The Complainant is Price Costco International, Inc., United States of America (“United States”), represented by BMVN International LLC, Viet Nam.
The Respondent is Truong Do Thanh Nhan, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2020. On April 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 17, 2020, the Registrar transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 21, 2020. The Center verified that the Complaint together with the amended 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 April 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2020. The Center appointed Lynda M. Braun as the sole panelist in this matter on June 9, 2020. 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 Complainant, a world leader in warehouse club merchandizing and related services, offers a wide range of merchandise and services for consumers worldwide. The Complainant also offers a wide variety of services for businesses and their employees both online and in its warehouses. Since 1983, the Complainant has operated membership warehouse stores and currently operates 785 warehouse stores worldwide, including 546 in the United States and Puerto Rico and 239 in many other jurisdictions worldwide. With more than 95 million authorized cardholders worldwide and more than 58 million authorized cardholders in the United States, the Complainant is well known by consumers worldwide. The Complainant owns hundreds of trademarks worldwide. Specifically, the Complainant owns trademark registrations for the following trademarks in the United States: COSTCO, United States Registration No. 2029565, registered on January 14, 1997, in international class 35; COSTCO, United States Registration No. 2299958, registered on December 14, 1999, in international class 36; and COSTCO, United States Registration No. 1318685, registered on February 5, 1985 in international class 42. The Complainant also owns a trademark in Viet Nam, where Respondent’s brick and mortar store is located: COSTCO (stylized), Vietnamese Registration No. 185633, registered on May 31, 2012, in international class 35, (collectively, the “COSTCO Mark”). The Complainant owns the The Disputed Domain Name The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark. - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. - the Disputed Domain Name was registered and is being used in bad faith. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)): (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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 This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. It is uncontroverted that the Complainant has established rights in the COSTCO Mark based on longstanding use as well as its registered COSTCO Mark in the United States, Viet Nam, and other jurisdictions worldwide. Additionally, the general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the COSTCO Mark. The Disputed Domain Name incorporates the COSTCO Mark in its entirety, with the mere addition of the dictionary word in Vietnamese “sieuthi”, which means “supermarket” in English, and the letter “s”, followed by the generic Top-Level Domain (“gTLD”) “.com”. Such additions are insufficient to differentiate the Disputed Domain Name from the COSTCO Mark. See Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Yezican Industries and Domains By Proxy, Inc.,WIPO Case No. D2007-0638 (“Adding the common English words “my” and “book” in the Domain Name (i.e., mycostcobook.com] does not avoid confusing similarity with the COSTCO mark.”); ALH Group Pty Ltd v. Naveen Mathur, WIPO Case No. D2015-2004 (finding the disputed domain name confusingly similar to the trademark despite the addition of the letter “s”); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”). Furthermore, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Further, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its COSTCO Mark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name to create a website selling food and health products bearing the COSTCO Mark, and selling such goods at a brick and mortar store in Viet Nam, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy. The registration of a domain name that is identical or confusingly similar to a trademark by an entity that has no relationship to that mark may be suggestive of bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Moreover, the use of a domain name to attract Internet users to a respondent’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website for commercial gain demonstrates registration and use in bad faith. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant’s COSTCO Mark and to drive Internet traffic seeking the Complainant’s merchandise and services to the Respondent’s website, thereby disrupting the Complainant’s business. Moreover, the Respondent knew or should have known of the Complainant’s rights in its COSTCO Mark when registering the Disputed Domain Name. For one thing, the Complainant’s COSTCO Mark has been deemed “well known” by previous UDRP panels. See e.g., Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Nathniel Ho/EDF RTD,WIPO Case No. D2009-0782 (the disputed domain name consists of complainant’s well-known registered trademark and the common word “drugs”). In addition, the Respondent registered the Disputed Domain Name decades after the Complainant first used and obtained its trademark registrations for the COSTCO Mark. Based on the continuous use of the COSTCO Mark worldwide, it strains credulity to believe that the Respondent had not known of the Complainant or its COSTCO Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 (“a finding of bad faith may be made where the respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name”). Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun
Sole Panelist
Date: June 20, 2020
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