DECISION
Public Storage v. Matt Gill
Claim Number: FA2005001897034
PARTIES
Complainant
is Public Storage (“Complainant”), represented by Rosaleen H. Chou
of Knobbe, Martens, Olson & Bear, LLP, US. Respondent is Matt
Gill (“Respondent”), New York.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <publicstorage.nyc>, registered with Hello
Internet Corp.
PANEL
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.
Calvin
A. Hamilton as Panelist.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the Forum electronically
on May 19, 2020; the Forum received
payment on May 19, 2020.
On
May 22, 2020, Hello Internet Corp confirmed by e-mail to the Forum that the <publicstorage.nyc>
domain name is registered with Hello Internet Corp and that Respondent is
the current registrant of the name. Hello Internet Corp has verified that
Respondent is bound by the Hello Internet Corp 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
May 29, 2020, the Forum served the
Complaint and all Annexes, including a Written Notice of the Complaint, setting
a deadline of June 18, 2020 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.nyc.
Also, on May 29, 2020, 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 June 17, 2020.
On
June 26, 2020 and June 27, 2020, Complainant and Respondent, respectively,
filed Additional Submissions which comply with Supplemental Rule 7.
On
June 22, 2020, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum
appointed Calvin A. Hamilton 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 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.
RELIEF
SOUGHT
Complainant
requests that the domain name be transferred from Respondent to
Complainant.
PARTIES'
CONTENTIONS
A. Complainant
Complainant is a leader in the
storage industry with over 2,300 facilities in the United States. Complainant
has rights in the PUBLIC STORAGE mark through its registration of the mark with
the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No.
1,132,868, registered Apr. 8, 1990). See Compl. Annex B. Respondent’s <publicstorage.nyc> domain name is identical or confusingly similar
to Complainant’s mark as Respondent merely adds the “.nyc” geographic top-level
domain to Complainant’s fully incorporated mark.
Respondents has no rights or
legitimate interests in the <publicstorage.nyc>
domain name as Respondent is not commonly known by the disputed domain name nor
has Respondent been licensed, authorized, or otherwise permitted by Complainant
to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide
offering of goods or services, nor a legitimate noncommercial or fair use, as
Respondent fails to mark an active use of the domain name. Instead, Respondent
is holding the domain name as a parked page displaying the domain name is for
sale.
Respondent registered and used
the <publicstorage.nyc>
domain name in bad faith. Specifically, Respondent is offering the disputed
domain name for sale.
B. Respondent
Complainant’s trademark is
derived from two descriptive words used by many in the storage industry to
describe spaces used by the public to store things, that Complainant needed to
disclaim at the time of registering their PUBLIC STORAGE mark.
Due to the generic nature of the
terms that comprise the disputed domain name, Respondent believed he had time
to develop the site into a directory, much like he had done with other domain
name he had purchased and developed. Due to COVID-19, this was delayed.
The <publicstorage.nyc> domain name was not registered in
bad faith, as the terms are generic and Respondent has development intentions
for the site, but was cut off by this dispute. The site has a listing as for
sale, as it is always possible the domain name is purchased before the
development has occurred.
C. Additional Submissions
Complainant
Complainant submits that the
Response does not rebut, and in fact serves to support, Complainant’s prima
facie case that: (1) the Domain Name is confusingly similar to Complainant’s
PUBLIC STORAGE® mark; (2) Respondent has no legitimate rights in respect of the
Domain Name; and (3) the Domain Name was registered and is being used in bad
faith.
Respondent
Respondent defends and
reiterates that (1) they question the Complainant’s legitimate rights or the
strengths of any rights they may have to the “Public Storage” mark; (2) The
Respondent has legitimate interests in the Domain Name domain; and (3) There
was no bad faith intention by the Respondent at any time regarding the
registration and development of this domain name.
FINDINGS
and DISCUSSION
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.
Identical
and/or Confusingly Similar
Complainant
claims rights in the PUBLIC STORAGE mark through its registration of the mark
with the USPTO (e.g., Reg. No. 1,132,868, registered Apr. 8, 1990). See
Compl. Annex B. Registration with the USPTO is sufficient to demonstrate
rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearling
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 the Complainant
has rights in the PUBLIC STORAGE mark under Policy ¶ 4(a)(i).
