Complainant is Public Storage of California, United States of America, represented by Lee, Tran, & Liang APLC, United States of America.
Respondent is Relotek LLC of New Jersey, United States of America, represented by Purcell, Mulcahy, O’Neill & Hawkins, LLC, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , are registered with Dotster, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2010. On October 25, 2010, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar 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 November 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2010. The Response was filed with the Center on November 23, 2010.
The Center appointed David H. Bernstein as the sole panelist in this matter on December 14, 2010. 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.
Pursuant to Rules 6(f) and 10(c), the Panel set January 3, 2011 as the date by which it would forward its decision to the Center. 4. Factual Background
Complainant operates rentable self-storage facilities in the United States of America and Europe. Since 1973, Complainant has used the trademark PUBLIC STORAGE in connection with its business. Complainant owns a number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) in connection with the renting of private storage spaces with limited access, including Registration No. 1,067,870 for PS PUBLIC STORAGE RENTAL SPACES and design, registered in 1977; and Registration No. 1,132,868 for PUBLIC STORAGE, registered in 1980. The 1977 registration includes a disclaimer for “public storage rental spaces”; the 1980 registration (which is just for the words PUBLIC STORAGE, without any stylization or design) includes no disclaimer, presumably because Complainant demonstrated acquired distinctiveness under Section 2(f) of the Lanham Act.1 More recently, Complainant has registered PUBLIC STORAGE for a variety of goods and services related to its storage services, including locks, packing and moving materials, and retail store services for packing, moving and storage materials (Reg. No. 2,363,326, registered in 2000, claiming first use in connection with these goods and services since 1998, disclaiming “storage” but not “public”); markers, pens, and delivery of merchandise for moving and transporting goods (Reg. No. 2,363,327; registered in 2000, claiming first use in connection with these goods and services since 1998, no disclaimer); and paper padding for moving furniture and other packing and moving materials (Reg. No. 2,487,755, registered in 2001, first use in 1998, disclaimer of “storage”). Although Complainant has no registration for the offering or sale of insurance services, Complainant does make a third-party’s insurance available at all of its facilities to allow its customers to purchase insurance to protect the goods stored at Complainant’s facilities.
Respondent is a subsidiary of Relocation Insurance, LLC, which sells insurance services. Respondent registered and on January 20, 2006 and registered and on September 23, 2003. Respondent has used and continues to use these domain names to sell insurance services over the Internet. 5. Parties’ Contentions A. Complainant
Complainant asserts that the disputed domain names are identical or confusingly similar to a mark in which it has rights because the disputed domain names all fully incorporate its trademark, PUBLIC STORAGE. Complainant asserts that the addition of the dictionary word “insurance” does not reduce that confusing similarity.
Complainant alleges that Respondent lacks any rights or legitimate interests in the disputed domain names because Respondent has never been known by the name Public Storage, because Respondent and Complainant are not affiliated, and because Respondent is using Complainant’s mark in the disputed domain names to cause confusion and to misleading divert consumers. Complainant asserts that Respondent’s use of the disputed domain names will cause consumers to believe that Respondent’s services are sponsored by or affiliated with Complainant, which is not the case.
Finally, Complainant alleges that the disputed domains names were registered and are being used in bad faith because Respondent must have been aware of Complainant’s trademark when it registered its domain names, especially given that Respondent offers insurance for items stored in storage facilities and that Complainant is a leading provider of such storage facilities. Moreover, Complainant asserts that Respondent incorporated Complainant’s mark PUBLIC STORAGE in the disputed domain names to mislead customers for the purpose of commercial gain because of the fame associated with the PUBLIC STORAGE mark, and to cause consumers to be confused as to source, sponsorship, affiliation and/or endorsement of Respondent’s insurance services. B. Respondent
Respondent asserts Complainant’s mark is very weak because the terms “public” and “storage” are “common English words,” and “public storage” is a type of storage facility. Respondent further asserts that consumers do not associate “public storage” solely with Complainant; rather, Complainant is known by the design mark PS PUBLIC STORAGE, which includes a unique pattern and a bright orange and purple color scheme. In fact, Respondent notes, there are a handful of websites for other businesses that appear to use the words “public storage,” including Security Public Storage, Public Storage Coupons, Public Storage in Chicago, Cheney Public Storage, Oceanside Public Storage and San Marcos Public Storage. For these reasons, Respondent argues, the disputed domain names are not confusingly similar to Complainant’s trademark.
