The Complainants are Costco Wholesale Corporation and Price Costco International, Inc., both of Issaquah, Washington, United States of America (“United States”), represented by the Law Office of Mark J. Nielsen, United States.
The Respondent is Domain Admin, Privacy Protection Service Inc d/b/a PrivacyP of Nobby Beach, Queensland, Australia / Lee Chang Yup of Goyang-si, Gyeonggi-do, Republic of Korea (“Korea”). 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2014. On November 3, 2014, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2014, the Registrar transmitted to the Center its verification response, disclosing the registrant and contact information for the disputed domain name, which differed from the named respondent and contact information in the Complaint. On November 5, 2014, the Center notified the Complainants of the registrant and contact information as disclosed by the Registrar, and invited the Complainants to amend the Complaint. The Complainants filed an amendment to the Complaint on November 6, 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 November 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for the Response was December 1, 2014. The Respondent did not submit any response. Accordingly, on December 2, 2014, the Center notified the Respondent’s default.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on December 18, 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 Complainants are in the retail business worldwide, and operate membership warehouse stores in a number of countries, including the United States, Korea, Japan, and Taiwan, Province of China, using various marks that feature the COSTCO designation. The Complaint indicates that “Price Costco International, Inc. is a subsidiary of Costco Wholesale Corporation and owns … trademark rights and domain names associated with the COSTCO trademark outside the [United States].” The Complainants collectively have received multiple registrations for the COSTCO mark in several countries. An early registration is from the United States Patent and Trademark Office (Registration Number 1318685), on February 5, 1985.
The Complainants also operate the domain name , registered on March 17, 1997.
The Respondent registered the disputed domain name on June 10, 2014. 5. Parties’ Contentions A. Complainants
The Complainants contend principally that: (i) the disputed domain name is identical or confusingly similar to a mark in which the Complainants have rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
In addition, the Complaint states, inter alia:
“Costco is a recognized world leader in warehouse club merchandizing and related services. Costco has operated membership warehouse stores under the COSTCO trademark and trade name since 1983. Costco currently operates over 663 warehouse stores worldwide …. Costco has more than 70 million authorized cardholders worldwide …. Costco is currently … the seventh largest retailer in the world…. The COSTCO trademark has become famous for the sale of brand name and high quality private label merchandise at low prices in no‐frills warehouse‐style stores.”
“Costco’s warehouse stores offer a wide range of merchandise, including fresh, frozen and packaged food, beverages, [and] nutritional supplements ….”
“Costco is very well known in South Korea, having opened its first warehouse store there in 1994. Costco currently operates eleven warehouse stores in Yangpyung, Daegu, Daejeon, Yangjae, Sangbong, Ilsan, Busan, Ulsan, Gwangmyeong, Euijeongbu and Cheonan…. [I]nformation summaries for each of these warehouse stores … are also available at Costco’s website at www.. Costco’s warehouse stores have been very successful in South Korea, and there are over 2 million authorized Costco cardholders there.”
“Costco operates an informational website in support of its operations in South Korea in English and Hang[e]ul at .”
“Price Costco International, Inc. has registered the COSTCO mark in South Korea for a variety of goods and services, including especially retail store services.”
“Costco has not licensed or otherwise permitted Respondent to use its marks or the Domain Name. In fact, Costco expressly objected to Respondent’s registration and use of the Domain Name. Respondent does not own and cannot lawfully obtain any trademark or intellectual property rights in the COSTCO trademark or any words or phrases that incorporate or are confusingly similar to the COSTCO trademark. Nevertheless, Respondent registered the Domain Name and uses it to direct Internet traffic to its retail website selling products purchased from Costco.” B. Respondent
The Respondent did not reply to the Complainants’ contentions. Paragraphs 5(e) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint. Under paragraph 14(b), the Panel may also draw appropriate inferences from the Respondent’s default. 6. Discussion and Findings
Initially, the Panel must determine the identity of the proper Respondent. The case record reveals that all correspondence from the Center directed to the named Respondent in the initial Complaint – Domain Admin, Privacy Protection Service Inc d/b/a PrivacyP – triggered an automated reply, stating:
Hello,
Thank you for contacting PrivacyP.
This is an automated reply …. If you retrieved this email address by performing a WHOIS lookup, then it is likely that this domain name has enabled Privacy Protection Service.
Note that:
* PrivacyP provides a WHOIS privacy service for domain name owners that do not wish to be contacted directly.
* We are NOT the actual owner of the domain name.
* We DO NOT accept any postal mail on behalf of the domain name owner and all mails sent to our address will be rejected. Any telephone calls received at the PrivacyP Telephone Number, would be greeted with an electronic answering machine requesting the caller to visit this website.
Regards,
PrivacyProtect.Org
The Registrar formally disclosed the registrant of the disputed domain name: Lee Chang Yup. The disclosed registrant is the proper Respondent; all references to the Respondent hereinafter are to this registrant.
Turning to the merits, in order to prevail, the Complainants must demonstrate that each element under paragraph 4(a) of the Policy is present. A. Identical or Confusingly Similar
The Complainants have rights in the COSTCO mark. The Panel determines that the disputed domain name is identical or confusingly similar to the Complainants’ mark. The disputed domain name begins with the full incorporation of the COSTCO mark. It is the Panel’s view that the primary emphasis of the disputed domain name is “costco”. The Panel declines the option to view the disputed domain name as a combination of a generic term (“cost”) plus the name of a country (“Corea”, the spelling of Korea in Spanish).
The first element is demonstrated. B. Rights or Legitimate Interests
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and has met its initial burden of making a prima facie showing. The burden thus shifts to the Respondent to show that it has such rights or interests. Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that demonstrate rights or legitimate interests to a domain name. The Respondent has defaulted. Had the Respondent submitted a response, perhaps it could have advanced the creative argument, as alluded to above, that the disputed domain name is merely a presentation of a generic term (cost) followed by the country of which the Respondent is a resident (Corea), and that such a presentation stands in contrast to the Complainants’ COSTCO name. Two factors help to defeat this argument: (i) the well-known nature of the Complainants’ mark; and (ii) the contents of the website to which the disputed domain name resolves. These factors are related to the bad faith element, and are discussed below. In all events, the Panel is not able to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name, as described in paragraph 4(c) of the Policy, or otherwise.
The second element is satisfied. C. Registered and Used in Bad Faith
The Complainants must also show that the disputed domain name “has been registered and is being used in bad faith”, as required in paragraph 4(a)(iii) of the Policy. Paragraph 4(b) provides a non-exhaustive list of circumstances that are evidence of bad faith registration and use.
The Complainants have a significant business presence in Korea. It is difficult to see how someone in that country registering the disputed domain name could not have been aware of the Complainants’ retail shopping service, or the domain name .
Internet users who resort to the disputed domain name are taken to a website that features photographs of food and beverage items, and which welcomes users to “a happy online shopping time” (in Korean). The website content relates directly to the Complainants’ business operations. It is the Panel’s view that the Respondent, by using the disputed domain name, “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site … by creating a likelihood of confusion with the [C]omplainant[s’] mark as to the source, sponsorship, affiliation or endorsement of [the Respondent’s] web site”, as set forth in paragraph 4(b)(iv).
The third element is present. 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 Complainants.
Ilhyung Lee
Sole Panelist
Date: December 28, 2014
Full & Egal Universal Law Academy