Complainants are Costco Wholesale Corporation and Costco Wholesale Membership, Inc. of Issaquah, Washington, United States of America, represented by Law Office of Mark J. Nielsen, United States of America.
Respondent is “it already is”, Robert Thurmer of Cape Coral, Florida, United States of America. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2011. On October 3, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 3, 2011, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2011. On October 14, 2011, the Center received an email communication from an individual believed to be Respondent. The Center informed this sender of the due date for submitting a Response. No further communications were received from Respondent. Accordingly, the Center notified the Respondent regarding the commencement of the Panel appointment process on October 26, 2011.
The Center appointed Carol Anne Been as the sole panelist in this matter on November 11, 2011. 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
Complainants operate over 590 membership-based warehouse stores worldwide, offering warehouse club merchandising and related services under the trademark COSTCO to more than 60 million authorized cardholders worldwide. Complainants also operate a website at the domain name through which they offer a variety of goods and services, including travel and pharmacy services.
Complainants are the owner of the trademark COSTCO, for which Complainants own numerous registrations in the United States and elsewhere for both word and stylized marks. United States Trademark Registration No. 1,954,932 for the trademark COSTCO discloses January 31, 1983, as a date of first use, while other COSTCO trademark registrations submitted by Complainant disclose subsequent first use dates. The United States Trademark Registration No. 1,976,242 for the trademark COSTCO for travel-related services discloses November 27, 1984, as a date of first use.
On November 4, 2010, the Domain Names were registered by “it already is” according to the WhoIs records and the answer provided by the Registrar to the request from the Center. The Domain name was scheduled to expire on November 3, 2011. The Domain name was scheduled to expire on November 4, 2011. Pursuant to a communication and request from the Center to the Registrar, the Registrar confirmed on October 3, 2011 that the Domain Names would remain under a locked status during the pendency of the proceedings.
The Domain Names resolve to commercial websites apparently run by WorldVentures and GlobalSmart Products, respectively. The Domain Name resolves to “/om”, a website that purports to offer health products and sales opportunities. The Domain Name resolves to “”, a website that purports to offer membership-based travel services and sales opportunities. Information received by the Center in response to the Center’s Notification of Complaint in this matter sent to WorldVenture, owner of the “” website, suggests that Respondent may not have had authorization to redirect the disputed domain name to WorldVenture’s website.
Complainants have not licensed or otherwise permitted Respondent to use their trademark COSTCO or register the Domain Names. 5. Parties’ Contentions A. Complainant
Complainants contend that they are a recognized world leader in warehouse club merchandising and related services, and that their COSTCO trademark, a coined name, is famous in connection with a wide variety of services and for various printed publications and other materials.
Complainants contend that the Domain Names are confusingly similar to their COSTCO trademark. Specifically, Complainants assert that the Domain Names incorporate their well-known COSTCO trademark in its entirety, and the common terms “of” and “travel”. Complainants submit that the addition of the common terms “of” and “travel” exacerbates the confusing similarity of the Domain Names to the COSTCO trademark because Complainants provide a variety of travel services under the COSTCO trademark. In support of their assertion, Complainants refer to several previous UDRP panel decisions finding specifically that the addition of common terms to the COSTCO trademark does not prevent confusion between such domain names and Complainant’s COSTCO trademark.
Complainants contend that Respondent has no rights or legitimate interests in the Domain Names. Complainants further assert that Respondent has not used the Domain Names in connection with a bona fide offering of goods or services, does not own trademark registrations for the Domain Names or any portion thereof, and has not been commonly known by the Domain Names or any portion thereof. Complainants assert that they have not authorized Respondent to use the COSTCO trademark, or to register the Domain Names. Accordingly, Complainants submit, Respondent’s registration and use of the Domain Names signifies Respondent’s intention to disrupt Complainants’ business, deceive consumers, and trade off Complainants’ goodwill by creating confusion as to source or sponsorship between Respondent and the COSTCO trademark.
Complainants contend that the Domain Names were registered and are being used in bad faith. According to Complainants, Respondent must have been aware of Complainants’ rights in the COSTCO trademark when it registered the Domain Names because Respondent registered the Domain Names many years after the COSTCO trademark had become famous. In addition, Complainants assert that their trademark registrations for the COSTCO trademark constitute constructive notice in the United States of their rights. Finally, Complainants contend that Respondent resides in the state of Florida, in which Complainants operate twenty-one warehouse stores, and thus Respondent almost certainly had actual knowledge of the COSTCO trademark when it registered the Domain Names.
Complainants argue that bad faith exists because Respondent’s use of the Domain Names diverts Internet users to commercial websites, an activity constituting bad faith pursuant to paragraph 4(b)(iii) of the Policy. In addition, Complainants argue that Respondent’s only conceivable purpose in registering and using the Domain Names was to profit from the diversion of Internet users to its own retail websites unrelated to Complainants. Such use and registration, according to Complainants, constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy. B. Respondent
Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings
The Panel first considers whether Respondent was given adequate notice of the proceeding. The evidence indicates that the Center sent the Complaint and the Notification of Complaint in electronic form and the Written Notice by facsimile and in hard copy by courier service to the addresses provided in Respondent’s registration information, as well as to alternative addresses related to the websites to which the Domain Names resolve. It appears that notice of the Complaint was delivered to Robert Thurmer, the administrative and technical contact for the Domain Names, at the addresses provided in the Registrar’s WhoIs database as well as the addresses provided on the websites to which the Domain Names resolve. Accordingly, the Panel concludes that the Center notified Respondent of the Complaint and the proceeding under the Rules.
