The Complainant is Price Costco International Inc. of Issaquah, Washington, United States of America (“United States”), represented by August & Debouzy, France.
The Respondent is Name Redacted of Saint Aubin, France.1 2. The Domain Name and Registrar
The disputed domain name is registered with Google Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2018. On January 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 2018, 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 February 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2018.
The Center appointed Gérald Page as the sole panelist in this matter on March 15, 2018. The Panel finds that it was properly constituted. The Sole Panelist 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
Costco Wholesale Corporation is a public company that directly or indirectly owns all of the business operations under the COSTCO trademark throughout the world (hereinafter the “Costco Group”).
The name COSTCO has been developed by the founders of the Costco Group.
The Costco Group has operated membership warehouse stores under its trademark and trade name since 1983.
The Costco Group is currently the fifteenth largest company in the Fortune 500, with 750 warehouse stores worldwide.
Price Costco International, Inc. is one of its subsidiaries, which notably owns the French and European trademarks, listed in Annex E of the Complaint (hereafter “Prior Trademarks”).
The Costco Group owns trademark registrations, for the famous COSTCO trademark in a variety of forms, including, among many others, COSTCO (in stylized letters), COSTCO.FR and COSTCO.COM.
In particular, the Complainant has registered many trademarks in France and in the European Union that include COSTCO.
For example, and without this list being exhaustive, the Complainant owns the following Prior Trademarks in France:
Trademarks
Filing date
Registration number
Classes
COSTCO
January 14, 1992
92401172
25, 30
COSTCO
April 3, 1992
92413580
29, 30, 31
COSTCO
February 9, 1995
95557516
3, 16, 40, 43, 44
COSTCO.FR
November 3, 1999
99820980
35, 38, 42
COSTCO
February 5, 2014
4066040
35, 39
The Complainant also owns various domain names on the basis of its trademarks including active presence on the Internet using the domain name (Annex F and G of the Complaint).
The Respondent registered the disputed domain name on July 28, 2017 (hereafter the “Domain Name”).
The Domain Name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant contends, inter alia, that the three requisites of paragraph 4(a) of the Policy are met:
(i) The Complainant claims that the Domain Name is confusingly similar to Costo Group’s famous registered trademarks in which the Complainant has rights and evidences its numerous trademarks and several domain names that it owns.
The Complainant explains that the Domain Name reproduces the predominant element COSTCO of the other Prior Trademarks and add to it the prefix “fr”, which means France. The Complainant considers that the Domain Name refers directly to both the trademark COSTCO.FR No. 99820980, the Prior Trademarks registered in France and to the Complainant’s activities in France.
The Complainant believes that the Domain Name and the Prior Trademarks are confusingly similar for the following reasons:
- the name “COSTCO” is created by the founders of the Group Costco.
- the prefix “fr” does not differentiate the Domain Name from the Complainant’s Prior Trademarks.
(ii) The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name: the Respondent is not related in any way to the Complainant’s business, he is not one of its agents and does not carry out any activity for, or has any business with it. No license or authorization has been granted to the Respondent to make any use, nor apply for registration of the Domain Name.
(iii) The Complainant adds that the Respondent registered the Domain Name in bad faith. The circumstances surrounding the registration by the Respondent show that he acted in bad faith.
The Complainant believes that because of the notoriety of the COSTCO trademarks, the Respondent must have been aware of the Complainant’s rights in the COSTCO trademarks, since he registered the Domain Name, a few weeks after the Complaint launched activities in France.
The Complainant also points out that the Respondent sent fraudulent emails and documents to the Complainant’s suppliers.
The Registrar refers to the “identity of the Respondent” as “Garry Swindells” as owner of the disputed domain name. The Complainant believes that the Respondent has stolen the identity of the “real” Gary Swindells (who is the President of Costco Wholesale France) to hide his real identity.
The Complainant has indicated that the Respondent’s name reproduces the President of Costco Wholesale France’s name with a spelling error with a double “r”.
The Domain Name leads to an inactive website. However, the Respondent seems to have used the Domain Name only in email addresses, in order to send fraudulent emails and documents with fraudulent orders and invoices to suppliers or potential suppliers (Annex H of the Complaint). The email addresses used, which are associated to the Domain Name, include: “[…]@”, associated with .
