The Complainants are Price Costco International, Inc., Costco Wholesale Membership Inc., and Costco Wholesale Corporation, United States of America (“United States”), represented by BMVN International LLC, Viet Nam.
The Respondent is Lin, Chih Hung, Viet Nam. 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 29, 2020. On April 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 30, 2020, 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 May 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2020. The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on June 8, 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 Complainants are Costco Wholesale Corporation and its subsidiaries, Price Costco International, Inc. and Costco Wholesale Membership Inc., specializing in warehouse club merchandizing and related services. Since 1983, the Complainants have operated membership warehouse stores under the COSTCO trademark and trade name. Currently, the Complainants operate 785 warehouse stores and have more than 95 million authorized cardholders worldwide. In fiscal year 2019, the Complainants had USD 149 billion in sales. The Complainants are currently the 15th largest company in the Fortune 500, and are the second largest retailers in the world. The Complainants own numerous trademark registrations for COSTCO trademark not only in the international class 35 for retail and wholesale trading services since 1985, but also in the international class 36 for real estate-related services in various jurisdictions throughout the world, including, but not limited to, the United States, European Union, New Zealand, Canada and the Republic of Korea. The Complainants obtained their United States trademark registrations for COSTCO under trademark No. 2299958 registered on December 14, 1999 and No. 2306055 registered on January 4, 2000, both for real estate brokerage services. The Complainants introduced the Costco Mortgage Program, which could help their members buy or refinance a home through CrossCountry Mortgage, LLC and other participating lenders. As of 2019, eight years after the establishment of this program, it has funded more than 132,000 loans worth over USD 30 billion, and received high rating from over 92% of Costco members who used the mortgage program. The Complainants also own a number of domain names featuring the trademark COSTCO, among which the notable one is The Respondent registered the Disputed Domain Name The Complainants contend that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows: (i) The Disputed Domain Name is confusingly similar to a trademark or service mark in which the Complainants have rights. First, the Complainants contend that they own the COSTCO trademarks for real estate-related services in international class 36 in various countries. Second, the Complainants contend that the Disputed Domain Name is confusingly similar to the COSTCO marks owned by the Complainants by arguing that: - The Disputed Domain Name reproduces entirely the registered trademark COSTCO of the Complainants; - The addition of the common or generic word “land”, which would be referred to the provision of real estate-related services, could not dispel any confusing similarity. On the contrary, this term misleads the Internet users into thinking that the Disputed Domain Name is related to, sponsored by, or affiliated with the Complainants and their services in Viet Nam, when this is not the case; - The addition of the generic Top-Level Domain (“gTLD”) suffix “.com” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name; and - Finally, the Complainants submit that the previous UDRP panels have uniformly found that the addition of common terms to the COSTCO mark is not sufficient to negate confusing similarity between the Disputed Domain Name and the COSTCO mark. (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainants submit that the elements set forth in the Policy, paragraph 4(c) are not fulfilled. First, the Complainants submit that the Respondent has no right or legitimate interest in any Disputed Domain Name, trademark, or trade name incorporating or confusingly similar to the COSTCO trademarks. In fact, the Respondent owns no trademark registration for the Disputed Domain Name or any portion thereof. Second, the Complainants have not licensed or otherwise permitted the Respondent to use any of their trademarks or to register a domain name incorporating their COSTCO trademark (or a domain name which will be associated with this trademark). Third, the Complainants contend that the Respondent used the Disputed Domain Name to direct Internet traffic to its website under the Disputed Domain Name, evidencing a clear intent to disrupt the Complainants’ business, deceive consumers, and trade off of the goodwill and reputation of the COSTCO trademarks by creating an unauthorized association between it and the COSTCO trademarks. (iii) The Disputed Domain Name was registered and is being used in bad faith. The Complainants assert that it is evident from the Respondent’s use of the Disputed Domain Name that the Respondent has been well aware of the Complainants’ trademark when registering the Disputed Domain Name, since “Costco” is a coined word and has become well known over the world. In addition, the Respondent’s registration of the Disputed Domain Name was done in bad faith because it had no legitimate right or business interest in any Costco-formative domain name. The Complainants further submit that the Respondent registered and is using this Disputed Domain Name for commercial gain and to profit from the resulting consumer confusion that this Disputed Domain Name is connected with the Complainants and/or that the Respondent and the website under the Disputed Domain Name are somehow connected to or endorsed by the Complainants. Consequently, the Complainants contend that three elements under the Policy have been established and request for a transfer of the Disputed Domain Name to the Complainants. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings A. Procedural Issues (i) Consolidation of Multiple Complainants The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides at section 4.11.1, in respect of the issue “Multiple complainants filing against a single respondent” that: “Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. [...] In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.” The present proceeding involves three Complainants bringing a single complaint against a common Respondent. The Complainants have made a request for consolidation and bear the burden of establishing that such a consolidation is justified. The Panel is satisfied, based on the material filed, that the Complainants have a specific common grievance against the Respondent, in that the Complainants have a common legal interest as related entities that hold and use the COSTCO mark. Therefore, the Panel finds that it is equitable and procedurally efficient to grant the Complainants’ request for consolidation. (ii) The Respondent’s Failure to Respond The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainants (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010‑1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default. B. Identical or Confusingly Similar The Complainants are required to establish the following: (i) that they have trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to their trademark. First, the Panel finds that the Complainants have evidenced that they have trademark rights in and to the COSTCO trademarks for real estate-related services, which