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 a complainant must prove each of the following three elements to obtain an order that a domain name should be 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 in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 14(b) of the Rules, the Panel may draw appropriate inferences from Respondent’s failure to reply to Complainants’ contentions or to otherwise contest the Complaint. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. Moreover, as Respondent has defaulted, the Panel may accept as true all reasonable allegations of the Complaint. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. A. Identical or Confusingly Similar
Complainants have established their extensive registration and use of the COSTCO trademark in the United States and in various other countries for membership-based warehouse stores, merchandise, and related services since at least 1983. In support of this extensive use, Complainants submitted their 2010 Annual Report, listed the quantity of their stores and members, position on the Fortune 500 ranking list, and indicated their sales growth and figures. Complainants have further established that they possess legal rights in the COSTCO trademark by reason of their long-standing and extensive use of the COSTCO mark in commerce as well as trademark registrations of the marks in the United States of America on the Principal Register. See also Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Almantas Kakareka and Hostmaster Oneandone, 1&1 Internet, Inc.,WIPO Case No. D2007-1833 (acknowledging Complainant’s well-known COSTCO trademark).
The Domain Names encompass Complainants’ COSTCO trademark in its entirety, to which two descriptive terms, “of” and “travel”, have been added. As Complainants correctly noted, the addition of common terms to the COSTCO mark is insufficient to negate the confusing similarity between the Domain Names and the COSTCO trademark where, as here, the additional common terms relate to goods and services offered by Complainant under the COSTCO trademark. See, e.g., Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561. The Panel acknowledges the prior UDRP panel decisions similarly determining that the addition of descriptive words do not suffice to distinguish domain names, such as Respondent’s, from the COSTCO trademark. See, e.g., Costco Wholesale Corporation, Costco Wholesale Membership, Inc., Price Costco International Inc. v. Scott Williams,WIPO Case No. D2009-1698; Costco Wholesale Membership Inc., Costco Membership Inc., Costco Wholesale Corporation v. Henry Chan,WIPO Case No. D2004-0218; Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Yong Li,WIPO Case No. D2004-0296; Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Jogn Dinway/Hosting Media,WIPO Case No. D2007-1426. The Panel finds that the Domain Names are confusingly similar to Complainants’ trademark. B. Rights or Legitimate Interests
The Panel concludes that Complainants have shown a prima facie case that Respondent lacks rights or legitimate interests in the Domain Names. The Domain Names resolve to commercial websites, “/om” and “www.”, each appearing to offer goods and services, namely health products and sales opportunities, and travel-related sales opportunities, respectively. The categories of goods and services offered at these websites are competitive to goods and services offered by Complainants under the COSTCO trademark both through their “www.” website and their stores.
In the absence of a Response, the Panel accepts as true Complainants’ allegations that Respondent has not been authorized by Complainants to use the COSTCO trademark. The Panel concludes that Respondent has not used the Domain Names in connection with a bona fide offering of goods or services, does not own trademark registrations for the Domain Names or any portion thereof, and has not been commonly known by the Domain Names or any portion thereof.
The Panel finds that Complainants have shown that Respondent lacks rights or legitimate interests in the Domain Names. C. Registered and Used in Bad Faith
Given the widespread use of the COSTCO trademark by Complainants for nearly thirty years, the Panel finds that Respondent was undoubtedly aware of Complainants’ widely known COSTCO trademark when Respondent registered the Domain Names incorporating the COSTCO trademark.
Complainants essentially argue that bad faith exists (1) pursuant to paragraph 4(b)(iii) of the Policy because Respondent’s use of the Domain Names diverts Internet users to commercial websites, and (2) pursuant to paragraph 4(b)(iv) of the Policy because Respondent’s only conceivable purpose in registering and using the Domain Names was to profit from the diversion of Internet users to its websites unrelated to Complainants.
As to the Domain Name , the Panel finds that Complainants have shown that bad faith exists pursuant to paragraphs 4(b)(iii) and (iv) of the Policy. See, e.g., Hilton Worldwide, Hilton Hotels Corporation, HLT Domestic IP LLC and HLT International IP LLC v. Steve Alek, Niagara Falls Corp,WIPO Case No. D2010-1063 (“The inevitable conclusion is that Respondent registered the domain names in full knowledge of Complainants’ rights and reputation and in the expectation that it could profit from the identity or confusing similarity between those trademarks and the respective domain names”).
As to the Domain Name , the Panel finds that routing the Domain Name to “” evidences bad faith under paragraph 4(b)(iii) of the Policy, and in light of the response from WorldVentures, the operator of “”, that it was unaware that the Domain Name resolved to its website, the Panel cannot conclude based upon the evidence presented, that Respondent sought to profit directly from the diversion of Internet traffic. The Panel finds however, that routing the Domain Name to “” evidences bad faith under paragraph 4(b)(iv) of the Policy,
The Panel concludes that Respondent registered and used the Domain Names in bad faith. 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 Domain Names and be transferred to Costco Wholesale Membership, Inc.
Carol Anne Been
Sole Panelist
Dated: November 23, 2011
Full & Egal Universal Law Academy