Unites States Trademark Registration Number 1,132,868. Complainant indicates that it has spent millions of dollars promoting and advertising under the PS Trademark. Complainant further alleges that the PS Trademark is famous and distinctive pursuant to 15 U.S.C. §1125(c).
Complainant alleges that the domain names , , , , and (hereinafter “the Domain Names”) incorporate the PS Trademark and merely add location terms to that trademark. This substantial identity between the Domain Names and the PS Trademark causes the Domain Names to be confusingly similar to the PS Trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the Domain Names. Complainant states that Respondent operates a business known as “Los Angeles M.” Complainant denies that Respondent is connected to Complainant. Finally, Complainant alleges that Respondent has not been known by the name “Public Storage.”
Complainant indicates that the Domain Names were registered and are being used in bad faith. Complainant alleges that Respondent is intentionally using the confusing similarity between the Domain Names and the PS Trademark to attract Internet users to its website and moving service. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the Domain Names are 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 Domain names; and
(iii) Domain names were registered and are being used by Respondent in bad faith.
Even when a respondent defaults, as is the case here, the complainant must establish and carry the burden of proof on each of the three elements identified above. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383.
The Panel proceeds to deal with each of these elements in turn. A. Identical or Confusingly Similar
The Panel finds that the incorporation of a trademark in its entirety is adequate here to establish that a domain name is identical or confusingly similar to Complainant's registered trademark. Such a finding is consistent with other panel decisions. See, e.g., AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758.
Numerous prior panels have found that a domain name that wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for the purposes of the Policy. Such a finding is based on the fact that the dominant and memorable part of the domain is a complainant's trademark. In this case, each of the Domain Names contains the PS Trademark as the predominant portion of each domain name.
Each of the Domain Names adds a geographical term to the PS Trademark. This Panel finds that the addition of a geographical term to a trademark within a domain name does not reduce the identity or confusing similarity of the domain name with the trademark. See e.g., L'oreal v. Liao quanyong,WIPO Case No. D2007-1552.
For the above stated reasons the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant asserts that it is aware of no rights or legitimate interests that Respondent has in the Domain Names. The Domain Names are not, to the best of Complainant's knowledge, the name of Respondent. Complainant asserts that it has not authorized Respondent to use the PS Trademark. The Panel is satisfied that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Names. Once such a prima facie case is made, Respondent carries the burden of demonstrating a right or legitimate interest in the Domain Names. By matter of default, Respondent has failed to do so, and Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your 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 your website or location or of a product or service on your website or location.”
The Panel finds that Respondent must have been aware of Complainant's rights in the PS Trademark when it registered the Domain Names. The Panel finds that Respondent chose to register the Domain Names containing the PS Trademark based on knowledge of Complainant's PS Trademark. A respondent's knowledge of a complainant's trademark when registering a domain name containing that mark often has been found by panels to constitutes evidence of bad faith registration. See ACCOR v. Eliah Zusstone,WIPO Case No. D2006-0362.
The Domain Names direct Internet users to web pages that advertise Respondent's moving company. The use of a well-known name or trademark by someone with no connection with that name is evidence of bad faith where the domain name is used to intentionally attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service.
Many prior panels have found that using famous trademarks to attract Internet users to a website for commercial gains constitutes bad faith use. See F. Hoffmann-La Roche AG v. Anna Valdieri,WIPO Case No. D2007-0956. In a case such as this, where the trademark is used to direct Internet users to a direct competitor of the trademark holder, the finding of bad faith use is clear.
For the above stated reasons, the Panel finds that Respondent has registered and used the Domain Names in bad faith as defined in paragraph 4(a)(iv) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, , , , and be transferred to Complainant.
Andrew Mansfield
Sole Panelist
Dated: December 2, 2009
Full & Egal Universal Law Academy