Complainant is Public Storage of California, United States of America, represented by Lee, Tran, & Liang APLC, United States of America.
Respondent is Troy Burrows of Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2011. On March 8, 2011, the Center transmitted by email to R. a request for registrar verification in connection with the Disputed Domain Name. On March 8, 2011 R transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 16, 2011.
The Center verified that the Complaint together with the amendment to 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 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2011. The Respondent did not timely submit a response. Accordingly, the Center notified the Respondent’s default on April 7, 2011. Respondent responded to the Center via e-mail on April 21, 2011, stating only that he intended to “defend [his] domain name vigorously.”
The Center appointed Michael A. Albert as the sole panelist in this matter on April 12, 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
Complainant in these proceedings is Public Storage, a Maryland Real Estate Investment Trust (“Complainant”). Complainant built its first self-storage facility in 1972 and is now a world leader in rentable self-storage space, currently operating over 2,100 company-owned locations in the United States and Europe. Complainant is among the largest landlords in the world.
According to the non-contested allegations provided by Complainant, Complainant has been using and operating under the name “Public Storage” since 1972. Further, Complainant has continuously used and owned the trademark PUBLIC STORAGE since at least 1973 (“PS Mark”) in United States commerce in connection with the renting of private self-storage spaces. As evidence of Complainant’s rights in the PS Mark, Complainant is the owner of United States Trademark Registration No. 1,132,868 for PUBLIC STORAGE for “renting of private storage spaces with limited access,” which has been valid and subsisting on the Principal Register in the United States Patent and Trademark Office at all times since 1980. The registration issued April 8, 1980, and claims a date of first use of April 20, 1973.
Complainant has spent hundreds of millions of dollars promoting and advertising it’s PS Mark in connection with renting of private storage spaces with limited access and related services and has generated billions of dollars in revenue and good will under its PS Mark. As a result of Complainant’s extensive sales, advertising, and promotion of its services under the PS Mark, the PS Mark has become distinctive and famous pursuant to Section 43(c) of the Lanham Act, 15 U.S.C. §1125(c).
The Panel is unaware of any further information relative to this case with regard to Respondent, except that Respondent is Troy Burrows, who owns and operates Bermuda Public Storage and who appears to have his principal place of business in Florida. 5. Parties’ Contentions A. Complainant
Complainant contends that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that the Respondent registered and is using the Disputed Domain Name in bad faith.
Complainant is the owner of the PS Mark and common law rights associated therewith. Complainant’s PS Mark is in use by the Complainant for “renting of private storage spaces with limited access.” Further, Complainant contends that its PS Mark is famous.
Complainant contends that the Disputed Domain Name is confusingly similar to Complainant’s PS Mark. Further, Complainant contends that the Disputed Domain Name creates confusion by combining “PUBLIC STORAGE,” Complainant’s famous mark and its corporate name, with “Bermuda.”
Complainant says that Respondent is using the Disputed Domain Name in a misleading manner to attract consumers looking for genuine PUBLIC STORAGE with the intent of commercial gain and to misleadingly divert consumers.
Further, Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith. Complainant suggests, as evidence of Respondent’s bad faith, that it is inconceivable that Respondent did not know of Complainant or the PS Mark when registering the Disputed Domain Name. Complainant contends that the fact that Respondent is in the same field of business as Complainant is further evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. Respondent responded to the Center via e-mail on April 21, 2011, stating only that he intended to “defend [his] domain name vigorously.” 6. Discussion and Findings
Preliminarily, the Panel discusses Respondent’s e-mail dated April 20, 2011 and whether this should constitute a “response” under the Policy. Here, Respondent’s deadline for filing a response expired on April 4, 2011. Respondent, however, e-mailed the Center on April 20, 2011, asserting that he intended to “defend [his] domain name vigorously.” Respondent’s communication to the Center did not include any substantive information.
Absent good cause, it is established that late-filed responses should be disregarded. In the 1099 Pro case, the panel there ultimately held that respondent’s assertion that it did not file its response on time because it was “busiest time of our season” was not good cause for missing the deadline. 1099 Pro, Inc. v. Convey Compliance Systems, Inc.,WIPO Case No. D2003-0033. The panel there thus rejected the late-filed responses. Panels since then have taken a similar approach. See, e.g., Museum of Science v. Jason Dare,WIPO Case No. D2004-0614 (rejecting 16-day delay because “[m]any panels have disregarded late-filed responses making clear that it is important to apply the Rules as written, absent a good reason, otherwise parties will feel free to disregard deadlines and [r]espondents will regularly submit late responses”); F GmbH v.Mr. Chris Olic,WIPO Case No. D2005-0994 (rejecting response filed two days late when only cause given was that respondent had “‘difficulties’ in obtaining evidence, without any explanation of what those ‘difficulties’ were”); OMV AG v. SC Mondokommerz SRL,WIPO Case No. DRO2005-0005 (January 5, 2006) (declining to find exceptional circumstances where respondent’s excuse for eight-day delay was “the misplacement of files in the respondent’s archive” and “the need to extensively research the complex case-law surrounding the subject”). Here, Respondent’s e-mail to the Center does not contain any substantive information related to this proceeding, other than the assertion that the Respondent “intends to “defend [his] domain name vigorously.” In its sole discretion conferred by the Rules, this Panel finds Respondent’s e-mail dated April 21, 2011 untimely and insufficient. Accordingly, Respondent is in default. Even if Respondent were not in default, however, the absence of any substance in his response leads to the same result.
Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy.
Paragraph 15(a) of the Rules instructs this Panel to “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.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the Disputed Domain Name should be cancelled or transferred:
(i) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has provided evidence that it is the owner of valid and subsisting United States Trademark Registration No. 1,132,868 for PUBLIC STORAGE for “renting of private storage spaces with limited access.”
The Disputed Domain Name, however, is not identical to the PS Mark. Therefore, the first issue is whether the Disputed Domain Name and the PS Mark are confusingly similar.
The Disputed Domain Name combines three elements: (1) Complainant’s PS Mark; (2) the term “Bermuda”, and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “bermudapublicstorage”), as it is well established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561.
Prior WIPO UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark. AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758 (finding confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding legally identical to QUIXTAR).
Moreover, the addition of the term “Bermuda” as a prefix to the PS Mark in the Disputed Domain Name does not mitigate the confusing similarity between the Disputed Domain Name and the PS Mark because the term “Bermuda” is geographically descriptive. The addition of a descriptive term does not negate the confusing similarity between the PS Mark and the Disputed Domain Name. See Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life,WIPO Case No. D2002-0363 (finding confusingly similar to DELL); Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046 (finding confusingly similar to TELSTRA). Specifically with respect to geographic terms, the Panel has found 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. Public Storage v. Moving In Ca.com,WIPO Case No. D2009-1373.
Furthermore, the proper approach is to look at the overall impression or idea created by the mark and compare the result with the domain name. See Yell Limited. v. Ultimate Search,WIPO Case No. D2005-0091. Applying the test described in Yell, the overall impression of the trademark in the present case is that it is a reference to Complainant or to Complainant’s PS Mark. As the Disputed Domain Name uses PUBLIC STORAGE, it is confusingly similar to Complainant’s PS Mark.
For all of the foregoing reasons, this Panel finds that the Disputed Domain Name, , is confusingly similar to the Complainant’s PS Mark in which the Complainant has established rights. Therefore, the Panel finds that the Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the Disputed Domain Name, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
It is uncontested that Complainant has neither licensed nor otherwise authorized Respondent to use the PS Mark, or variations thereof, in connection with Respondent’s business or as part of the Disputed Domain Name. Complainant has thus made a prima facie showing that Respondent lacks rights to the Disputed Domain Name. Spencer Douglass, MGA v. Bail Yes Bonding,WIPO Case No. D2004-0261.
Complainant has provided uncontroverted evidence that Respondent is using the Disputed Domain Name in a misleading manner to attract consumers looking for genuine Public Storage, Inc. services. The evidence suggests that on its website, Respondent provides services that are directly competitive with those of Complainant. Prior panels have found that such offerings are not a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 (finding no bona fide use where redirected to online pharmacy); see also Clad Holdings Corporation. v. Kentech, Inc.a.k.a. Spiral Matrix a.k.a. Titan Net,WIPO Case No. D2006-0837 (“[n]or does the Respondent appear to be using the domain names in relation with a bona fide offering of goods or services… The Respondent only appears to provide links leading to websites unrelated to the Respondent where ALL-CLAD products or competing products may be purchased.”)
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. Therefore, the Panel finds that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy, paragraph 4(b)(iv), occurs when Respondent attempts to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark(s) as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service offered on the Respondent’s website.
It is well established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner. See, Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc.,WIPO Case No. D2004-0433. Here, by offering directly competitive services on Respondent’s website, Respondent is using the Disputed Domain Name to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s PS Mark. The Panel finds that this use is in bad faith.
Further, the Panel finds compelling circumstantial evidence that Respondent likely knew of Complainant and Complainant’s PS Mark when it registered the Disputed Domain Name. Complainant has asserted, and Respondent has not refuted, that Complainant has well-established rights in the PS Mark and that this mark is famous. Taken together, these facts make it likely that Respondent knew of Complainant’s mark and unlikely that Respondent innocently registered the Disputed Domain Name without such knowledge.
Respondent’s knowledge of Complainant and Complainant’s PS Mark is strong evidence of bad faith. Based on the foregoing, the Panel finds that Respondent registered the Disputed Domain Name in bad faith. See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names without any knowledge of Complainant and its … trademarks.”); Société Air France v. R Blue,WIPO Case No. D2005-0290 (“Respondent must have been aware of the Complainant’s trademarks while registering the domain name in dispute. This finding leads to the conclusion that the domain name in dispute has been registered in bad faith.”)
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel finds that the Complainant has proven the third and final element 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 name be transferred to the Complainant.
Michael A. Albert
Sole Panelist
Dated: April 26, 2011
Full & Egal Universal Law Academy