Complainant
argues Respondent’s <publicstorage.nyc>
domain name is identical or confusingly
similar to Complainant’s mark as Respondent merely adds the “.nyc” geographic
top-level domain to Complainant’s fully incorporated mark. Insertion of a
top-level domain to an otherwise fully incorporated mark may not distinguish a
disputed domain name from the mark under Policy ¶ 4(a)(i). See Tupelo
Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is
irrelevant where a mark has been fully incorporated into a domain name and the
gTLD is the sole difference.”).
Therefore,
the Panel finds Respondent’s
<publicstorage.nyc> domain name is identical to Complainant’s mark
under Policy ¶ 4(a)(i).
Respondent contends that the <publicstorage.nyc> domain name is comprised of common and generic/descriptive terms
and as such cannot be found to be identical to Complainant’s mark.
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 (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 (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)).
Rights or Legitimate Interests
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 argues that Respondent has no rights or
legitimate interests in the <publicstorage.nyc> domain name as Respondent is
not commonly known by the disputed domain name, nor has Respondent been
licensed or authorized by the Complainant to use Complainant’s mark. Relevant
WHOIS information can be used as evidence to show whether or not a respondent
is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See
Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the
respondent was not commonly known by the <chevron-europe.com> domain name
under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as
registrant of the disputed domain name). Additionally, lack of authorization to
use a complainant’s mark may indicate that the respondent lacks rights or
legitimate interest in a disputed domain name. See Emerson Electric Co. v.
golden humble / golden globals, FA 1787128 (Forum
June 11, 2018) (“lack of evidence in the record to indicate a respondent is
authorized to use [the] complainant’s mark may support a finding that [the] respondent
does not have rights or legitimate interests in the disputed domain name per Policy
¶ 4(c)(ii)”). The Panel notes the WHOIS of record identifies the Respondent as
“Matt Gill” and no information in the
record indicates that Respondent was authorized to use Complainant’s mark or
was commonly known by the disputed domain name.
The Panel finds that Respondent is not commonly known by
the disputed domain name under Policy ¶ 4(c)(ii). Furthermore, the Panel finds
that Respondent did not acquire any rights or legitimate interests in the
domain name by virtue of an authorization to use Complainant’s mark.
Next, Complainant argues that Respondent fails to use the <publicstorage.nyc> domain name in connection with a bona fide offering of goods or
services, or a legitimate noncommercial or fair use. Rather, Respondent is
holding the domain name as an inactive parked page displaying the domain name
is for sale. The panel recognizes that the failing to make an active use of a
disputed domain name may not constitute a bona fide offering of goods or
services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or
(iii). See Dell Inc. v. link growth /
Digital Marketing, FA 1785283 (Forum
June 7, 2018) (“Respondent’s domain names currently
display template websites lacking any substantive content. Additionally,
offering a domain name for sale may not be a bona fide offering of goods
or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i)
or (iii). 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). In the matter before this
Panel, Complainant provides screenshots of the <publicstorage.nyc> domain name’s resolving webpage, both showing webpages with no
substantive content other than offers to Internet users to purchase the domain
name. See Compl. Annexes D and E. Accordingly, Complainant has made out
a prima facie case and the burden must shift to Respondent.
Respondent responds that he has rights and legitimate
interest in the <publicstorage.nyc> domain name.
Specifically, Respondent is a generic domain name reseller and registered the <publicstorage.nyc> domain name believing it to be a generic domain name. Under pertinent
circumstances, registration of a domain name for the purpose of development and
resale may be a bona fide offering of goods or services for
purposes of Policy ¶ 4(c)(i). See Allocation
Network GmbH v. Gregory, D2000-0016 (WIPO Mar. 24, 2000) (holding that
under appropriate circumstances the offering for sale of a domain name can
itself constitute a bona fide offering of goods or services for
purposes of paragraph 4(c)(i) of the ICANN policy); see also Sony Pictures
Television Inc. v Thomas, Jeff, FA
1625643 (Forum Aug. 6, 2015) (holding that “Respondent has provided
evidence of his plans to use the disputed domain name and, despite Complainant’s
arguments to the contrary, Respondent can take his time so long as there is no
indication of bad faith.”). Here, Respondent provides evidence of his activities
as a domain name reseller, including lists of domain names comprised of generic,
or descriptive terms and screenshots of the development of these domain names, together
with relevant plans for the use of the domain name in dispute. See Resp.
