The Complainants are Costco Wholesale Membership Inc. and Costco Wholesale Corporation of Issaquah, Washington, United States of America, represented by Law Office of Mark J. Nielsen, United States of America.
The Respondent is Guo Xiaobao / Guoxiaobao of Guangdong, Guangzhou, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2014. On August 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 2014, 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.
On August 27, 2014, the Center transmitted an email to the parties regarding the language of the proceeding. On August 28, 2014, the Complainants submitted their request that English be the language of the proceeding by email to the Center. The Respondent did not submit any comments within the specified due date.
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 in English and Chinese, and the proceedings commenced on September 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2014.
The Center appointed Kar Liang Soh as the sole panelist in this matter on October 8, 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. 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 USD102 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 first 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 purportedly in China. Little information about the Respondent is available beyond the information disclosed by the WhoIs information on the Disputed Domain Name. The WhoIs information also states the Respondent’s address as being both in “Hu Bei Shen” (which appears to be a phonetic misspelling of Hubei Province) and “Guang Zhou Shi” (which appears to refer to Guangzhou City in Guangdong Province), without any street or building information.
The Respondent registered the Disputed Domain Name on June 9, 2014. As of September 2, 2014, the Disputed Domain Name resolved to a Chinese language website which featured multiple prominent uses of the COSTCO trademark and好市多 trademark. The website identifies itself as “台北潮貨店”, which translates loosely as “Taipei fashion goods store”, and offered an online forum to comment on the Complainants’ products as well as offering the sale of clothing and footwear under brands like NIKE, ADIDAS, PUMA, CONVERSE, NEW BALANCE, ABERCROMBIE & FITCH, BEATS, BOSS, POLO and UGG. Webpages on the website also contained the statement “cosco好市多大賣場目錄2014”. However, the upper left corner of the homepage contained the apparently contradictory statement “本店與cosco好市多公司及cosco好市多大賣場目錄無關” (loosely translated as “this store is not related to cosco or cosco warehouse store catalog”. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
1. The Disputed Domain Name is confusingly similar to the Complainants’ COSTCO trademark. The addition of the suffix “tw”, the country code for Taiwan Province of China, to the COSTCO trademark in the Disputed Domain Name exacerbates the confusing similarity between the COSTCO trademark and the Disputed Domain Name;
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 his commercial website. The Respondent’s disclaimer to the effect that the Respondent’s website is not related to “cosco好市多公司” confirms that the Respondent was well aware of the Complainant and is insufficient to dispel the deliberately created initial impression of an association with the Complainants. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of Proceeding
As the registration agreement of the Disputed Domain Name is in Chinese, the default language of proceeding is Chinese. Nevertheless, the Panel is empowered under paragraph 11(a) of the Rules to determine a different language of proceeding having regard to the circumstances.
The Complainants have requested for English to be the language of proceeding. Having reviewed the circumstances, the Panel is satisfied that the present circumstances are appropriate for the Panel to exercise its discretion under paragraph 11(a) of the Rules and the Panel hereby determines that English shall be the language of the proceeding. In making this determination, the Panel took into account the following factors:
a) The Complainants have indicated that they will suffer unnecessary burden if required to translate the Complaint into Chinese and to conduct the proceeding in Chinese. The Complainants are based in the United States where English is the main language of communication and commerce. There is no evidence before the Panel to suggest that the Complainants are conversant in Chinese and the Panel agrees that requiring the Complainants to translate the Complaint into Chinese and to conduct the proceeding in Chinese will be burdensome on the Complainants;
b) The Respondent did not file a response. Since the Respondent has chosen not to participate in the proceeding, it does not appear that requiring the proceeding to be conducted in Chinese will assist in the Respondent’s participation in the proceeding;
c) The Respondent did not object to the Complainants’ request for English to be the language of proceeding;
d) The Complainants have confirmed that they have no objections to the Response being filed in Chinese in the interest of fairness. The Panel, being bilingual, is equipped to deal with documents in either English or Chinese; and
e) The Complaint has already been filed in English. The Panel does not foresee any advantage to the proceeding in insisting that Chinese should be maintained as the language of proceeding. On the contrary, doing so will lead to unnecessary delay in the proceeding. 6.2 Discussion
The Panel is required to consider the allegations and evidence presented in the proceeding in relation to paragraph 4(a) of the Policy which states:
a) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
b) you have no rights or legitimate interests in respect of the domain name; and
c) your 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 “.com”) and the COSTCO trademark is the addition of the suffix “tw”, and a hyphen between COSTCO and this suffix, in the Disputed Domain Name. The Panel accepts that “tw” is the ISO-3166 country code for Taiwan Province of China and does not assist to distinguish the Disputed Domain Name from the COSTCO trademark. It is a consensus opinion of previous UDRP panels that hyphens used per se as word separators in domain names are not distinctive elements and should be ignored. 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. There is no evidence before the Panel to suggest that the Respondent is 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 response by the Respondent which could throw better light in the proceeding, 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 trademark registrations for the COSTCO trademark and 好市多trademark pre-date the registration of the Disputed Domain Name by many years. The Respondent’s disclaimer that the Respondent’s website is not related to “cosco好市多公司” confirms that the Respondent was well aware of the Complainants or at least the好市多trademark. The sale of goods via the website resolved from the Disputed Domain Name is clear evidence that it is intended for commercial gain. The prominent use of the 好市多trademark and the misspelling “cosco” of the COSTCO 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. The Panel agrees with the Complainants that the disclaimer on the website does not remove such likelihood of confusion and association. Therefore, the present circumstances fall within the bad faith registration and use outlined in paragraph 4(b)(iv) of the Policy.
In addition, a registrant has a duty to act honestly. Previous UDRP panels have established that the deliberate failure to provide complete contact details is a failure to discharge the duty of a registrant to act honestly. Such failure is a basis for finding bad faith use and registration (see Volkswagen Financial Services AG v. tangzhou,WIPO Case No. D2013-0574; Immobilière Dassault SA, Groupe Industriel Marcel Dassault v. DuanZuoChun,WIPO Case No. D2011-2106; ECCO Sko A/S v. Protected Domain Services – Customer ID: NCR-2448048/jizhiteam,WIPO Case No. D2010-1113; Farouk Systems Inc v. David,WIPO Case No. D2009-1245). The Respondent has provided an incomplete address. The attempts by the Center to contact the Respondent, including via the Respondent’s address and telephone number were unsuccessful as they appear to be invalid. In the circumstances, the Panel is of the view that the Respondent has failed to discharge this duty, which is a further evidence of bad faith registration and use.
In the circumstances outlined above, 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 Complainant Costco Wholesale Membership, Inc.
Kar Liang Soh
Sole Panelist
Date: October 31, 2014
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