WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mobile Mini, Inc. v. Derek Carmichael

Case No. D2015-0350

1. The Parties

The Complainant is Mobile Mini, Inc. of Tempe, Arizona, United States of America ("United States"), represented by Husch Blackwell LLP, United States.

The Respondent is Derek Carmichael of Mission Viejo, California, United States.

2. The Domain Name and Registrar

The disputed domain name <mobileminisucks.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 27, 2015. On March 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2015, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on March 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 26, 2015. Subsequently, the Respondent filed an email communication stating that he had not received the formal notification of the Complaint. Due to these circumstances the Center extended the due date for Response until April 3, 2015. The Respondent did not submit any communications by this date. Accordingly, the Center notified the parties of the commencement of the Panel appointment process on April 7, 2015. The Respondent filed an email communication on April 7, 2015.

The Center appointed William R. Towns as the sole panelist in this matter on April 13, 2015. 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

The Complainant provides portable storage systems and containers for the storage and transportation of goods. The Complainant has used the MOBILE MINI mark for more than thirty (30) years in connection with its products and services, and has secured trademark registrations for MOBILE MINI in the United States, Canada, and the European Union. The earliest of these registrations was issued by the United States Patent and Trademark Office ("USPTO") on May 16, 1989.

The Respondent registered the disputed domain name <mobileminisucks.com> on September 5, 2013. The disputed domain name resolves to a parking page provided by the Registrar. The web page contains a link inviting Internet visitors to "learn how you can get this domain."

5. Parties' Contentions

A. Complainant

The Complainant submits that is has been in business since 1983 and has used the MOBILE MINI mark since that time to provide storage solutions in the United States, Canada, and other jurisdictions worldwide, operating from more than 130 locations in North America. The Complainant submits evidence of trademark registrations in the United States and Canada for MOBILE MINI and MOBILE MINI-formative marks, and Community Trade Mark registrations for MOBILE MINI.

The Complainant contends that the MOBILE MINI mark is famous and well-known based on its continuous use of the mark for more than thirty (30) years, marketing and promotion expenditures in the neighborhood of USD 3 million annually over the past five (5) years, and annual sales between USD 325 million and USD 440 million during the same time frame. The Complainant further notes its use of the MOBILE MINI mark on the Internet, including on the Complainant's website at "www.mobilemini.com".

The Complainant maintains that the disputed domain name is confusingly similar to its MOBILE MINI mark. The Complainant cites UDRP decisions in which WIPO panelists have found domain names consisting of a complainant's mark followed by the term "sucks" to be confusingly similar for purposes of the first element of the Policy.

The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is not commonly known by the disputed domain name. The Complainant further submits that the Respondent is not exercising any free speech rights, since the disputed domain name resolves to a parking page containing a message indicating the domain name is for sale. The Complainant asserts that the Respondent registered the disputed domain name intending to profit from the Complainant's mark by attracting Internet users to the Respondent's website. Accordingly, the Complainant submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

In light of the foregoing, the Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that bad faith is established by Respondent's registration and use of the disputed domain name with a website that creates the impression that the domain name is for sale. The Complainant further contends that the Respondent is making a bad faith use of the disputed domain name to misleadingly divert Internet users from the Complainant's website for financial gain, to disrupt the Complainant's business, and/or to tarnish the Complainant's image. According to the Complainant, the Respondent's failure to respond to a cease and desist letter sent on November 20, 2014 also demonstrates bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions after requesting and receiving an extension of time from the Center to do so. Previously, in an email to the Center dated March 26, 2015, the Respondent acknowledged that the disputed domain name incorporates the Complainant's name, but asserted that the disputed domain name was descriptive and "no different than someone posting a blog that Mobilmini does indeed suck."

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant's MOBILE MINI mark, in which the Complainant has demonstrated rights through registration and use. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.¹ The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.

It is the consensus view of WIPO panelists that a domain name consisting of a trademark and a negative or pejorative term (such as [trademark]sucks.com) generally would be considered confusingly similar to a complainant's mark for purposes of the standing requirement of the first element of the Policy. See WIPO Overview 2.0, paragraph 1.3 and decisions cited therein. See also See Tommy Bahama Group, Inc. v.

Domains by Proxy, Inc. / Aware Marketing, WIPO Case No. D2011-2127 (<tommybahamasucks.com> confusingly similar to TOMMY BAHAMA trademark); Standard & Poor's Financial Services LLC v. Shaun Ray, WIPOCase No. D2013-1545 (<standardandpoorssucks.com> confusingly similar to complainant's well-known STANDARD & POOR mark).

Although the generic Top-Level Domain ("gTLD") may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant's mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent has not been commonly known by the disputed domain name. The Respondent, without the Complainant's authorization or consent, has registered a domain name that, by the Respondent's own admission, intentionally appropriates the Complainant's MOBILE MINI mark. The disputed domain name resolves to a parking page that creates the impression that the disputed domain name is for sale.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The record in this case clearly reflects that the Respondent was aware of and had the Complainant's MOBILE MINI mark in mind when registering the disputed domain name. There is no indication in the record of the Respondent's use or even demonstrable preparations to use the disputed domain name for purposes of legitimate criticism since registering the domain name in 2013. Nor does the record before the Panel reflect the Respondent's use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

To the contrary, the Respondent registered the disputed domain name, intentionally appropriating the Complainant's mark, which resolves to a parking page conveying the impression that the disputed domain name is for sale. In light of all of the foregoing, the Panel concludes that the Respondent more likely than not registered the disputed domain name with the intent to profit from and exploit the Complainant's rights. As noted above, the Respondent has not been authorized to use the Complainant's mark, and has not been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As noted earlier, the Panel considers that the Respondent's primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant's trademark rights. There is nothing in the record indicating that the Respondent has used or made demonstrable preparations to use the disputed domain name for purposes of legitimate criticism.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <mobileminisucks.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: April 27, 2015

¹ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter "WIPO Overview 2.0"), paragraph 1.2.