The Complainants are Costco Wholesale Membership Inc. and Costco Wholesale Corporation of Issaquah, Washington, United States of America (“United States” or “U.S.”), represented by Law Office of Mark J. Nielsen, United States.
The Respondent is Domain Privacy Services of New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with TPP Wholesale Pty Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2016. On December 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2017.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on February 9, 2017. 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 Costco Wholesale Membership Inc., a California corporation, and Costco Wholesale Corporation, a Washington corporation, each having its principal place of business in Issaquah, Washington, United States.
The interests of the Complainants are co-extensive, since Costco Wholesale Corporation is a public company that owns all of the business operations under the COSTCO trademark around the world, while Costco Wholesale Membership Inc., as its subsidiary, owns U.S. trademark rights and domain names associated with the COSTCO trademark.
The Complainants are recognized as world leaders in warehouse club merchandising and related services and have been using the trademark COSTCO since 1983 in over 723 stores worldwide.
The Complainants own trademark registrations in the U.S. for COSTCO in a variety of forms, for a wide variety of services, including financial and banking services comprised in class 36, according to the U.S. registrations (Annex D to the Complaint), and in many other countries around the world, including Australia, as shown in Annex E to the Complaint. There are registrations granted for COSTCO marks dated from 1985 (U.S. registration no. 1318685 for COSTCO in class 42, granted on February 5, 1985).
The Complainants are the owner of the domain names and , among several others, and maintain an active presence on the Internet.
The disputed domain name was registered on September 26, 2014. The disputed domain name previously resolved to a website offering various investment and money-making opportunities, also featuring the Costco logo in red and blue, exactly as it is used by the Complainants. At the time of the decision, the disputed domain name resolves to an inactive website. 5. Parties’ Contentions A. Complainants
The Complainants state that the disputed domain name is confusingly similar to the Complainant’s COSTCO trademark. Because the Complainants offer a wide variety of services related to credit cards, credit card payments, business finance and insurance, the addition of a common term such as “invest” to the COSTCO trademark exacerbates the confusing similarity and increases the risk of confusion between the disputed domain name and the Complainants’ trademark.
The Complainants further argue that the Respondent has no rights or legitimate rights in the disputed domain name. According to the Complainants, the disputed domain name confuses and deliberately deceives Internet users, damages Complainants’ business and reputation, and provides illicit commercial benefit to the Respondent by trading on the Complainants’ reputation and goodwill.
The Respondent is not authorized to register and use the disputed domain name.
The Complainants also assert that the disputed domain name was registered and used in bad faith. The Complainants argue that the Respondent’s choice of the disputed domain name was not a coincidence, as it was registered in 2014, many years after the COSTCO trademark had become famous and after the Complainants began active business operations in Australia.
The Complainants also argue that the Respondent uses the disputed domain name to divert Internet users looking for the Complainants to a different website for its own commercial benefit and that has compounded its bad faith by also marking the website with the Costco logo.
Finally, the Complainants request the transfer of the disputed domain name to Costco Wholesale Membership, Inc. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainants must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service 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. A. Identical or Confusingly Similar
The evidence presented demonstrates that the Complainants are the owners of the trademark COSTCO in the United States, and of the domain names , , among others.
The disputed domain name comprises the Complainants’ trademark COSTCO.
The addition of the term “invest” does not prevent the confusion between the disputed domain name and the Complainants’ trademark and may also increase the risk of confusion since the Complainants offer a wide variety of services related to credit cards, credit card payments, business finance and insurance.
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainants, i.e., the disputed domain name is confusingly similar to the Complainants’ trademark. B. Rights or Legitimate Interests
The Respondent has not submitted a response to the Complaint.
There is no evidence that the Respondent has any authorization to use the Complainants’ trademark or to register domain names containing the trademark COSTCO.
There is no evidence that the Respondent is commonly known by the disputed domain name.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
The Panel finds that the previous use of the disputed domain name, which incorporates the Complainants’ trademark with the addition of “invest,” to resolve to a website offering various investment and money-making opportunities, does not correspond to a bona fide use of domain names under the Policy.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e. the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The trademark COSTCO is registered by the Complainants in the United States and it is used in such a country since 1983.
The disputed domain name is comprised by the trademark COSTCO, with the addition of the dictionary word “invest.”
The Respondent has no rights or legitimate interests in the disputed domain name.
The website at the disputed domain name was offering various investment and money-making opportunities, also featuring the Costco logo in red and blue, exactly as it is used by the Complainants.
In view of the above reasons, this Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to its website for its own or for third parties’ commercial gain by creating a likelihood of confusion with the Complainants’ trademark and misleading Internet users to believe that its website belongs to or is associated with the Complainants.
This Panel finds that the Respondent’s intention of taking undue advantage of the trademark COSTCO as described in paragraph 4(b)(iv) of the Policy has been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., 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 Costco Wholesale Membership Inc.
Mario Soerensen Garcia
Sole Panelist
Date: February 23, 2017
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