Public Storage, a Maryland Real Estate Investment Trust v. Sudhakar Wagle
Claim Number: FA1409001581701
Complainant is Public Storage, a Maryland Real Estate Investment Trust (“Complainant”), represented by William N. Federspiel of McGuire Woods LLP, Virginia, USA. Respondent is Sudhakar Wagle (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <publicstorage.rentals>, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 25, 2014; the National Arbitration Forum received payment on September 25, 2014.
On September 25, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <publicstorage.rentals> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 2014 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@publicstorage.rentals. Also on September 26, 2014, 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.
A timely Response was received and determined to be complete on October 14, 2014. Complainant filed an Additional Submission which was received on October 20, 2014. This submission was received in a timely manner, but payment was provided one day after the deadline. The Respondent filed an Additional Submission which was received on October 27, 2014, which was timely.
On October 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant uses the PUBLIC STORAGE mark in furtherance of its business efforts relating to rentable storage space. Complainant has Policy ¶ 4(a)(i) rights in the PUBLIC STORAGE mark via trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,132,868 registered April 8, 1980). The <publicstorage.rentals> domain name is identical to the PUBLIC STORAGE mark as the name fully incorporates the mark, and the inclusion of the top-level domain (“TLD”) “.rentals” only serves to increase the likelihood of confusion as the term relates to Complainant’s services.
ii) Respondent has no rights or legitimate interests in the disputed domain name. There is no indication or evidence that Respondent is commonly known by the <publicstorage.rentals> name. Respondent has made neither a bona fide offering, nor a legitimate noncommercial or fair use through the disputed domain name. Instead, the <publicstorage.rentals> domain name resolves to a self-described commentary and criticism website. However, there are no actual comments on the page.
iii) The <publicstorage.rentals> domain name is part of a pattern of Respondent’s misappropriation of companies’ trademarks. Respondent sought to intentionally attract Internet users for its own commercial gain through the non-functioning criticism site. Respondent had actual knowledge of Complainant’s rights in the PUBLIC STORAGE mark at the time the <publicstorage.rentals> domain name was registered. The use of a disclaimer on the resolving page fails to negate the potential for initial interest confusion, and does not mitigate bad faith.
The disputed domain name was registered on June 5, 2014.
B. Respondent
i) The <publicstorage.rentals> domain name is comprised by generic or descriptive terms, and therefore not protectable. Other trademarks exist incorporating the PUBLIC STORAGE expression, such as the SECURITY PUBLIC STORAGE mark (U.S. Reg. No. 2,859,138).
ii) The disputed domain name was registered for the purpose of hosting a gripe or comments site. Respondent has not generated any click-through revenue of any kind from the disputed domain name. The use of a disclaimer should be weighed in Respondent’s favor.
iii) Complainant’s allegations relating to Respondent’s other domain name holdings are irrelevant. Respondent is interested in registering domain names for the good faith purposes of providing information, criticism, and commentary relevant to brand holder’s products or services.
Complainant has engaged in reverse domain name hijacking as there is no plausible basis for the complaint.
C. Additional Submissions
i) Complainant
The burden is high to show that the PUBLIC STORAGE mark is generic. Respondent has submitted no evidence that the mark is generic for Complainant’s goods and services. Previous respondent’s attempts to raise a genericness defense against Complainant have failed.
Respondent contradicts itself in arguing that the domain name was registered for the genericness of the terms, but then also claiming the intended use is a gripe site relating to Complainant. Additionally, there is insufficient evidence to demonstrate even a legitimate use of the domain name.
Respondent’s bad faith is further demonstrated by the falsification of the WHOIS information. Taken together, the conflicting series of explanations offered by Respondent only serve to underscore Respondent’s bad faith.
The claim of reverse domain name hijacking is unjustified.
ii) Respondent
Complainant makes a number of blanket claims in its Additional Submission. Complainant goes to great lengths to make the case that its trademark rights are incontestable. Complainant makes no attempt to rebut Respondent’s showing that even an incontestable trademark is unenforceable under the Policy if it is descriptive or generic. Complainant has done more than “posit” Complainant’s mark is generic. Complainant has shown the words forming the mark are common dictionary terms and that their combination is common. The other points made by Complainant are immaterial when a mark is descriptive or generic.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Complainant has not engaged in reverse domain name hijacking.
Panel’s Note:
The Complainant’s Additional Submission was received in a timely manner, but payment was provided one day after the deadline. However, the Panel decides to consider it in the circumstances that Respondent has rebutted the Complainant’s Additional Submission.
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 and is being used in bad faith.
Complainant uses the PUBLIC STORAGE mark in furtherance of its business efforts relating to rentable storage space. Complainant claims Policy ¶ 4(a)(i) rights in the PUBLIC STORAGE mark via trademark registrations with the USPTO (e.g., Reg. No. 1,132,868 registered April 8, 1980). Prior panel have found that valid USPTO registrations evince a complainant’s rights in the registered mark for purposes of Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Accordingly, the Panel determines Complainant has rights in the PUBLIC STORAGE mark pursuant to Policy ¶ 4(a)(i).
Complainant argues the <publicstorage.rentals> domain name is identical to the PUBLIC STORAGE mark as the name fully incorporates the mark, and the inclusion of the top-level domain (“TLD”) “.rentals” only serves to increase the likelihood of confusion as the term relates to Complainant’s services. The Panel also notes that the disputed domain name omits the space between the two-word mark. Prior panels have held that the elimination of spacing and the addition of a generic top-level domain are irrelevant to the Policy ¶ 4(a)(i) analysis. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Accordingly, the Panel agrees that the <publicstorage.rentals> domain name is identical to the PUBLIC STORAGE mark under Policy ¶ 4(a)(i).
