The Complainants are Costco Wholesale Membership Inc. and Costco Wholesale Corporation of Issaquah, Washington, United States of America (the “US”), represented by Law Office of Mark J. Nielsen, US.
The Respondent is Yashpal Puri of Ludhiana, India. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2013. On October 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 29, 2013 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 October 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2013.
The Center appointed Steven A. Maier as the sole panelist in this matter on November 25, 2013. 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.
On November 25, 2013, the Center received an informal email communication from the Respondent. In accordance with paragraph 10 of the Rules, the Panel decided to admit the informal communication as a submission in the proceeding and also decided that it was not necessary to invite any further submission from the Complainants by way of response. 4. Factual Background
The Complainants are corporations registered in California and Washington, US, each having its principal place of business in Issaquah, Washington, US. They are an operator of membership warehouse retail stores in the US and elsewhere.
The Complainants are the owner of numerous registrations for the trademark COSTCO in the US and elsewhere. Its registrations include:
- US trademark number 1318685 for COSTCO registered on February 5, 1985 in international class 42 for “distributorship services in the field of discount general merchandise for participating members.”
- Indian trademark number 1247737 for COSTCO registered on November 4, 2003 in classes 35-42 inclusive. The goods and services for which the trademark is registered include computer software and hardware in class 35 and software training in class 41.
The Domain Name was registered on January 21, 2013.
At the date of the Center’s formal compliance review, October 31, 2013, the Domain Name resolved to a website at “www.” which appeared to offer instant computer and IT support by telephone under the name Costco Live. The website included what appeared to be a US address and phone number under the heading “Costco Live Support”. 5. Parties’ Contentions A. Complainants
The Complainants submit that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights (paragraph 4(a)(i) of the Policy).
The Complainants rely on their trademark registrations referred to above. They submit that the name and mark COSTCO is a coined term that was invented by its founders. They state that they obtained their first trademark registration in 1985 and claim that they are the only legitimate owners of the mark COSTCO anywhere in the world.
The Complainants state that they are a recognized world leader in warehouse club merchandizing and related services, having operated membership warehouse stores under the COSTCO name and trademark since 1983. They operate 638 stores worldwide, mainly in the US but also in Central and South America, Asia and the United Kingdom of Great Britain and Northern Ireland. They have more than 70 million cardholders worldwide and had worldwide sales of USD 103 billion in their 2013 fiscal year. They add that they are the owner of numerous domain names incorporating the term “costco” including . They have an established Internet presence with online sales of over USD 2 billion in their 2012 fiscal year. The Complainants contend that as a result of these matters they have received considerable publicity and press interest over the years, evidence of which they produce, and that their COSTCO mark has become a well-known or famous trademark.
The Complainants submit that the Domain Name comprises their trademark COSTCO together with the term “live”, which is a common or generic term. The Complainants submit that the addition of a common term of this nature does nothing to negate or mitigate the similarity between the Domain Name and the Complainants’ trademark.
The Complainants submit that the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii) of the Policy).
The Complainants state that they have not licensed or authorized the Respondent to use their COSTCO trademark. They submit that the Respondent has not commonly been known by the Domain Name and has not used the Domain Name in connection with any bona fide offering of goods or services. The Complainants contend that the Respondent does not have, and could not obtain, any trademark rights in the name and mark COSTCO and that the only explanation for its registration and use of the Domain Name is a wish to trade off the Complainants’ goodwill by creating an association between the Domain Name and the Complainants’ COSTCO trademark.
The Complainants submit that the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
The Complainants point to the Respondent’s use of the Domain Name for the website referred to above.
With regard to registration, the Complainants state that the Respondent must have been aware of their COSTCO trademark when it registered the Domain Name. The trademark had been famous for many years prior to the Respondent’s registration of the Domain Name and there can be no explanation for the Respondent’s registration of the Domain Name other than to take advantage of the Complainants’ goodwill by diverting Internet users to the Respondent’s own commercial website. The Respondent is attempting to attract Internet users to its website by creating a likelihood of confusion and registered the Domain Name primarily for the purpose of disrupting the business of a competitor (paragraph 4(b)(iii) of the Policy).
