Complainant is Public Storage of Glendale, California, United States of America, represented by Lee, Tran, & Liang APLC, United States of America.
Respondents are Deer Valley Mini & RV Storage of Paradise Valley, Arizona, United States of America and Deer Valley Mini Storage of Scottsdale, Arizona, United States of America. Because Respondents appear to be related if not the same entity (see Section 6 below) they are collectively referred to herein as “Respondent.” 2. The Domain Names and Registrar
The disputed domain names and are registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2011. On August 18, 2011, the Center transmitted by email to the Registrar 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 providing the registrant and contact details for each of the disputed domain names.
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 August 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2011. Respondent did not submit any response, and the Center notified Respondent’s default on September 23, 2011.
The Center appointed Barbara A. Solomon as the sole panelist in this matter on October 3, 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 provides rentable self-storage space through over 2,100 company-owned locations in the United States and Europe. Since 1973, Complainant has used the trademark PUBLIC STORAGE in connection with its self-storage business that is provided to the public. Complainant owns a United States trademark registration for the mark PUBLIC STORAGE, Registration No. 1132868 for “renting of private storage spaces with limited access” which registration is incontestable.1
Respondent is in the business of providing self-storage spaces to the public in Phoenix, United States. Respondent registered the disputed domain name on January 6, 2010 and the disputed domain name on August 24, 2010. The Complaint does not indicate when the websites associated with these disputed domain names went live. Currently the disputed domain names are used to advertise and promote Deer Valley Mini & RV self-storage units and to provide information to the public about public storage units available in the Phoenix area. There is no evidence that the use of the disputed domain names has led to any confusion. There also is no evidence of any communication between the parties including any demand letter by Complainant or any demand for monetary compensation by Respondent to transfer the disputed domain names. 5. Preliminary Procedural Issue: Consolidation of Multiple Domain Names and Respondents
Complainant has brought this proceeding against two domain names owned by two separately identified entities and has asked that the proceedings be consolidated into a single action. Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name only when the domain names are registered by the same domain-name holder. The Registrant information provided in the WhoIs identifies the owner of as Deer Valley Mini & RV Storage and the owner of as Deer Valley Mini Storage. The phone number and email address for the Registrant and for the Administrative Contact for both domain names are identical. It would thus appear that both of the disputed domain names are controlled by a single person or entity. Under the circumstances presented, therefore, the Panel will allow for consolidation of and consideration of both of the identified disputed domain names in a single proceeding. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281. 6. Parties’ Contentions A. Complainant
Complainant asserts that the disputed domain names are identical or confusingly similar to its PUBLIC STORAGE registered mark because the disputed domain names fully incorporate the trademark. Complainant asserts that the addition of the geographic modifier “Phoenix” does not reduce that confusing similarity.
Complainant alleges that Respondent, while being in the self-storage facility business, has no legitimate rights or legitimate interest in the disputed domain names because Respondent has no relation to Complainant, that Respondent is making illegitimate commercial use of the disputed domain names with the intent of commercial gain and to misleadingly divert consumers, that Respondent has never been known by the name Public Storage, that Respondent is in direct competition with Complainant, and that the use of the disputed domain names by Respondent will create confusion in the marketplace and will cause consumers to believe that Respondent’s services are sponsored by or affiliated with Complainant which they are not.
Finally, Complainant alleges that the disputed domain names are registered and are being used in bad faith. Complainant bases this contention on decisions rendered by different Panels in different cases, against different respondents, concerning different domain names. Complainant also speculates that Respondent had constructive notice of Complainant’s registered mark “due to the ease of conducting online trademark searches” (although there is no evidence any such search was conducted), that Respondent is profiting from the use of the disputed domain names which are confusingly similar to Complainant’s mark, and that Respondent is intentionally intending to attract, for commercial gain, Internet users to Respondent’s site by creating a likelihood of confusion with Complainant’s PUBLIC STORAGE mark. B. Respondent
Respondent did not reply to Complainant’s contentions. 7. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove each of the following elements to prevail:
(i) Respondent’s domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no legitimate rights or interest in respect of the disputed domain names;
(iii) Respondent’s domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
A predicate fact that Complainant must establish is that it has trademark rights in its alleged mark. Complainant has submitted evidence of an incontestable federal trademark registration in the United States for the mark PUBLIC STORAGE. Such registration establishes a presumption that the mark is valid. Further, because the registration is more than five years old, it cannot be attacked on the grounds that it is merely descriptive. See Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985).2 Accordingly, the Panel follows WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 1.1 which notes that if Complainant owns a registered trademark it satisfies the threshold requirement of having trademark rights. However, the fact that Complainant has rights in the PUBLIC STORAGE mark does not mean that these rights are strong. Lone Star Steakhouse & Saloon v. Alpha of Virginia, 43 F.3d 922 (4th Cir. 1995). Nor does it mean that the registration can be used to bar the fair use of a term that, as is the case with Complainant’s mark, consists of common words used for their common meaning. Indeed, the Policy recognizes that there can be such fair use.
