The Complainants are Costco Wholesale Membership Inc., Costco Wholesale Corporation of Issaquah, Washington, United States of America (“United States”), represented by Law Office of Mark J. Nielsen, United States.
The Respondent is Domains by Proxy, LLC, Registration Private of Scottsdale, Arizona, United States / costcobbs of Taiwan Province of China. 2. The Domain Name and Registrar
The disputed domain name (“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 August 8, 2014. On August 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 11, 2014, 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 the Complainant on August 12, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 12, 2014.
The Center verified that the Complaint together with the amendment to 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 August 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2014. An email communication was received from the Respondent on August 18, 2014 (the content of which is reproduced under section 5.B. below).
The Center appointed Kar Liang Soh as the sole panelist in this matter on September 19, 2014. 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. Due to exceptional circumstances, it has been necessary for the Panel to extend the decision due date. 4. Factual Background
The second Complainant is a United States public listed company and the first Complainant is a subsidiary of the second Complainant which holds the trademark registrations associated with the business of the Complainants’ group of companies. The Complainants are in the business of warehouse club merchandizing and have operated their business under the COSTCO trademark since 1983. Products offered by the warehouse stores include food, beverages, pharmaceuticals, personal care products, clothing, computers, home electronics products, office supplies, furniture, jewelry, tools, automotive supplies and sports equipment. The Complainants also offer various services including pharmacy services, bakery, tire installation, home and health insurance, auto sales and financing, online training, telecommunications, and travel services.
The Complainants currently operate 658 warehouse stores worldwide including in the United States, United Kingdom of Great Britain and Northern Ireland, Australia, Japan, Republic of Korea and Taiwan Province of China. They achieved about USD 102 billion in sales in 2013 and are among the largest retailers in the world. The Complainants operate 10 warehouse stores in Taiwan Province of China, the first of which was opened in 1997.
The Complainants have registered the COSTCO trademark around the world, including the following: Jurisdiction Trademark Number Registration Date
United States
1,318,685
February 5, 1985
United States
2,029,565
January 14, 1997
Price Costco International, Inc. (a wholly owned subsidiary of the second Complainant) has registered the COSTCO trademark in the Far East, including the following:
Jurisdiction Trademark Number Registration Date
Taiwan Province of China
97655
January 16, 1998
China
3422877
August 7, 2004
Hong Kong, China
302113587
December 15, 2011
The Complainants have adopted the Chinese characters好市多 as the Chinese form of the COSTCO trademark. Price Costco International, Inc. has also registered the好市多 trademark in the Far East, including the following: Jurisdiction Trademark Number Registration Date
Taiwan Province of China
100775
June 16, 1998
China
6390039
July 7, 2010
Hong Kong, China
200011435AA
May 8, 1999
The Complainants have also registered the domain name from which they operate a website. The Complainants’ online retail websites resolved from and generated about USD 3 billion of sales in 2013. The Complainants’ operations in Taiwan Province of China include an information website at “www..tw”.
The Respondent is an individual based in Taiwan Province of China whose identity was hidden behind an identity shiedling service of Domains by Proxy, LLC, until the Respondent’s identity was revealed by the Registrar in this proceeding. Little information about the Respondent is available beyond the information disclosed by the Registrar.