Additionally, Respondent claims, Respondent and Complainant are engaged in different businesses because Respondent is dedicated to selling insurance whereas Complainant is in the business of renting storage space. Indeed, Respondent states, “Complainant’s website is devoid of a single reference to insurance.” As a result, Respondent maintains that there can be no confusion.
Respondent claims that it has rights in the disputed domain names because they are comprised of common terms. Respondent further notes that it has used all of the domain names continuously since registration. Respondent denies that the disputed domain names could cause any confusion because Complainant’s primary business is the sale of storage space, not the sale of insurance
Finally, Respondent reiterates that the mark is descriptive, and as a result, that Respondent’s use of the mark cannot be considered to be in bad faith. According to Respondent, failure to allow Respondent to use “public storage” in its domain names would result in Complainant’s monopoly of the “mundane expression” and would prevent Respondent from accurately reflecting in its domain names that it is in the business of selling “public storage insurance.” 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, to succeed in obtaining transfer of the disputed domain names, Complainant must prove that:
(i) each domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of each of the domain names; and
(iii) each domain name has been registered and is being used in bad faith.
Although it is a close case, for the reasons discussed below, the Panel finds based on the preponderance of the evidence submitted that all three requirements of paragraph 4(a) of the Policy have been met. A. Identical or Confusingly Similar
Complainant’s ownership of a federal trademark registration for the mark PUBLIC STORAGE is prima facie evidence of the validity of that mark. Indeed, Respondent expressly notes that it “does not dispute that Complainant owns the service mark in question.” As such, there is no dispute that PUBLIC STORAGE is a mark in which Complainant has rights.
Respondent nevertheless argues that the disputed domain names are not confusingly similar to that trademark because (1) the mark is very weak and is comprised of common dictionary words that are used by other businesses as well, and (2) Respondent also uses the word “insurance” which distinguishes its domain names from Complainant’s trademark. These arguments are without merit.
Whether Complainant’s mark is weak or not, the fact remains that the disputed domain names incorporate that mark in its entirety. Thus, under principles that long have been accepted in UDRP cases, the disputed domain names are confusingly similar for purposes of the Policy. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047; cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.3. Whether the mark itself is weak and contains dictionary words that might be descriptive in certain contexts is an issue more properly considered under the second and third factors, relating to rights or legitimate interests and bad faith.
For similar reasons, Respondent’s addition of the word “insurance” in the disputed domain names does not prevent a finding of confusing similarity under the Policy. First, it is well accepted that the addition of common terms to a trademark in forming a domain name generally does not diminish the confusing similarity between the domain name and the trademark. E.g., F. Hoffmann-La Roche AG v. Kasturba Nagar, N/A,WIPO Case No. D2007-0711. Moreover, even if a strict “likelihood of confusion” test were applied, the fact that Complainant offers insurance at its storage facilities makes it likely that consumers would confuse the disputed domain names as coming from, or being sponsored by or affiliated with, Complainant.
For these reasons, Complainant easily sustains its burden under the first factor of the Policy. B. Rights or Legitimate Interests
Complainant has the burden of proving that Respondent has no rights or legitimate interests in the disputed domain names. National Construction Rentals, Inc. v. T, Inc.,WIPO Case No. D2009-0147. If Complainant satisfies this burden, then the burden of production shifts to Respondent, who must demonstrate rights or legitimate interests, by showing:
(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.
In all cases, though, the burden of proof remains on Complainant to prove by a preponderance of the evidence that Respondent lacks rights or legitimate interests in the disputed domain names.
Whether Complainant has sustained that burden is a close question in this case because Respondent mounts a vigorous defense centered on the assertion that “public storage” is a descriptive term for storage units that are rented to members of the public. If that were true – if “public storage” was understood by consumers as a descriptive term for storage facilities, then Respondent’s defense might well carry the day.
Respondent, however, has failed to adduce evidence to support its conclusory assertions that “public storage” is a descriptive term. Although it states that consumers do not associate the mark PUBLIC STORAGE with Complainant’s business except in the context of the PS PUBLIC STORAGE and design mark, it provides no evidence whatsoever to support that assertion. Moreover, that assertion is belied by the fact that Complainant has four registrations for public storage, two of which disclaim only “storage” and one of which has no disclaimers at all.
