The Complainant is Costco Wholesale Corporation of Issaquah, Washington, United States of America (“U.S.”) represented by Law Office of Mark J. Nielsen, U.S.
The Respondents are Richard Baptiste of Whitley Heights, New York, U.S. and UnbeatableS, Inc. of Lakewood, New Jersey, U.S. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2012. On May 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 1, 2012, 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 May 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on May 23, 2012.
The Center appointed Dennis A. Foster as the sole panelist in this matter on May 30, 2012. 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 is a U.S. company that has been engaged in the retailing of consumer goods and services since the mid-1980’s. In connection with its business, the Complainant has registered its COSTCO mark with numerous governmental authorities, including with the United States Patent and Trademark Office (“USPTO”) (e.g.. Registration No. 1,318,685, issued February 5, 1985; and Registration No. 1,976,242, issued March 28, 1996).
The disputed domain name was registered on February 17, 2012 and is owned by the Respondent. The Respondent uses the disputed domain name to redirect Internet users to the Respondent’s website, where goods that compete directly with the goods sold by the Complainant are offered. 5. Parties’ Contentions A. Complainant
- The Complainant is a U.S. company that began operations in 1983 and is currently ranked as the third largest retailer in that country and the seventh largest in the world. The Complainant’s COSTCO trademark is famous around the world for selling brand name quality merchandise for low prices in no-frills warehouse style locations.
- The Complainant has 42 million membership customers in the U.S. and 65 million worldwide. The Complainant offers those customers a wide range of products and services. In 2011, the Complainant recorded sales of USD 87 Billion.
- The Complainant has obtained registrations for its COSTCO mark in numerous countries, including the U.S., since 1985. The Complainant also owns the domain name , through which it generates online sales of approximately USD 2 Billion annually.
- The disputed domain name is confusingly similar to the COSTCO mark. The disputed domain name contains that entire mark. The addition of the common terms “best” and “offer” fail to mitigate the similarity, especially as those terms are particularly germane to the Complainant’s retail business. Several prior UDRP decisions have found confusing similarity with the COSTCO mark in cases involving domain names consisting of the mark combined with equally common terms.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not granted the Respondent any permission or license to use the COSTCO mark, and the Respondent possesses no rights in that mark.
- The Respondent is not commonly known by the disputed domain name. The Respondent is not using the name in connection with a bona fide offering of goods or services. The Respondent is using the disputed domain name to redirect Internet traffic to the Respondent’s own website, which offers goods that compete directly with the products sold by the Complainant.
- The Respondent registered the disputed domain name in bad faith. At the time of registration, the Respondent must have been aware of the Complainant’s famous COSTCO mark as the Respondent’s listed address is in New York, a state in which the Complainant operates some 15 stores. The Respondent’s only conceivable purpose in registering the name is to profit by confusing consumers into believing that the Complainant is connected with the products offered at the Respondent’s website. Moreover, this behavior constitutes an intentional disruption of the Complainant’s business.
- The Respondent is using the disputed domain name in bad faith. The Respondent intends to trade on the goodwill and reputation of the Complainant’s famous trademark to benefit commercially from the resulting Internet user confusion. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraphs 4(a)(i) – (iii) of the Policy, the Panel may find in the Complainant’s favor, and direct the transfer of the disputed domain name , if the Complainant can demonstrate that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The evidence (Exhibit D) submitted to the Panel by the Complainant is sufficient to establish its valid registration of the COSTCO mark with the USPTO and is therefore sufficient to establish to the Panel’s satisfaction that the Complainant has the requisite rights in that mark. See, Oceaneering International Inc. v. Sumer Kolcak,WIPO Case No. DCO2010-0033 (“The Panel finds that Complainant has established rights in its OCEANEERING mark through its trademark registration with the USPTO, pursuant to Policy, paragraph 4(a)(i).”); and LF, LLC v. Ryan Bertalotto, NAF Claim No. FA1000013 (“The Panel finds that Complainant’s registration with the USPTO sufficiently establishes its rights in the LOWE’S mark pursuant to Policy [paragraph] 4(a)(i).”).
