Complainant is Sparespace Storage, LLC, United States of America (“U.S.” or “United States”)), represented by Akerman LLP, United States.
Respondent is Gregory M. Ellsworth, Self Storage Consulting Group, LLC, U.S. 2. The Domain Names and Registrar
The disputed domain names , , and (together, the “Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2019. On May 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 13, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant did not file an amendment to the Complaint. Complainant and Respondent exchanged emails regarding possible settlement between May 14, 2019, and June 12, 2019.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2019. The Response was filed with the Center on July 8, 2019, and Respondent sent a further email on July 9, 2018.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on July 19, 2019. 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
For over 35 years Complainant, through its predecessors-in-interest by assignment, has offered for sale, sold, marketed, advertised, and promoted storage and related services to residential and commercial customers in the U.S.
Complainant is the owner of U.S. trademark applications Nos. 87/668,065 and 88/276613 for its SPARESPACE STORAGE marks, for use in connection with the following services:
- Retail store services featuring retail products associated with self-storage and moving, in class 35;
- Insurance services, including providing short term storage insurance for renters of self-storage units, in class 36; and
- Providing self-storage facilities for others, in class 39.
Through its licensee, Complainant acquired the domain names and in May 2008 and March 2011, respectively. Complainant also acquired the domain name in February 2017. Following the acquisition of each of these domain names, Complainant launched websites to promote its services.
The Domain Names in dispute were registered on the following dates:
- , on September 16, 2014;
- , on July 23, 2018; and
- , on July 23, 2018.
On September 19, 2017, Respondent filed U.S trademark applications Nos. 87614157 and 87614171 for the mark SPARE SPACE STORAGE for use in connection with storage services, in class 39. In 2017, Respondent also launched a website containing content incorporating the SPARE SPACE STORAGE mark and advertising that it planned to offer services. In April 2018, Respondent’s website stated that services were “coming soon.”
Complainant sent Respondent a cease and desist letter on April 4, 2018. On June 20, 2018, Complainant filed opposition proceedings (U.S. Opposition Nos. 91242116 and 91241996) against Respondent’s trademark applications (Nos. 87614157 and 87614171), objecting to the applications. On November 29, 2018, Respondent filed withdrawals of its trademark applications. On December 7 and 20, 2018, the U.S. Trademark Trial and Appeal Board entered judgments against Respondent and in favor of Complainant in each of the respective opposition proceedings in regards to Respondent’s trademark applications. 5. Parties’ Contentions A. Complainant
Complainant considers that the Domain Names are essentially identical to trademarks and service marks in which it claims to have rights. Complainant’s states that its SPARESPACE STORAGE mark is well‑recognized, is associated with Complainant’s services, and is a mark to which Complainant has acquired common law trademark rights and secondary meaning. Complainant has advertised its services under the SPARESPACE STORAGE mark, including in print, through direct mail and email, on the Internet, and at its storefronts. Further, a substantial dollar amount of services have been sold under Complainant’s SPARESPACE STORAGE mark to customers in over 20 states across the United States, including Arizona, California, Florida, and Ohio. As a result of Complainant’s promotional efforts across multiple media platforms, Complainant claims its SPARESPACE STORAGE mark has developed significant goodwill, such that it has acquired secondary meaning as an indicator of Complainant’s business and services. Complainant states that the Domain Names are essentially identical to Complainant’s SPARESPACE STORAGE mark, with the only difference being the addition of the generic top-level domains (“gTLD”), “.com,” “.co” and “.org”.
Complainant further claims that Respondent has no rights or legitimate interests in respect of the Domain Names. Respondent registered the Domain Names over 33 years after Complainant first began using the SPARESPACE STORAGE mark. According to Complainant, Respondent has not been commonly known by the Domain Names, nor is Respondent an authorized seller or licensee of Complainant’s goods or services. Complainant contends that Respondent had to know that its Domain Names would be identical or confusingly similar to Complainant’s mark when Respondent registered them. According to Complainant, Respondent has not used the Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant contends that Respondent has used the Domain Names to associate itself with Complainant, offer directly competing services, and contact or attempt to contact Complainant’s customers by re-directing such Internet users to Respondent’s own website through use of the Domain Names.
Finally, Complainant considers that the Domain Names were registered and are being used in bad faith. Complainant contends that Respondent intentionally registered the Domain Names with the goal of misleading consumers into believing that the websites linked to them are sponsored or endorsed by, or are affiliated with, Complainant. By incorporating Complainant’s long-used trademark into the Domain Names, by making illegitimate commercial use of the Domain Names with intent for commercial gain and to misleadingly divert consumers, and by providing click-through advertising (for two of the Domain Names), which leads consumers to other products and services, Complainant contends that Respondent is using the Domain Names in bad faith. B. Respondent
Respondent did not directly address Complainant’s contentions. Instead, Respondent states that it has willingly offered all of the Domain Names to Complainant; however, they are on a registrar “lock” and therefore cannot be transferred. As a show of good faith, Respondent states it has already transferred other domain names to Complainant that were not included in the Complaint. Respondent claims that Complainant’s requests as to these other domain names have been satisfied within a reasonable period of time, and Respondent does not see the need to continue these proceedings. Multiple emails have been sent between Complainant, Respondent, and the Center that have confirmed Respondent’s willingness to resolve the dispute.
Respondent states that it consents to transfer of the Domain Names to Complainant, once the registrar lock is removed, or that the Registrar can transfer directly the Domain Names to Complainant.
On July 9, 2019, following submission of its Response, Respondent sent a further email to the Center and Respondent suggesting that “all you [Complainant] need to do is send the attached Settlement Agreement to the WIPO to get this to go away. I responded to the WIPO and requested that the Administrative Proceedings be suspended. I have given you what you have requested (I have sent domains you didn’t even know I had, as a sign of good faith). I cannot release the final three domains until you submit the attached standard settlement form to the WIPO and the Registrar (GoDaddy)”. 6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Names; and
(iii) Respondent has registered and is using the Domain Names in bad faith.
However, the Panel notes that consent to transfer by Respondent can provide a basis for an order for transfer without a need for consideration of the UDRP grounds. Taking into account the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 4.10, and Pierre Balmain S.A. v. Domains By Proxy, LLC / Daniel Phillips,WIPO Case No. D2015-0189, the Panel rules that in this case, where Complainant seeks transfer of the Domain Names and Respondent has agreed to the transfer, the Panel may proceed immediately to make an order for transfer.
Respondent in its Response confirmed its consent to transfer of the Domain Names to Complainant.
Further to the above referenced Response, the Panel notes that the Registrar noted the registrants of the Domain Names to be “Megan Martin” and “Mckenzie Hoopes”. However, in the context of the Registrar verification as well as the Party submissions (including a Response), the Panel finds that the Domain Names are under the common control of Gregory M. Ellsworth, Self Storage Consulting Group, LLC (who has been identified as the President of the company apparently employing the two above-noted registrants and currently holding the Domain Names). Furthermore, such consolidation, as it were, in this case would be fair and equitable to all parties. See the WIPO Overview 3.0, section 4.11.2.
Accordingly, the Panel immediately orders the transfer of the Domain Names. 7. Decision
For 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.
Christopher S. Gibson
Sole Panelist
Date: August 13, 2019
Full & Egal Universal Law Academy