Public Storage v. Texas International Property Associates
Case No. D2010-1782
1. The Parties
Complainant is Public Storage of Glendale, California, United States of America, represented by Lee, Tran, & Liang APLC, United States of America.
Respondent is Texas International Property Associates of Dallas, Texas, United States of America.
2. The Domain Names and Registrar
The disputed domain names
were registered with Compana LLC, and it was to Compana LLC that the WIPO Arbitration and Mediation Center (the “Center”) directed the communications referred to in Section 3 below. During the course of its inquiry as to the change of registrars during the pendency of this proceeding, the Center was informed by ICANN that Compana LLC is no longer an ICANN accredited registrar. The Center has received independent verification from Fabulous.com and Compana LLC that Fabulous.com is acting as the concerned registrar in this matter. Fabulous.com has confirmed that the registrant details for the disputed domain names have been restored to those previously confirmed by Compana LLC, and that the domain names will remain under registrar lock throughout the remainder of this proceeding. Publicly available InterNIC information accessed by the Center on December 6, 2010, indicated that the disputed domain names are at present registered with Fabulous.com.
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 Compana LLC a request for registrar verification in connection with the disputed domain names. On October 27, 2010, Compana LLC 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 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 22, 2010.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on December 6, 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.
4. Factual Background
Complainant operates 2,100 company-owned storage locations in the United States and Europe.
Complainant owns United States Trademark Registration No. 1,132,868 for the mark PUBLIC STORAGE for use in connection with the “renting of private storage spaces with limited access.” The registration issued April 8, 1980, and claims a date of first use of April 20, 1973.
5. Parties’ Contentions
Complainant contends that it is the world leader in rentable self-storage space, and has continuously used and owned the trademark PUBLIC STORAGE since 1973 in the United States in connection with private self-storage spaces. Complainant contends that it has established strong recognition in its PUBLIC STORAGE trademark that disputed domain names are confusingly similar to Complainant’s PUBLIC STORAGE trademark that Respondent has no rights or legitimate interests in respect of the disputed domain names and that Respondent has registered and is using the disputed domain names in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Complainant has shown that it is the owner of a valid United States trademark for the mark PUBLIC STORAGE. The disputed domain names are all examples of typographically misspelled domain names that closely resemble Complainant’s registered United States trademark. With regard to the disputed domain name
, the addition of the term “jobs” does not add any distinctive subject matter to assist in an evaluation of confusing similarity. The Panel finds that these misspelled domain names are confusingly similar to Complainant’s PUBLIC STORAGE trademark.
B. Rights or Legitimate Interests
Complainant contends that there is no connection between Complainant and Respondent and that Respondent has never been known by the name “Public Storage” or any of the misspelled versions of “public storage” used in the disputed domain names. Respondent is using the disputed domain names to promote various services that compete with Complainant.
There is no evidence that Respondent is or has been commonly known by any of the disputed domain names or has made preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
Respondent is using the disputed domain names in connection with monetized parking pages that include links to websites offering services competitive with those offered by Complainant. Such use is not a bona fide offering of goods or services under the Policy.
Accordingly, the Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed domain names in bad faith:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain names; or
(ii) Respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location of a product or service on Respondent’s website or location.
Given Complainant’s longstanding and widespread use of the PUBLIC STORAGE mark in the United States in connection with private storage facilities, it is highly likely that Respondent was aware of Complainant’s mark before registering the disputed domain names.
This is supported by the fact that Respondent’s websites are “parking pages” with links to other websites offering services that compete with Complainant. Respondent likely receives “click through” advertising fees from such links. Respondent is therefore relying on a likelihood of confusion between Complainant’s PUBLIC STORAGE trademark in order to attract, for commercial gain, Internet users to Respondent’s websites.
Accordingly, the Panel finds that Respondent has registered and is using the disputed domain names in bad faith.
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
be transferred to Complainant
Lynda J. Zadra-Symes
Dated: December 20, 2010