The Respondent registered the Disputed Domain Name on June 13, 2010. As of August 5, 2014, the Disputed Domain Name resolved to a Chinese language website which featured multiple prominent uses of the COSTCO trademark and the 好市多 trademark. The website offered an online forum to comment on the Complainants’ products as well as offering the sale of products purportedly purchased at the Complainants’ stores, and the Complainants’ membership cards. The website additionally advertised products and services of the Complainants’ competitors and subject matter which the Complainants are unhappy to be associated with (guns, Russian girls). The Complainants have notified the Respondent of its objections to the Disputed Domain Name and the website resolved from it but did not receive any response. 5. Parties’ Contentions A. Complainant
The Complainants contend that:
1. The Disputed Domain Name is confusingly similar to the Complainants’ COSTCO trademark. The addition of the abbreviation “bbs”, a common abbreviation for “bulletin board system”, to the COSTCO trademark in the Disputed Domain Name does not mitigate the confusing similarity between the Disputed Domain Name and the COSTCO trademark. The operation of a commercial forum website resolved from the Disputed Domain Name exacerbates the confusing similarity;
2. The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services, owns no trademark registrations for the Disputed Domain Name and has not been commonly known by the Disputed Domain Name. The Complainants have not licensed or otherwise permitted the Respondent to use their trademarks or the Disputed Domain Name. The Respondent registered the Disputed Domain Name to direct Internet traffic and trade off of the Complainants’ goodwill by creating an unauthorized association with the COSTCO trademark; and
3. The Respondent registered and is using the Disputed Domain Name in bad faith. The Respondent must have been aware of the Complainants’ rights in the COSTCO trademark in Taiwan Province of China. The website resolved from the Disputed Domain Name is to produce revenue by attracting people interested in the Complainants’ products and services. The Respondent also used the Complainants’ Chinese 好市多 trademark on the website. The Respondent’s only conceivable business purpose in registering the Disputed Domain Name was to profit from the diversion of Internet users to its commercial website. B. Respondent
The Respondent contends that the website resolved from the Disputed Domain Name had received positive comments and brought a lot of positive publicity. The Respondent commented that the website will not be used to cause malicious damage to the Complainants. The Respondent further claimed that the Disputed Domain Name will no longer be used and will change the domain name and business direction, presumably of the Respondent’s website so as to avoid consumer confusion. 6. Discussion and Findings
The Panel is required to consider the allegations and evidence presented in the proceeding against paragraph 4(a) of the Policy which states:
a) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
b) The respondent has no rights or legitimate interests in respect of the domain name; and
c) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainants have shown on the evidence that they have rights in the COSTCO trademark which is incorporated in its entirety in the Disputed Domain Name. The only difference between the Disputed Domain Name (ignoring the generic Top-Level Domain) and the COSTCO trademark is the addition of the suffix “bbs” in the Disputed Domain Name. The Panel accepts that “bbs” is a common abbreviation for “bulletin board system” and agrees with the Complainant that such suffix does not assist to distinguish the Disputed Domain Name from the COSTCO trademark. In proposing to stop use of the Disputed Domain Name, the Respondent appeared to share a concern about confusing similarity. Therefore, the Panel holds that the Disputed Domain Name is confusingly similar to the COSTCO trademark in accordance with the first limb of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainants have confirmed that the Respondent has not been licensed or permitted to use the COSTCO trademark or the Disputed Domain Name. The Respondent has not denied this but tried to justify the registration and use of the Disputed Domain Name on the basis that he did not intend to cause malicious damage. There is no evidence before the Panel to suggest that the Respondent was commonly known by the Disputed Domain Name prior to registering it. The Panel is satisfied that the Complainants have established a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. In view of the lack of cogent rebuttal by the Respondent in this regard, the Panel holds that the second limb of paragraph 4(a) of the Policy is also established. C. Registered and Used in Bad Faith
The Complainants have argued that the Respondent has exhibited the bad faith registration and use described in paragraph 4(b)(iv) of the Policy, which states:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line 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 Panel agrees with the Complainants submission that the Respondent must have been aware of the COSTCO trademark. The Respondent’s statement in its response that “We simply love Costco merchandise masses” is telling of an awareness of the COSTCO trademark in the Respondent’s mind at the time the Disputed Domain Name was registered. The sale of goods via the website resolved from the Disputed Domain Name is clear evidence that it is intended for commercial gain. The multiple prominent uses of the COSTCO trademark and 好市多trademark on the website points only to one reasonable possibility, that the Respondent intended to create a likelihood of confusion and association with the COSTCO trademark as to the source, sponsorship, affiliation or endorsement of the website and the products on the website. Therefore, the present circumstances fall within the bad faith registration and use outlined in paragraph 4(b)(iv) of the Policy. The Panel finds that the requirements of the third limb of paragraph 4(a) of the Policy have also been met. 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 first named Complainant Costco Wholesale Membership Inc, as requested in the Complaint.
Kar Liang Soh
Sole Panelist
Date: October 29, 2014
Full & Egal Universal Law Academy