Mobile Mini, Inc. v Domain Admin, Privacy Protect, LLC / Paul Pitt

WIPO Case No. D2022-0832

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Mobile Mini, Inc. v. Domain Admin, Privacy Protect, LLC / Paul Pitt

Case No. D2022-0832

1. The Parties

Complainant is Mobile Mini, Inc., United States of America (“United States”), represented by

Husch Blackwell LLP, United States.

Respondent is Domain Admin, Privacy Protect, LLC, United States / Paul Pitt, United States.

2. The Domain Name and Registrar

The disputed domain name <mobile-mini-storage.com> is registered with Launchpad.com Inc.

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2022.

On March 10, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 11, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 14, 2022.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 16, 2022. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2022. Respondent did not submit any response. Accordingly, the Center

notified Respondent’s default on April 12, 2022.

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The Center appointed Georges Nahitchevansky as the sole panelist in this matter on April 27, 2022.
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

Complainant, Mobile Mini, Inc., is a United States based provider of portable storage and special containment solutions. Complainant owns and uses the mark MOBILE MINI in connection with its products and services. Complainant owns trademark registrations in the United States for the MOBILE MINI mark. These include (i) a registration for MOBILE MINI as a word mark (Registration No. 3747328) that issued to

registration on February 9, 2010 (disclaiming the word “mobile”); (ii) a registration for MOBILE MINI in a

stylized form (Registration No. 1538909) that issued to registration on May 16, 1989; and (iii) a registration

for MOBILE MINI STORAGE SYSTEM in a stylized form (Registration No. 1538910) that issued to

registration on May 16, 1989 (disclaiming the words “storage system”). Complainant also owns and uses the

domain name <mobilemini.com> for a website concerning Complainant and its products and services.

Respondent is based in the United States and registered the disputed domain name on December 12, 2021. Respondent has not used the disputed domain name with an active website. There is currently a page at the

disputed domain name generated through HostGator, a hosting provider, that is entitled “HostGator – Please

Configure Your Name Servers”.

A. Complainant

Complainant maintains that it has developed strong rights in the MOBILE MINI mark through thirty nine years

of use of that mark and by virtue of Complainant’s trademark registrations for MOBILE MINI. Complainant

also maintains that it is “the world’s leading provider of portable storage solutions”.

Complainant asserts that the disputed domain name is confusingly similar to its MOBILE MINI mark as it fully

incorporates the MOBILE MINI mark with a hyphen and includes the word “storage” which is “a feature of the

goods and services in connection with which Complainant’s MOBILE MINI marks are used”.

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as

Respondent (i) registered a disputed domain name that is confusingly similar to Complainant’s MOBILE MINI

mark, (ii) has no relationship with Complainant, (iii) has never obtained a license or authorization from
Complainant to usethe MOBILE MINI mark, and (iv) is not commonly known by the disputed domain name.

Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith as Respondent was likely aware of Complainant and its MOBILE MINI mark given that Respondent

registered the disputed domain with that exact phrase and did so to trade off of Complainant’s rights in the

MOBILE MINI mark

B. Respondent

Respondent did not reply to Complainant’s contentions.

5. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

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(ii)       Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. Section 1.2.1. of the WIPO Overview of

WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has

provided evidence that it owns trademark registrations for the MOBILE MINI mark and that such issued to

registration years before Respondent registered the disputed domain name.

With Complainant’s rights the MOBILE MINI mark established, the remaining question under the first element

of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain such as

“.app”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v.

Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet this standing requirement.

In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s MOBILE MINI mark as it fully incorporates the MOBILE MINI mark with a hyphen and the word “storage”. The Panel

therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in

establishing its rights in Complainant’s MOBILE MINI mark and in showing that the disputed domain name is

confusingly similar to that trademark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

Here, Complainant has established that it owns rights in the MOBILE MINI mark in connection with its storage based products and services. Respondent, who has chosen not to respond in this proceeding has

registered the disputed domain name that includes Complainant’s MOBILE MINI mark with the word

“storage,” the very product and service offered by Complainant under its MOBILE MINI mark. As

Respondent has not presented any evidence explaining or justifying its registration of the disputed domain name, the Panel can only conclude that Respondent did not register the disputed domain name for some

legitimate purpose but did so to take advantage and/or profit from Complainant’s rights in the MOBILE MINI

mark in connection with storage products and services.

The Panel notes that while the words “mobile,” and “mini” are common English words and that there could be

potential uses of these words that might conceivably be legitimate in relation to goods or services

unconnected to storage services, the fact that Respondent, who is based in the United States, chose to

include the word “storage” in the disputed domain name is telling. The inclusion of the word “storage” makes

it more likely than not that Respondent had Complainant in mind when Respondent registered the disputed

domain name.

Under the circumstances, given that Complainant has established with sufficient evidence that it owns rights

in the MOBILE MINI mark, and given Respondent’s above noted actions and failure to file a response, the

Panel concludes that Respondent does not have a right or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.

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C. Registered and Used in Bad Faith

The Panel finds that based on the evidence submitted, Complainant has established that Respondent has registered and used the disputed domain name in bad faith pursuant to paragraph 4(b) of the Policy.

Here, as already noted, Respondent has more likely than not registered the disputed domain name to take

advantage of Complainant’s rights in the MOBILE MINI mark in connection with storage products and

services. While Respondent has not made any use of the disputed domain name to date, the fact that Respondent has chosen not to contest the matter, has provided no explanation for its actions and has

registered a disputed domain name that relevant consumers will likely perceive as related to Complainant’s

MOBILE MINI storage products and services, makes it more likely than not that Respondent’s passive

holding of the disputed domain name is in bad faith. See WIPO Overview 3.0 at section 3.3 (and cases cited

therein).

The Panel thus finds that the third element of paragraph 4(a) of the Policy has been met by Complainant.

6. 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 <mobile-mini-storage.com> be transferred to Complainant.

/Georges Nahitchevansky/

Georges Nahitchevansky

Sole Panelist
Date: May 11, 2022