These emails completely confuse and deceive suppliers, damage the Complainant’s business and reputation, and provide an illegal commercial benefit to the Respondent by trading on the Complainant’s reputation and goodwill. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
Therefore, he has not shown or even alleged any rights or legitimate interests in the Domain Name. Neither did he challenge any of the Complainant’s submissions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel has to use in deciding the dispute: “A Panel shall decide a complaint on the basis of the statement and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy states that, for a complaint to be granted, the Complainant must prove each of the following:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or no 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
It is well established that the Complainant has been using the COSTCO trademark for decades in the area and that it has rights on several COSTCO trademarks. The Panel finds that this trademark, owned by the Complainant, is widely known.
The protected COSTCO trademark is fully present in the Domain Name.
The adjunction of the term “fr” does not alter the risk of confusion for Internet users as it has no distinctive force by itself. The extension “.com” is considered as a technical element and has consequently no distinguishing effect.
Consequently, there is no doubt that Internet users will associate the Domain Name with the Complainant’s trademark.
In view of the above, the Panel concludes that is confusingly similar to the Complainant’s trademarks and that the Complainant satisfies the criteria defined in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant has to prove that the Respondent has no rights or legitimate interests in the Domain Name. In connection with the burden of production, several decisions of UDRP panels have held that “although Paragraph 4(a) of the Policy requires that the Complainant prove[s] the presence of this element (along with the other two), once a Complainant makes a prima facie showing [of his rights or legitimate interests], the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name” (see Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; see also Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784; Ets Leobert, SARL v. Jeonggon Seo,WIPO Case No. D2009-0004).
The Complainant underlines without being contradicted, that the Respondent is not related in any way to its business. There is no evidence of any license or authorization granted to the Respondent to use the disputed domain name. The Complainant has therefore established a prima facie case that the Respondent lacks rights or legitimate interests in the use of the Domain Name.
The Respondent, through his silence, has not shown the existence of any rights or legitimate interests in respect to the disputed domain name. He has not shown either that he uses or intends to use the Domain Name.
In similar circumstances, UDRP panels have regularly decided that the Respondent has neither rights nor legitimate interests in the domain name (see Credit Industriel et Commercial S.A. v. Jeongyong Cho,WIPO Case No. D2013-1263).
The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, bad faith should be demonstrated both for registration and use of the Domain Name. Paragraph 4(b) of the Policy mentions “in particular but without limitation” four methods for showing bad faith registration and use of a disputed domain name.
As for the registration of the Domain Name, considering the reputation of the trademark COSTCO in France where the Respondent apparently lives (even if his address is obviously false), the Panel considers that the Respondent could not have ignored this trademark at the time he applied for the registration of the confusingly similar Domain Name .
Passive holding of a domain name is not an obstacle to a finding of bad faith. In the present case, it rather is a clue for bad faith use as email addresses were used with false identities and to divert customers or customers’ money.
Several UDRP panels have ruled on this issue, and it has been widely accepted that “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the Domain Name, but instead whether, in view of all the circumstances of the case, it can be said that the Respondent is acting in bad faith” (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; see also Polaroid Corporation v. Jay Strommen,WIPO Case No. D2005-1005, Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393).
Therefore, the Panel will examine all the circumstances of the case to determine whether the Respondent is acting in bad faith.
The attempts made by the Complainant to contact the Respondent have proved useless as it seems that the Respondent intentionally provided a false address which was inaccessible at the time of the Domain Name’s registration. It is likely that it is done in order to sidestep measures taken against him. The Panel can make such reasonable inferences, and finds that by providing an incorrect address, the Respondent did not act bona fide (see The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340).
On the other hand, the Respondent has remained mute during all the proceedings, and did not respond to the Complaint. He did not object to the Complainant’s credible submission concerning bad faith.
Moreover, the Panel notes the risk for the Complainant in his business to have the Domain Name under the Respondent’s control, which could be detrimental to its clients or its reputation.
The Panel is convinced that the Respondent has registered and is using the Domain Name in bad faith. Accordingly, it finds that the Complainant has also satisfied the requirement under paragraph 4(a)(iii) of the Policy. 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 Price Costco International Inc.
Gérald Page
Sole Panelist
Date: March 29, 2018
1 As it appears that the named Respondent’s identity may have been used by an unauthorized third party when registering the disputed domain name. In light of this potential identity theft, the Panel has decided to redact the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated that Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case.
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