The disputed domain name contains the Complainant’s entire COSTCO mark along with two common terms, “best” and “offer”, and the “.com” suffix. Several prior UDRP panels have found domain names containing the Complainant’s full mark with one or more common terms and such a suffix to be confusingly similar to said mark. The Panel discerns no reason why it should deviate from this well-established and reasonable pattern, especially as the combined term, “best offer”, is directly applicable to the Complainant’s retail business, making the disputed domain name all the more confusingly similar to the COSTCO mark. See, for example, Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Almantas Kakareka and Hostmaster Oneandone, 1&1 Internet, Inc.,WIPO Case No. D2007-1833 (finding to be confusingly similar to the COSTCO mark.); Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Jogn Dinway/Hosting Media,WIPO Case No. D2007-1426 (finding to be confusingly similar to the COSTCO mark); and Costco Wholesale Membership and Costco Wholesale Corporation Inc. v. Yezican Industries and Domains By Proxy, Inc.,WIPO Case No. D2007-0638 (finding to be confusingly similar to the COSTCO mark).
In line with the foregoing, the Panel finds that the Complainant has succeeded in proving that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel concludes that the Complainant has met its initial burden of setting forth a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The name is confusingly similar to the Complainant’s mark and there is no evidence in the record to refute the Complainant’s contention that it never granted the Respondent a license or permission to use the mark. Therefore, it behooves the Respondent to come forward with positive evidence that it does have such rights or legitimate interests. See, Danzas Holding AG , DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441 (“…it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to respondent to rebut complainant’s contentions.”); and Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828.
The Respondent has come forward with no evidence, so the Panel will assume that all of the Complainant’s reasonable contentions are valid as the Panel examines whether there is any evidence in the record that might sustain a claim that the Respondent has rights or legitimate interests in the disputed domain name. In conducting this examination, the Panel will consult the applicability of paragraph 4(c) of the Policy, which lists three ways in which the Respondent might establish those rights or interests.
As contended by the Complainant, the Respondent has used the disputed domain name in connection with an offering of goods. Specifically, items for retail which are more or less identical to the type of items that the Complainant offers for retail. Prior UDRP panels have consistently ruled that using a domain name that is confusingly similar to another’s trademark to sell goods which are similar to the goods sold by the trademark holder is neither a “bona fide offering of goods or services” as allowed under paragraph 4(c)(i) nor “a legitimate noncommercial or fair use” as allowed under paragraph 4(c)(iii). See, Lilly ICOS LLC v. Ogando, Yeral,WIPO Case No. D2005-1133 (“…the use of a domain name containing a trademark to offer competing goods is not a bona fide offering of goods.”); and Option One Mortgage Corporation v. Option One Lending,WIPO Case No. D2004-1052 (“Respondent’s use of a confusingly similar Domain Name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use pursuant to Policy.”).
Finally, there is simply no evidence in the record to support the conclusion that the Respondent, Richard Baptiste, or a company that he owns, is commonly known as the disputed domain name .
Accordingly, the Panel finds nothing in the record to effectively rebut the Complainant’s prima facie case.
As reasoned above, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant contends – without contradiction and backed by ample clear evidence (e.g., Complaint Exhibit G) – that the Respondent uses the disputed domain name to redirect Internet users to his website in order to market products that compete directly with those sold by the Complainant. It appears to the Panel that the clear intent of the Respondent in registering and using the disputed domain name, which incorporates the Complainant’s entire trademark, is to capture potential customers of the Complainant and thereby divert revenue from the Complainant’s business to the Respondent’s business. The Panel believes this blatant attempt by the Respondent to disrupt the operations of the Complainant, a competitor, is indicative of bad faith registration and use of the disputed domain as delineated in Policy, paragraph 4(b)(iii). See, Travellers Exchange Corporation Limited v. Galaxy International Pty Limited,WIPO Case No. D2011-1914, (“Respondent disrupted Complainant’s business by redirecting Complainant’s potential customers to its own website, which originally offered services in competition with Complainant. The Panel finds that this is evidence of bad faith registration and use pursuant to Policy, paragraph 4(b)(iii).”); and DatingD Limited v. Wayne Aston, NAF Claim No. FA593977 (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy [paragraph] 4(b)(iii).”).
As a result, the Panel finds that the Complainant has demonstrated that the disputed domain name has been registered and is being used 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 disputed domain name be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Dated: June 13, 2012
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