were registered before the registration of the Disputed Domain Name. In the case at hand, the Panel notes that the Complainants do not have a registered trademark for COSTCO for real estate-related services in the international class 36 in Viet Nam, where the Respondent resides. However, it is well established that the jurisdictions where the trademark is valid, its date of registration (or claimed first use), and the goods and/or services for which it is registered or used in commerce, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. See section 1.1 of the WIPO Overview 3.0. Second, the Disputed Domain Name comprises the Complainants’ COSTCO trademark in its entirety, in which the Complainants have exclusive rights. The difference between the Disputed Domain Name and the COSTCO trademark is the addition of the suffix “land”, which is a descriptive term and directly in relation to the real estate-related services that the Complainants have been providing. The Panel finds that “costco” remains the dominant element in the Disputed Domain Name. It is well established that the addition of the other term (such as “land”) to a trademark does not prevent a finding of confusing similarity. Thus, in the Panel’s view, the addition of the said suffix does nothing to distinguish the Disputed Domain Name from the trademark, nor to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., Philip Morris Products S.A. v. Ong Nguyen Ngoc Ha,WIPO Case No. D2019-2509; Facebook, Inc. v. Domain Admin Privacy Protect, LLC (PrivacyProtect.org) / Do Viet Dung,WIPO Case No. D2019-1121). Third, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Sika AG v. Gia Nhu, Cong Ty Co Phan Truyen Thong Suc Manh Viet,WIPO Case No. D2019-2224; Philip Morris Products S.A. v. Domain Admin, Domain Whois Protection Service / Phan Van Dung,WIPO Case No. D2019-0482). On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainants’ COSTCO trademark, and the first element of the Policy is established. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Panel finds that the Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not reply to the Complainants’ contentions and, therefore, did not refute the Complainants’ contentions. The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the Complainants, once a prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating his rights or legitimate interests in the Disputed Domain Name (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted for evidence to the contrary. Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainants’ asserted facts, that no license, permission, or authorization of any kind to use the Complainants’ trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights featuring the element “costco” in any jurisdiction. The Panel finds, similarly to other UDRP panels, that COSTCO trademark is recognized as a widely known/well-known mark. See, e.g., Price Costco International, Inc. (“PCII”) v. Simin Kalaye Soren,WIPO Case No. DIR2019-0009 (“the Complainant first started to operate under the COSTCO trademark and trade name, in 1983. The Panel acknowledges that the Complainant’s trademark is widely known”); Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Domain Administrator, See PrivacyGuardian.org / Markus Tamn,WIPO Case No. D2018-2523 (“The Panel is of the view that Respondent registered the Disputed Domain Name in bad faith since it is a typographical misspelling of and is confusingly similar to Complainant’s well-known COSTCO trademark”); Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Tayler Boyer,WIPO Case No. D2016-2587 (“In this Panel’s view the common term “admin” is not sufficient to add distinctiveness to the well-known COSTCO trademark, thus not avoiding the risk of undue association between the disputed domain name and the Complainants’ trademark.”). Therefore, the Panel is of the view that the Respondent, by using the well-known COSTCO mark in the Disputed Domain Name for a website promoting real estate services without any accurate and prominent disclaimer of relationship with the Complainants, intends to ride on the reputation of the COSTCO trademark, and thus, such use does not constitute a bona fide use within paragraph 4(c)(i) of the Policy. Regarding paragraph 4(c)(ii) of the Policy, the Panel finds that there is no evidence that the Respondent has been commonly known by the Disputed Domain Name. Regarding paragraph 4(c)(iii) of the Policy, the Panel finds that there is no evidence that the Respondent is making any noncommercial or fair use of the Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element, paragraph 4(a)(ii) of the Policy is established. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.” Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”. The Panel finds that the Complainants have put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainants’ contentions and, therefore, did not refute the Complainants’ contentions. The Panel further finds that the Complainants’ COSTCO trademarks have been registered in numerous countries. According to what the Complainants established and similar to previous UDRP decisions, the Panel finds that the mark COSTCO is well known (see e.g., Price Costco International, Inc. (“PCII”) v. Simin Kalaye Soren, supra; Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Domain Administrator, See PrivacyGuardian.org / Markus Tamn, supra; Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Tayler Boyer, supra). Given the famous nature and wide use of the COSTCO trademark by the Complainants, which occurs in numerous countries and well predated the registration date of the Disputed Domain Name, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, the Panel is of the view that the nature of Disputed Domain Name, incorporating the Complaints’ well-known trademark plus the descriptive term “land” related to the Complainants’ real estate services, indicates itself that the Respondent deliberately selected the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent to take advantage of the Complainants’ goodwill. See the section 3.2.1 of the WIPO Overview 3.0. On the date of this Decision, the Panel accesses the website under the Disputed Domain Name and finds that it refers to a Facebook page named “Costco Wholesale” at “www.facebook.com/costco.chance”. The Panel further finds that COSTCO WHOLESALE is the Complainants’ registered trademark for retail and wholesale trading services in the international class 35 under numerous trademark registrations, including Viet Nam Trademark Registration No. 4-0328023-000. Such findings support the Panel’s opinion that the Respondent had knowledge of the Complainants’ trademark COSTCO and deliberately selected it to include in the Disputed Domain Name. Further, as the Disputed Domain Name comprises the Complainants’ well-known COSTCO mark as the unique distinctive element, it is undisputed that many Internet users attempting to visit the Complainants’ website through a search for “costco” may end up on the web page set up by the Respondent. In the Panel’s view, by using the Disputed Domain Name for a website offering real estate services under the Complainant’s COSTCO mark, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainants’ mark, which supports a finding of bad faith under paragraph 4(b)(iv) of the Policy. Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established. 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 Pham Nghiem Xuan Bac
Sole Panelist
Date: June 22, 2020
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