The Panel further finds that each of the disputed domain names is identical and confusingly similar to Complainant’s PUBLIC STORAGE mark insofar as each disputed domain name incorporates Complainant’s PUBLIC STORAGE mark in its entirety. The addition of a geographic modifier does not sufficiently distinguish the disputed domain names from Complainant’s mark. See PC Mall, Inc. v. NWPCMALL LLC., WIPO Case No. D2007-0420. B. Rights or Legitimate Interests
In order to prevail in this action, Complainant must prove that Respondent lacks any rights or legitimate interest in the disputed domain names. A default by Respondent does not give Complainant a free pass. See Kellwood Co. v. Onesies Corp.,WIPO Case No. D2008-1172; Tradewind Media, L.L.C. d/b/a Intopic Media v. Jason Hahn,WIPO Case No. D2010-1413. The Policy allows the Panel to evaluate all of the evidence presented, even if the evidence is only presented by Complainant, to determine if rights to or a legitimate interest in the disputed domain names exists.
Complainant alleges that it has made a “prima facie showing that Respondent lacks rights to the Domain Names.” Complaint, p. 7. The Panel disagrees. While it may – or may not – be the case that Respondent lacks rights or legitimate interests in the disputed domain names, the Panel cannot infer this from the submission which simply lacks facts or evidence to support Complainant’s conclusion. Without suggesting what evidence would be necessary to prove the case, the Panel notes there is nothing in the Complaint to indicate that Respondent had notice of Complainant’s rights in the PUBLIC STORAGE name before it adopted the disputed domain names. The Panel finds that there is nothing in the Complaint to indicate that Complainant ever sent a demand letter or otherwise notified Respondent of its rights or objections. Complainant’s conjecture does not create a prima facie case on this element. See Hero v. Heroic Sandwich,WIPO Case No. D2008-0779. Nor does Complainant’s conjecture stand up to the actual evidence Complainant submitted. That available evidence shows Respondent to be involved in the bona fide offering of a service, namely providing self-storage units to the public in Phoenix. See Complaint at page 6, 7 and Annex F. It also shows no attempt by Respondent to create an association with Complainant. The home page associated with the disputed domain name (Complaint Annex C) clearly identifies Deer Valley Mini & RV Storage as the provider of the storage facilities. The home page at clearly is referring generally to public storage units in Phoenix. Neither home page is designed to imitate Complainant’s site.
A legitimate interest in a domain name can be found if respondent is making “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.” See Policy, paragraph 4(c)(iii). In this Panel’s assessment, the evidence submitted by Complainant shows that Respondent is using the disputed domain names to provide information about affordable, secure and convenient storage available to Phoenix residents. Such use is not unique to Respondent. In Public Storage v. Relotek L.L.C.,WIPO Case No. D2010-1781, relied on by Complainant, the Panelist noted that there is evidence that third parties use the term “Public Storage” as part of their name. Here, Respondent is not even using Public Storage as part of its name. Rather it is using the term other than as a mark to describe the services it supplies. This constitutes fair use under U.S. law, 15 U.S.C. § 1115(b)(4) and fair use under the Policy. See Sweeps Vacuum & Repair Center., Inc. v. Nett Corp.,WIPO Case No. D2001-0031 (use of to describe sweepstakes related business is fair use).
To this Panel, neither Complainant’s registration of PUBLIC STORAGE nor prior decisions in Complainant’s favor are determinative of whether Respondent here is making fair use of and therefore has a legitimate interest in the disputed domain names. As recounted in Public Storage v. Relotek L.L.C.,WIPO Case No. D2010-1781, a case cited by Complainant in connection with these proceedings, the original file jacket for the registration that Complainant relies on here includes a reference by the U.S. Patent and Trademark Office to Section 2(f) of the Lanham Act. Such reference indicates that some aspect of the mark at issue was considered descriptive. Further, in connection with Complainant’s Registration No. 1,067,870 for PS PUBLIC STORAGE RENTAL SPACES, a mark Complainant did not rely on, Complainant has disclaimed the exclusive rights to the words “public storage rental spaces” apart from the mark as shown, admitting essentially that the term “public storage rental spaces” is descriptive and cannot be appropriated exclusively by Complainant. Subsequent registrations owned by Complainant for the PUBLIC STORAGE mark include disclaimers of the term “storage.” Taken together this constitutes an acknowledgement on Complainant’s part that its mark has descriptive properties, properties that Complainant may not prevent third parties from fairly using. As noted in Harvard Lampoon, Inc. v. Reflex Publishing Inc.,WIPO Case No. D2011-0716 at pages 6-7, “[t]he Policy was not intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner.” Here, the combination of the obvious descriptive quality of Complainant’s mark, Respondent’s actual use of the disputed domain names, and the lack of any evidence that Respondent’s aim in registering the disputed domain names at issue was to profit from or exploit Complainant’s mark, supports a finding of fair use and therefore legitimate rights.