Somewhat more compelling is Respondent’s evidence that some other businesses appear to use the term “public storage” as part of their name. Although a number of the websites cited by Respondent do not appear to reflect actual businesses using the name (e.g., Public Storage Coupons and Public Storage in Chicago), and at least one website seems to suggest that a business previously known as American Public Storage has changed its name to American Premier Storage (the record does not reflect whether that might be because of objections raised by Complainant), others do suggest the possibility of such businesses, such as Security Public Storage, Cheney Public Storage, Oceanside Public Storage and San Marcos Public Storage (though the Panel notes that Respondent has not produced any evidence that the websites reflect actual use of these names in commerce).
Ultimately, considering all the evidence, the Panel concludes that the preponderance of the evidence supports Complainant’s assertion that PUBLIC STORAGE is a distinctive mark rather than a descriptive mark that is subject to fair use by others. In support of that conclusion, the Panel notes that Complainant has used its mark for nearly 40 years in connection with storage unit rentals and related goods and services, that Complainant owns numerous registrations including registrations without any disclaimer of “public storage” (though many do disclaim the word “storage” when it is used generically for goods or services related to storage), that Respondent has submitted no evidence of any dictionary definition for “public storage” (and the Panel has not found any such definition in its investigation; see ), and that the Wikipedia entry for “public storage” refers to Complainant rather than to self-storage more generally (indeed, Wikipedia and both suggest that the proper descriptive term for this business model is “self storage”; see and ).
As for the handful of websites that Respondent has identified in which other self-storage businesses appear to use “public storage” as part of their name, the Panel notes that potentially infringing uses by others does not immunize Respondent’s confusing usage. Moreover, a brand owner is not required to prosecute every potentially-minor infringement of its trademark in order to preserve its trademark rights. Thus, even if businesses in Cheney, Washington, and Oceanside and San Marcos, California, are using the term “public storage” in their name, that alone is not sufficient to establish that “public storage” is a descriptive term and that Respondent is entitled to make a fair use of that term.
Having determined on the evidence submitted that “Public Storage” is not the descriptive term for self-storage services, the Panel concludes that Respondent is not making a legitimate noncommercial or fair use of the disputed domain names and therefore that Respondent does not have rights or legitimate interests in the disputed domain names. To the contrary, the evidence suggests that Respondent is using the disputed domain names for commercial benefit to misleadingly divert consumers to its websites and confuse those consumers into believing that there is some relationship, sponsorship, affiliation or endorsement with Complainant. That Complainant also offers a third-party’s insurance at its facilities only exacerbates that risk.2 C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy states that the following circumstance is evidence of the registration and use of a domain name in bad faith:
(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.
Because Complainant is one of the largest self-storage companies in the United States and has been using its PUBLIC STORAGE trademark for nearly forty years, and given that Respondent is in the business of selling insurance for property stored at self-storage facilities, it is fair to infer that Respondent was aware of Complainant’s mark when it registered the disputed domain names. As such, Respondent’s adoption of four domain names all using variations of the PUBLIC STORAGE trademark appears to the Panel to be more indicative of a bad faith intention to create confusion than it does a good faith intention to use those words in their descriptive meaning. Indeed, the fact that Respondent registered not one, but four, such domain names, and that Respondent does not actually use the term “Public Storage” on the websites (instead, it promotes its “storage insurance”), all supports the inference of bad faith use and registration, and further suggest an improper effort to corner many of the obvious domain names consisting of the mark PUBLIC STORAGE along with the generic term insurance. Cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525. Accordingly, Complainant has satisfied its burden of proof concerning registration and use in bad faith. 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.
David H. Bernstein
Sole Panelist
Dated: January 3, 2011
1 Complainant has not submitted any information about the prosecution of the 1980 registration. Based on the Panel’s review of the USPTO website, there appears to be a “2(f)” designation on the file jacket for the trademark application; however, because of the age of this registration, the file wrapper itself is not available on the USPTO website and therefore it is not clear whether this 2(f) designation refers to “public storage” or just “storage.” The Panel has not sought clarification from Complainant on this issue because whether a 2(f) showing was made in that prosecution, and if so the nature of the 2(f) finding by the USPTO, ultimately would not effect the Panel’s decision in this case and there therefore is no reason to delay issuance of this decision (given that UDRP proceedings are meant to be expeditious).
2 As noted above, in its Response, Respondent states that “Complainant’s website is devoid of a single reference to insurance.” That assertion, though, is demonstrably untrue; Complainant’s website expressly notes that it makes Affordable Storage Insurance available at all of its facilities through Willis Insurance Services. See . Indeed, later in its Response, Respondent concedes that an employee of Complainant informed Respondent that “insurance could be purchased through Complainant . . . through an outside provider.”
Full & Egal Universal Law Academy