Respondent argues that the <publicstorage.rentals> domain name is comprised of generic or descriptive terms. Respondent also contends in its Additional Submission that Complainant makes no attempt to rebut Respondent’s showing that even an incontestable trademark is unenforceable under the Policy if it is descriptive or generic. However, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)). The Panel notes that no claim is made to the exclusive right to use ‘storage’ apart from the mark, not the mark as a whole “Public Storage” according to the trademark registers for the Complainant’s trademark “Public Storage” registration numbers 1,132,868 and 2,363,326. Respondent’s argument will be addressed in the following sections accordingly.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
First, Complainant argues that there is no indication or evidence that Respondent is commonly known by the <publicstorage.rentals> name. The Panel notes that this claim went uncontested in the Response, where it was indicated that a “Sunil Sudhakar Wagle” is the registrant of the domain name. Accordingly, the Panel agrees that the available evidence shows Respondent is not commonly known by the <publicstorage.rentals> name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Next, Complainant argues that Respondent has made neither a bona fide offering, nor a legitimate noncommercial or fair use through the disputed domain name. Instead, Complainant alleges the <publicstorage.rentals> domain name resolves to a self-proclaimed commentary and criticism website, which contains no actual comments or criticisms (Respondent’s Exhibit A). In so arguing, Complainant cites to Medimmune, Inc. v. Tate, D2006-0159 (WIPO Apr. 14, 2006), in which the panel found the respondent’s expressed intention to place commentary on the website did not amount to a legitimate use or interest. Notably, the Medimmune panel wrote, “Respondent has only written an intention on the website of placing such commentary, but has failed to take any steps to do so. This lack of any substantive comments on Complainant’s products at the domain names suggests that Respondent’s actions are a mere pretext.” As the Panel determines that the circumstances are comparable, the Panel finds Respondent has not made a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent’s use of a disclaimer is insufficient to garner rights or legitimate interests in the disputed domain name. The Panel agrees that this disclaimer does little to help Respondent illustrate rights in the domain name under Policy ¶ 4(a)(ii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant).
According to the undisputed fact between the parties, Complainant is a world leader in rental storage space. It operates over 2,100 company-owned locations in the United States and Europe, totaling more than 135 million net rentable square feet of real estate. Complainant is a member of the S&P 500 and the Forbes Global 2000. Complainant has been continuously using and operating under the name “Public Storage” since 1972. Complainant consistently and prominently displays and advertises the PUBLIC STORAGE mark in connection with its services. Complainant has spent millions of dollars extensively promoting and advertising the PUBLIC STORTAGE mark in connection with its services and has generated billions of dollars in revenue under the PUBLIC STORAGE mark. Complainant contends that as a result of Complainant’s extensive sales, advertising, and promotion of its services under the PUBLIC STORAGE mark has become distinctive and famous pursuant to Section 43(c) of the Lanham Act, 15 U.S.C. §1125 (c). The Panel agrees that the Complainant’s mark PUBLIC STORAGE has become distinctive and well-known.
Respondent contends the generic terms “public” and “storage” are distinct from Complainant’s mark, and are being used for their attraction as common terms, and not for their value as a trademark. As such, Respondent claims there is no bad faith. As Complainant urges in its Additional Submission, the Panel is skeptical of this Respondent’s claim given the purported use of the <publicstorage.rentals> domain name for a gripe site expressly relating to Complainant and its services under the PUBLIC STORAGE mark.
Complainant argues the <publicstorage.rentals> domain name is part of a pattern of Respondent’s misappropriation of companies’ trademarks. Complainant notes that Respondent holds similarly infringing domain names reliant on other brand names. See Compl., at Attached Exs. C and D. While Complainant claims this pattern justifies a finding of bad faith under Policy ¶ 4(b)(ii), the Panel declines to make such a finding as the domain names comprising this alleged pattern are not presently in disputed and have not been subjected to judicial scrutiny.
Additionally, Complainant argues that Respondent sought to intentionally attract Internet users for its own commercial gain through the non-functioning criticism site. Respondent argues the use of the domain name to operate a comments or criticism page relating to Complainant does not in itself create an inference of bad faith. Further, Respondent argues that it is not attempting to generate revenue from this <publicstorage.rentals> domain name.
Prior panels have found evidence of bad faith where the respondent has attempted to mislead Internet users as to Complainant’s affiliation with the disputed domain name in an effort to commercially benefit. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). As the Panel agrees that Respondent is attempting to mislead Internet users searching for the Complainant to its own website and likely profiting, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith.
Again, Complainant argues that the use of a disclaimer on the resolving page fails to negate the potential for initial interest confusion, and therefore does not mitigate bad faith. The Panel agrees. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii)”); Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”).
Finally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the PUBLIC STORAGE mark at the time the <publicstorage.rentals> domain name was registered. The Panel sees that the disputed domain name resolves to a page designed as a commentary and criticism page where users can post comments relating to Complainant’s <publicstorage.com> website. Given the purpose of the disputed domain name and the fame of the Complainant’s mark, the Panel agrees that Respondent knew of Complainant and its rights in the PUBLIC STORAGE mark at the time of registration, and therefore finds evidence of Policy ¶ 4(a)(iii) bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Reverse Domain Name Hijacking
As the Panel finds that Complainant has satisfied all of the elements of Policy ¶ 4(a), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <publicstorage.rentals> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 4, 2014
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