Public Storage v. James Grant / Jim Grant / Diversified Asset Management
Claim Number: FA1601001655576
Complainant is Public Storage (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is James Grant / Jim Grant / Diversified Asset Management (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <publicstorageauctionsonline.com>, <publicstorageonlineauctions.com>, and <publicstorage.auction>, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 7, 2016; the Forum received payment on January 7, 2016.
On January 7, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <publicstorageauctionsonline.com>, <publicstorageonlineauctions.com>, and <publicstorage.auction> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 January 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 2016 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@publicstorageauctionsonline.com, postmaster@publicstorageonlineauctions.com, postmaster@publicstorage.auction. Also on January 8, 2016, 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 March 17, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the PUBLIC STORAGE mark in connection with its business of renting private storage spaces. Complainant has registered the PUBLIC STORAGE trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,132,868, April 8, 1980), which demonstrates rights in the mark. Respondent’s <publicstorageauctionsonline.com>, <publicstorageonlineauctions.com>, and <publicstorage.auction> domain names are confusingly similar to Complainant’s PUBLIC STORAGE mark because it incorporates the mark in its entirety while adding the descriptive words “auction” and online” and the generic top-level domains (“gTLD") “.com” and “.auction.”
Respondent has no rights or legitimate interests in the <publicstorageauctionsonline.com>, <publicstorageonlineauctions.com>, and <publicstorage.auction> domain names. Respondent is not commonly known by the disputed domain names. Further, Respondent is making neither a bona fide offering of goods or services nor a legitimate or fair use through the disputed domain names. Rather, the domain name resolves to Respondent’s website offering competing services to those of Complainant.
Respondent is using the disputed domain names in bad faith. Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Further, Respondent had actual and constructive notice of the PUBLIC STORAGE mark and Complainant’s rights therein because of the mark’s fame, notoriety, and trademark registrations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that the WHOIS information regarding the disputed domain names <publicstorageauctionsonline.com> and <publicstorageonlineauctions.com> lists “James Grant” as registrant. The WHOIS information regarding the disputed domain name <publicstorage.auction> lists “Jim Grant” as registrant. Though the address and email address for the first two registrants does not match that of the third, the telephone number and fax number for all three registrants is the same. In addition, all three domain names redirect to the <storagebattles.com> domain name that Complainant alleges belongs to James Grant.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled and the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
Complainant is Public Storage of Glendale, CA, USA. Complainant is the owner of the domestic registration for the mark PUBLIC STORAGE and related marks constituting the Public Storage family of marks. Complainant has continuously used its mark since at least as early as 1980 in connection with its provision of goods and services related to the self-storage industry.
Respondent is James Grant / Jim Grant / Diversified Asset Management of Scottsdale, AZ, USA. Respondent’s registrar’s address is listed as the same. The Panel may note that the <publicstorageauctionsonline.com> and <publicstorageonlineauctions.com> domain names were registered on or about March 21, 2012. The <publicstorage.auction> domain name was registered on or about December 12, 2014.
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.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant uses the PUBLIC STORAGE mark in connection with its business of renting private storage spaces. Complainant has registered the PUBLIC STORAGE trademark with the USPTO (Reg. No. 1,132,868, Apr. 8, 1980), which demonstrates rights in the mark. Panels have found that a complainant’s valid USPTO trademark registration is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel here finds that Complainant has demonstrated rights in the PUBLIC STORAGE mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <publicstorageauctionsonline.com>, <publicstorageonlineauctions.com>, and <publicstorage.auction> domain names are confusingly similar to the PUBLIC STORAGE mark as they each incorporate the mark in its entirety while eliminating the spacing between words, adding either the “.com” or “.auction” gTLDs and the descriptive words “auction” and “online.” Complainant argues that the addition of the descriptive word or gTLD “auction” in this case further increases the confusing similarity between the domain names and the PUBLIC STORAGE mark because Complainant offers self-storage auctions in connection with its marks. Past panels have found such alterations to a mark to be insufficient to overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark).Regarding the “.auction” portion of the <publicstorage.auction> domain name, prior panels have found that top-level domains consisting of words that could conceivably be construed as generic or descriptive terms may in fact enhance the confusing similarity between the domain name and the mark. See DD IP Holder LLC v Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“because there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case.”). The Panel here finds that Respondent’s <publicstorageauctionsonline.com>, <publicstorageonlineauctions.com>, and <publicstorage.auction> domain names are confusingly similar to the PUBLIC STORAGE mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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 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). The Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in the <publicstorageauctionsonline.com>, <publicstorageonlineauctions.com>, and <publicstorage.auction> domain names. Complainant asserts that Respondent is not commonly known by the disputed domain names. The WHOIS information regarding the disputed domain names <publicstorageauctionsonline.com> and <publicstorageonlineauctions.com> lists “James Grant” as registrant. The WHOIS information regarding the disputed domain name <publicstorage.auction> lists “Jim Grant” as registrant. Though the address and email address for the first two registrants does not match that of the third, the telephone number and fax number for all three registrants is the same. In addition, all three domain names redirect to the <storagebattles.com> domain name that Complainant alleges belongs to James Grant. Previous Panels have found that such similarities between respondents indicate that the registrant of the domain names in dispute is the same person. See Yahoo! Inc. v. Zviely, FA 162060 (Nat. Arb. Forum July 24, 2003) ("[W]here it is clear that the same person is registering domain names using different fictitious names, it is appropriate to proceed in a single Complaint against multiple registrant names."); see also Yahoo! Inc. v. Data Art Corp., D2000-0587 (WIPO Aug. 10, 2000) (decision rendered against multiple respondents where “the addresses used and the Contacts designated [were] inter-linking and identical”). The Panel also notes that Respondent failed to submit a response in this proceeding. The Panel here finds that the evidence presented provides no basis to find that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <publicstorageauctionsonline.com>, <publicstorageonlineauctions.com>, and <publicstorage.auction> domain names. Rather, Complainant contends that the domain names do not resolve at their own webpages but instead each redirects to the website <storagebattles.com>, which contains advertisements and offers for services by the Storage Battles company. Complainant contends that the Storage Battles company and website is owned by Respondent and that the company is in competition with Complainant’s storage business. Complainant further contends that Respondent deliberately registered the disputed domains using the PUBLIC STORAGE marks so that consumers would believe there was a connection between Public Storage and Respondent’s business. The Storage Battles website offers bidding on storage auctions. Past Panels have found such uses of marks not to be a bona fide offering of goods or service nor a legitimate noncommercial or fair use. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). The Panel here finds that Respondent’s purported use of the disputed domain names to redirect customers of Complainant to Respondent’s own site furnishes no basis for a finding of rights and legitimate interests.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Complainant argues that Respondent is attempting to exploit the goodwill and fame associated with the PUBLIC STORAGE mark to attract users to Respondent’s own website. The Panel finds that Internet user confusion which subsequently results in the redirection to Respondent’s own site constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <publicstorageauctionsonline.com>, ,<publicstorageonlineauctions.com>, <publicstorage.auction> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 31, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page