While Complainant may argue that PUBLIC STORAGE is neither generic nor descriptive for the services Complainant provides, the issue of fair use does not require that Complainant use its mark descriptively but only that the use made by Respondent is a fair use to accurately describe its business. See, e.g., Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055 (7th Cir. 1995) (noting that fair use is determined by looking at the descriptiveness of the accused designation not the descriptiveness of plaintiff’s trademark and finding that sweet-tart when used in defendant’s advertising was used to describe the taste of cranberry juice and was therefore fair use); Seaboard Seed Co. v. Bemis Co., 632 F. Supp. 1133 (N.D. Ill. 1986) (rejecting argument by owner of an incontestable registration that a fair use defense is not available because its mark is conclusively presumed not to be descriptive and noting that the issue is whether the accused infringer’s use is descriptive).
Complainant also cannot rely on the fact that the term self storage may be the more “appropriate” term to describe Respondent’s business. The fair use defense is not limited to the use of only those descriptive terms that are “necessary” to describe one’s goods or services. See, e.g., M.B.H. Enters., Inc. v. WOKY, Inc., 633 F.2d 50 (7th Cir. 1980); Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond’s USA Co., 125 F.3d 28 (2nd Cir. 1997). The evidence in this case supports the Panel’s conclusion that Respondent’s use of the term “public storage” in the disputed domain names functions as a legitimate way of describing to consumers that Respondent is offering to the public storage facilities in the Phoenix area.
Accordingly, the Panel finds Complainant has not met its burden on this element. C. Registered and Used in Bad Faith
Even if Complainant could make out a prima facie case that Respondent lacks legitimate rights or interests in the disputed domain names the Panel finds Complainant has failed to carry its burden on the final element of the Policy. The Policy sets forth certain circumstances that support a finding of bad faith use and registration. Complainant has not shown that any of these exist. Instead, Complainant relies on decisions in other cases with different facts to argue that this Respondent must have been aware of Complainant’s rights and must have acted in bad faith. Complaint at p. 7. Yet there is no proof. Reliance on prior decisions in Complainant’s favor is not proof of bad faith registration and use in this case.
Complainant offers no evidence that Respondent registered the disputed domain names primarily for the purposes of selling, renting, or otherwise transferring them to Complainant. Complainant offers no evidence that Respondent registered the disputed domain names to prevent Complainant from reflecting its own mark in a corresponding domain name. Complainant offers no evidence that the disputed domain names were registered “primarily for the purpose of disrupting” Complainant’s business. And Complainant offers no evidence that the use of the disputed domain names is being done to attempt to attract, for commercial gain, Internet users to Respondent’s site by creating a likelihood of confusion. The only evidence that Complainant points to is its own registration and the possibility that Respondent was on constructive notice of or perhaps had actual notice of Complainant’s rights. As an initial matter, constructive notice is not a mandatory doctrine under the UDRP. PC Mall, Inc. v. NWPCMALL L.L.C.,WIPO Case No. D2007-0420; Kellwood Company v. Onesies Corporation.,WIPO Case No. D2008-1172. And even if applicable, bad faith is not established merely because Respondent may have known of Complainant’s interest in the mark. See Reliant Energy, Inc. v. Wiggins,WIPO Case No. D2001-0769. Complainant has offered no evidence on which a finding of bad faith can be based. Whatever Respondent’s motive was in adopting the disputed domain names, in this particular case and on this record the Panel finds Complainant simply has not provided sufficient proof of bad faith use and registrations. 8. Decision
A proceeding under the UDRP is not a substitute for a court action addressing claims of infringement. The Policy has a narrow focus, namely to resolve disputes concerning clear instances of abusive domain name registration and use. See Family Watchdog L.L.C. v. Lester Schweiss,WIPO Case No. D2008-0183. Cases appropriate for the UDRP are those where domain names are registered for the purpose of profiting from the goodwill associated with Complainant’s mark. Here, the evidence presented simply was lacking.
For the foregoing reasons, the Complaint is denied.
Barbara A. Solomon
Sole Panelist
Dated: October 17, 2011
1 Complainant alleges ownership of “additional trademarks related to its services” but has not provided any evidence of these marks. As to the registration relied upon, the Panel notes that Complainant failed to provide a certified status copy of the registration, a copy of the certified status copy of the registration, or pages from the United States Patent and Trademark Office TARR website. Instead, Complainant has submitted a printout from the Trademark Electronic Search System. There is no legal authority that a printout from the Trademark Electronic Search System constitutes evidence sufficient to establish trademark rights. The Panel has undertaken to confirm through the USPTO’s TARR website that in fact the registration asserted is owned by Complainant.
2 Because the parties and registrar are all located in the U.S., it is appropriate for the Panel to look to U.S. law to determine if Complainant has met its burden. See Microsoft Corp. v. Mehrotra,WIPO Case No. D2000-0053.
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