Pack-Rat Portable Mini-Storage, LLC v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd
Claim Number: FA1904001836830
Complainant is Pack-Rat Portable Mini-Storage, LLC (“Complainant”), represented by Douglas A. Rettew of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington DC, USA. Respondent is Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <packratstorage.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.) as Panelist
Complainant submitted a Complaint to the Forum electronically on April 1, 2019; the Forum received payment on April 1, 2019.
On April 1, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <packratstorage.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@packratstorage.us. Also on April 1, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 25 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading provider of self-storage, moving, and warehousing services to commercial and residential customers throughout the United States. Complainant has rights in the PACK RAT mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,637,144, registered Mar. 5, 1991). Respondent’s <packratstorage.us> domain name is confusingly similar to Complainant’s mark as it includes the entire PACK RAT mark, less the space, while adding the generic term “storage” and the non-distinguishing “.us” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <packratstorage.us> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name in connection with a commercial pay-per-click website that features sponsored-link advertisements, including links to services in competition with Complainant. Further, Respondent offers the domain name for sale. Additionally, Respondent registered the domain name using a privacy service to hide its identity.
Respondent registered and uses the <packratstorage.us> domain name in bad faith as Respondent offers to sell the domain name. Further, Respondent intentionally attracts to its website, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s PACK RAT mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s pay-per-click website. Additionally, Respondent failed to respond to Complainant’s cease-and-desist letter. Moreover, Respondent registered the domain name using a privacy shield. Finally, Respondent registered the domain name with actual knowledge of Complainant’s rights in the PACK RAT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <packratstorage.us> domain name.
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 a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the PACK RAT mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,637,144, registered Mar. 5, 1991). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel finds that Complainant has established rights in the PACK RAT mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <packratstorage.us> domain name is confusingly similar to Complainant’s mark as it includes the entire PACK RAT mark, less the space, while adding the generic term “storage” and the non-distinguishing “.us” ccTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also KW KONA INVESTORS, LLC v. Privacy.co.com / Privacy.co.com, Inc. Privacy ID# 923815, FA 1784456 (Forum June 11, 2018) (“[T]he omission of spacing and addition of a gTLD are irrelevant in determining whether the disputed domain name is confusingly similar.”); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). The Panel finds that the <packratstorage.us> domain name is confusingly similar to the PACK RAT mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <packratstorage.us> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Relevant information includes the WHOIS information, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information identifies “Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd.” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose. The Panel finds that Respondent is not commonly known by the <packratstorage.us> domain name under Policy ¶ 4(c)(ii) and lacks rights or legitimate interests in respect of the domain name.
Complainant argues that Respondent uses the domain name in connection with a commercial pay-per-click website that features sponsored-link advertisements, including links to services in competition with Complainant. Using a domain name to display hyperlinks to services relating to a complainant generally does not amount to any bona fide offering of goods or services or a legitimate noncommercial or fair use. See Barclays PLC v. Antwan Barnes, FA 1806411 (Forum Oct. 20, 2018) (“Using a domain name to offer links to services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides a screenshot of the resolving webpage, which displays links such as “PORTABLE STORAGE UNITS” and “MOVING PODS. The Panel finds that Respondent’s use of the domain name to offer competing hyperlinks fails to confer rights and legitimate interests in the domain name for the purposes of Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent offers the domain name for sale. Offering a confusingly similar domain name for sale can evince a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name. The WHOIS information for the disputed domain name displays the message “packratstorage.us is for sale! This domain is listed for sale at one of our partner sites for $1,999.” The Panel finds that Respondent offers the disputed domain name for sale, indicative of possessing no rights and legitimate interests for the purposes of Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant claims that Respondent registered and uses the <packratstorage.us> domain name in bad faith as Respondent offers to sell the domain name. Offering to sell a confusingly similar domain name can evince bad faith under Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). The Panel is reminded that the WHOIS information for the disputed domain name displays the message “packratstorage.us is for sale! This domain is listed for sale at one of our partner sites for $1,999.” Respondent’s general offer to sell the domain name is evidence of bad faith per Policy ¶ 4(b)(i).
Complainant claims that Respondent intentionally attracts to its website, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s PACK RAT mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s pay-per-click website. Using a confusingly similar domain name to offer competing hyperlinks for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Complainant provides a screenshot of the resolving webpage, which displays links such as “PORTABLE STORAGE UNITS” and “MOVING PODS.” The Panel finds that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the PACK RAT mark at the time of registering the <packratstorage.us> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends that Respondent’s knowledge can be inferred given the following: (1) Complainant’s federal registrations of the PACK RAT mark; (2) Complainant’s long-standing use of the PACK RAT mark; (3) the fact that the domain name is virtually identical to Complainant’s PACK RAT mark and includes the descriptive term “storage”; (4) the fact that Respondent offers the domain name for sale; and, (5) the fact that Respondent registered the domain name almost thirty years after the issuance of Complainant’s federal registration for its PACK RAT mark. The Panel finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <packratstorage.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: May 2, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page