Annexes B, C and D.
Respondent also argues that the terms
of the <publicstorage.nyc> domain name are common and generic/descriptive, and therefore, Complainant does not have an
exclusive monopoly on the terms on the Internet. Respondent adds further, that
Complainant has consistently disclaimed “pubic storage” and “storage” in
its trademark registrations. The Panel
agrees and finds that Respondent can establish rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope
Imaging, Inc. v. V Entm’t, FA 203207 (Forum
Jan. 5, 2004) (finding that the respondent was using the
<kaleidoscope.com> domain name for a bona fide offering of goods
or services because the term was “generic” and respondent was using the
disputed domain name as a search tool for Internet users interested in
kaleidoscopes); see also Qwest Commc’ns
Int’l v. QC Publ’g Grp., Inc.,
FA 286032 (Forum July 23, 2004)
(stating that “Complainant’s rights in the QWEST mark are limited to its
application to the tele-communications industry,” where a variety of other
businesses used the mark in unrelated fields)
Based on the record, the Panel finds that Respondent
has carried the burden of proof and established, through its activities and
plans, rights and legitimate interest in the disputed domain name.
Registration
and Use in Bad Faith
In light of the Panel’s conclusion that Respondent has
rights and legitimate interests in the <publicstorage.nyc> domain name pursuant to Policy ¶
4(a)(ii), the Panel also finds that Respondent did not register or use the
disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record
Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the
issue of bad faith registration and use was moot once the panel found the
respondent had rights or legitimate interests in the disputed domain name); see
also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because
the respondent had rights and legitimate interests in the disputed domain name,
its registration of the name was not in bad faith).
The Panel further finds that Respondent has not registered
or used the <publicstorage.nyc> domain name in bad faith, as it
also finds that Respondent has not violated any of the factors listed in Policy
¶ 4(b), or engaged in any other conduct that would constitute bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Haru Holding
Corporation v. Michael Gleissner / NextEngine Ventures LLC, FA 1685263 (Forum Aug. 30, 2016) (finding
that where a respondent has not violated any of the factors listed in Policy ¶
4(b) or engaged in any other conduct that would constitute bad faith, lack of rights
or legitimate interests on its own is insufficient to establish bad faith); see
also Uhrenholt A/S v. FILLIP NIELSEN, FA 1646444 (Forum Dec. 21, 2015) (finding that mere assertions of bad
faith, without evidence, are insufficient for a complainant to establish bad
faith under Policy ¶ 4(a)(iii)).
Finally, Respondent argues that offering the domain name
for sale was not done in bad faith, as Respondent has a legitimate interest in
the domain name. Bad faith may not be found in instances of a domain name being
offered for sale when the respondent has rights and legitimate interest in the
disputed domain name. See Etam, plc v. Alberta Hot Rods,
D2000-1654 (WIPO Jan. 31, 2001) (“Respondent’s offer to sell the domain name
does not constitute bad faith, in light of the fact that it has a legitimate
interest in the domain name”); see also Seaway Bolt & Specials
Corp. v. Digital Income Inc., FA 114672 (Forum Aug. 5, 2002) (finding that the speculation in domains
that reflect ordinary dictionary words is not bad faith unless the respondent
registered the name with the intent of selling the registration to the
complainant or a competitor of the complainant). In this matter, the Panel
cites the evidence the Respondent provided which shows that Respondent
purchases, develops and sells generic or descriptive domain names, as well as
offering the explanation that the resolving site of the <publicstorage.nyc> domain name
has not been developed beyond a parked for sale page due to COVID-19. See
Resp. Annexes B, C, and D.
The Panel finds that Respondent did not register the <publicstorage.nyc> domain name
in bad faith.
DECISION
Having
not established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
Accordingly,
it is Ordered that the <publicstorage.nyc> domain name REMAIN
WITH Respondent.
Calvin A. Hamilton, Panelist
Dated: July 6, 2020