Concerning the Respondent’s use of the Domain Name, the Complainants repeat that the Respondent can only be using the Domain Name with the intention of attracting customers to its website by creating a false association with the Complainants’ trademark. This provides an illicit commercial benefit for the Respondent and is bad faith use for the purposes of paragraph 4(b)(iv) of the Policy. The Complainants state that it is unimportant that the Respondent may be offering legitimate hardware or software support from the website to which the Domain Name resolves, since any issues with the service provided by the Respondent may reflect badly on the Complainants.
The Complainants request a transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainants’ contentions within the time prescribed by the Rules. However, as stated above, the Respondent provided a non-standard submission to the Center after that date. The submission states as follows:
“Respected Sir/Ma’am
First of all, Apology for replying late. After going through the details you mentioned, I want to say that
C was one of client’s project on which we worked last year. As it was a simple business website, they asked us for complete website package. If there were any misleading pages, they were added later for sure without any information to us. As you can see, I have already terminated that domain and account as I don’t have contact with them, so there will not be any such issue from that domain now. I feel sorry for the issue and will take care of such clients and things in future.
Thanks and Regards
Yashpal Puri” 6. Discussion and Findings
In order to succeed in their Complaint, the Complainants are required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainants have established that they are the owner of registrations for the trademark COSTCO in the US and elsewhere. The Domain Name comprises the term “costco” together with the term “live” and the generic Top-Level Domain (“gTLD”) “.com”. The Panel accepts the Complainants’ submission that the addition of the generic term “live” is not effective to distinguish the Domain Name from the Complainants’ trademark; indeed the addition of that term is merely suggestive of a service that is being provided by reference to the trademark. In the circumstances, the Panel finds that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights. B. Rights or Legitimate Interests
The Complainants have submitted that the Respondent has not commonly been known by the Domain Name, that the Complainants did not authorise it to use their mark for the purpose of the Domain Name and the Respondent has not used the Domain Name in connection with a bona fide offering of goods or services. While the Complainants acknowledge that the Respondent’s website may offer genuine services, they dispute that the Respondent’s use of the Domain Name for the purposes of that website can be legitimate.
The Panel finds that the Complainants have made out a prima facie case for the Respondent to answer that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Panel does not consider that the existence of the Respondent’s website alone is sufficient to establish any such rights or legitimate interests. The Panel is satisfied that the Complainants’ trademark COSTCO is a well-known trademark, particularly in the US where the business operated from the website was stated to be located. The Panel finds in the circumstances that the Respondent was more likely than not to have been aware of the Complainants’ mark at the time of registration of the Domain Name and that the Respondent must therefore demonstrate some credible reason for its choice of the Domain Name in order to establish rights or legitimate interests in it. No formal response has been filed in this proceeding and the informal submission received from the Respondent makes no attempt to provide any such explanation.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
Similar considerations as above apply to the issue of bad faith. The Complainants submit that the Respondent can only have registered and used the Domain Name for the purposes of its website because of its association with the Complainants’ mark and in order to take unfair advantage of the Complainants’ goodwill. Specifically, the Complainants rely on paragraph 4(b)(iv) of the Policy which states that it shall be evidence of registration and use in bad faith if: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The Respondent has used the Domain Name to connect to what appears to be a commercial website offering IT services. The Panel has found that that the Complainants’ trademark is a well-known trademark and that the Respondent was more likely than not to have been aware of the Complainants’ mark at the time of registration. The Respondent has failed to offer any explanation for its choice of the Domain Name and the Panel therefore infers that the Respondent registered and has used it to attract Internet users to its website because of its association with the Complainants’ mark and in order to take advantage of the Complainants’ goodwill. The Panel finds that this constitutes registration and use of the Domain Name 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 Name be transferred to the Complainants.
Steven A. Maier
Sole Panelist
Date: November 29, 2013
Full & Egal Universal Law Academy