The Complainant is Price Costco International, Inc. (“PCII”), United States of America (“United States”), represented Talal Abu Ghazaleh Legal, Egypt.
The Respondent is Simin Kalaye Soren, Iran (Islamic Republic of). 2. The Domain Name and Registrar
The disputed domain name is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2019. On July 11, 2019, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On July 13, 2019 IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on July 16, 2019.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 July 23, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2019. On August 21, 2019, the Center notified the Respondent’s default.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on August 29, 2019. 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 is a subsidiary of Costco Wholesale Corporation. Costco Wholesale Corporation is the second largest retailer in the world and is a recognized world leader in warehouse club merchandising and related services. Since registering the Costco domain name in 1997, the Complainant has grown worldwide. During the past fiscal year (ended September 3, 2017), the Company’s total sales were USD126.1 billion.
The Complainant has operated membership warehouse stores under the COSTCO trademark since 1983. The Complainant alleges that it owns intellectual property rights outside the United States, including trademark and service mark for the term “Costco” in many other jurisdictions including the Islamic Republic of Iran (the country of residence of the Respondent); Iran trademark registration No. 255129, in class 35 registered January 17, 2016, and European Union trademark registration No.2895688 in class 35 since October 18, 2002.
The Complainant states that it operates online retail websites for its members in the United States, Canada, Mexico, United Kingdom, the Republic of Korea, Taiwan, Japan, Australia, Spain, France and Iceland offering a wide range of goods and services through its domain names; , , , , , , , , , and , which fully incorporate the trademark COSTCO. It would be therefore, clear that many Costco’s shoppers use the Internet to find and purchase the Complainant’s goods and services.
The Complainant also mentions that the sign “Costco” is derived from the Complainant’s company name “Price Costco International, Inc” and hence it is not only protected as a trademark but it is also protected as a trade name.
The disputed domain name was first registered on December 22, 2012. The disputed domain name resolved to an active website that is almost an exact copy of Costco’s website, (apart from it being translated in Persian) selling the Complainant’s products and competitors’ products. The disputed domain name now appears to no longer resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant submits that the COSTCO trademark has been recognized by the public as a symbol that identifies and distinguishes Complainant’s business, and that through long and continuous use, international recognition, and extensive investments made by the Complainant in promoting and protecting its trademarks, the name “Costco” has acquired distinctiveness and secondary meaning as a trademark. Thus, the evidence establishes that COSTCO trademarks are associated with the Complainant, and its affiliated companies.
Moreover, the Complainant claims that the disputed domain name is identical to its trademark COSTCO and confusingly similar to its trademark COSTCO WHOLESALE & DESIGN. Therefore, the actual use of the disputed domain name could potentially cause likelihood of confusion with the Complainant’s trademarks.
The Complainant also affirms that it has never authorized nor licensed the Respondent to use its trademark COSTCO nor permitted the registration of any disputed domain name incorporating the said trademark. The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name .
The Complainant contends that the disputed domain name has been registered in bad faith as; (i) it is implausible that the Respondent was unaware of the Complainant’s trademarks given its famous reputation around the world; (ii) the Complainant has been operating under the “Costco” brand since 1983; the Complainant registered its subsidiary company in State of Nevada since 1994; the Complainant registered its domain name in 1997 and registered its trademark COSTCO in 1997; and (iii) the website connected to the disputed domain name is an almost exact copy of Complainant’s website, which indicates that the Respondent is intentionally creating a likelihood of confusion with the trademark COSTCO as to the source, sponsorship, affiliation, or endorsement of the website and the services offered thereon.
In view of the above, the Complainant requests the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
The burden of proving these elements is on the Complainant. A. Identical or Confusingly Similar
The Complainant has duly proven that the first element under paragraph 4(a) of the is met by evidencing that it owns several trademark registrations for COSTCO and its variants worldwide, and that such trademark is contained in its entirety in the disputed domain name . See, section 1.8 of the WIPO Overview of WIPO Panel View on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Thus, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
Therefore, the Panel considers the requirements of the first element of paragraph 4(a) of the Policy satisfied. B. Rights or Legitimate Interests
The Respondent had twenty days to submit a response according to paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, the panel’s decision shall be based upon the complaint, in the absence of exceptional circumstances.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0 as follows: “[W]here a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The disputed domain name was registered by the current holder of the domain name in September 2018, that is, two years after the Complainant’s first trademark registration in Iran, which occurred in January 2016, and several years after 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, and, as a result thereof, the Panel holds that the Respondent must have been aware of the Complainant’s trademark at the time of the disputed domain name registration.
The Panel finds that the Complainant has never entered into any agreement with the Respondent nor granted any authorization or license to the Respondent regarding the use of the Complainant’s trademark, nor is the Respondent affiliated with the Complainant’s activities.
Accordingly, the Complainant established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Since the Respondent has not replied to the Complainant’s contentions and, thus, has not presented any evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel has found no indication that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). C. Registered or Used in Bad Faith
Paragraph 4(b) of the Policy lists several circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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.”
The Panel finds it highly unlikely that the Respondent had no knowledge of the Complainant’s rights to the trademark “Costco” at the time of registration of the disputed domain name, taking into consideration Complainant’s well spread reputation; on the contrary, the evidence shows that the Respondent was likely deliberately trying to create confusion.
The Panel acknowledges that the Complainant is a widely known company and believes the disputed domain name may cause confusion, since its feature, namely “costco”, reproduces exactly not only the Complainant’s trademarks, but also the main part of the domain names currently used by the Company, such as , , , , , , , , , and .
The Panel notes that the content found in the disputed domain name (the same layout and content of Complainant’s website) confirms that the Respondent registered the disputed domain name with the intention to wrongly attract the Complainant’s clients and pursue commercial gains with their access to the website. In other words, it seems that the only reason for the registration of the disputed domain name was the intention to exploit the Complainant’s reputation for commercial gain, causing consumers’ confusion and diversion.
Thus, considering the circumstances of this case, the Panel concludes that the Respondent acts in bad faith for the following reasons:
(i) the widespread reputation of the Complainant’s products and services makes it highly unlikely that the Respondent had no prior knowledge of the Complainant’s previous trademark rights when registered the disputed domain name;
(ii) the Respondent has no legitimate interests in the disputed domain name;
(iii) the Respondent’s disputed domain name reproduces the Complainant’s trademarks, trade name and domain names; and
(iv) the disputed domain name misrepresents the Complainant and deceives their customers or potential customers by leading them to think that they are accessing one of Costco’s official websites, while instead they are redirected to Respondent’s website.
Lastly, the Panel notes that, in conjunction with all of the abovementioned, the fact that the Respondent did not present any response to the Complaint reinforces the conclusion that Respondent acted in bad faith.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
As such, the Panel finds that the Complainant has satisfied 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.
Gabriel F. Leonardos
Sole Panelist
Date: September 17, 2019
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