Complainant is Costco Wholesale Corporation and Costco Wholesale Membership, Inc., of Issaquah, Washington, United States of America, represented by the Law Office of Mark J. Nielsen, United States of America.
Respondent is First Class Fitness, of Honolulu, Hawaii, United States of America.
The disputed domain name <mycostcodiet.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2009. On December 11, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 14, 2009, GoDaddy.com, Inc. 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 7, 2010.
The Center appointed Jeffrey Steinhardt as sole panelist in this matter on January 29, 2010. 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.
Complainant Costco Wholesale Membership, Inc. holds many trademark registrations for marks incorporating the word “costco” in the United States and elsewhere, both as word and stylized marks. Among the registrations are:
United States Trademark Registration No. 1976242 in international Class 42 for the word mark COSTCO, with a first use date of November 27, 1984; United States Trademark Registration No. 2440636 in International Class 35 for the words “Costco.com” covering retail store and wholesale services via online electronic communication services including in the field of health and beauty aids, cosmetics and fragrances, vitamins, herbal supplements, and dietary supplements, with a first use date of November 4, 1998; and United States Trademark Registration No. 2481924 for the word Costco in red stylized lettering in International Class 35 including retail and wholesale store services in the fields of groceries, pharmaceutical preparations, vitamins, nutritional supplements, dietary supplements, retail and wholesale store services via online electronic communications in the fields of vitamins, herbal and mineral supplements, and non-prescription remedies, and catalog services via online electronic communications or other media featuring, among other things, personal care products, vitamins, herbal and mineral supplements, and non-prescription remedies, with a first use in commerce date of May 20, 1997.
As a result of Complainants' multiple trademark registrations and continuous widespread use of marks over the past 25 years, the COSTCO trademark is famous. See Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Almantas Kakareka and Hostmaster Oneandone, 1&1 Internet, Inc., WIPO Case No. D2007-1833.
The disputed domain name was registered on November 6, 2007 and presently routes to a parking page displaying sponsored links to third-party websites which promote commercial products in the field of diet, weight loss and dietary supplements.1
Complainants aver that:
“Costco is a recognized world leader in warehouse club merchandizing and related services. Costco has operated membership warehouse stores under the COSTCO trademark and trade name since 1983. Costco currently operates over 560 warehouse stores worldwide, including over 490 COSTCO warehouse stores in the United States and Puerto Rico and over 150 in Korea, Japan, Taiwan, Australia, Canada, Mexico, and the U.K. Costco has more than 58 million authorized cardholders worldwide and more than 40 million authorized cardholders in the United States. Costco is one of the largest and best-known retailers in the United States, with approximately $70 billion in sales in fiscal year 2009. Costco's stock has been publicly traded since 1985. As a result of its size and notoriety, Costco has been the subject of regular news and feature coverage in all types of media. The COSTCO trademark has become famous for the sale of brand name and high quality private label merchandise at low prices in no-frills warehouse-style stores.”
Complainants add that their warehouse stores offer a wide range of merchandise, including fresh, frozen and packaged food, beverages, nutritional supplements, over-the-counter pharmaceuticals, prescription pharmaceuticals, and personal care products, and that in 2008 Complainants earned over $14 billion in revenues from the sale of food and beverage products. Complainants attribute more than $2 billion of their 2008 revenues to sales through their “www.costco.com” website. Complainants aver that food items and weight control products are among those offered through the Costco websites.
Complainants contend that the disputed domain name is confusingly similar to the COSTCO trademarks in which Complainants have rights, that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent registered and uses the disputed domain name in bad faith.
Complainants also aver that they contacted Respondent twice requesting that Respondent cease use of the disputed domain name and transfer it to Complainants.2
On the basis of the above, Complainants seek transfer of the disputed domain name to Complainant Costco Wholesale Membership, Inc.
Respondent did not reply to Complainants' contentions.
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration or acquisition in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center sent to Respondent by courier notification of these proceedings. The Center used the address listed in the WhoIs record for the disputed domain name, but the courier company indicated that the notification was not deliverable because Respondent had moved from that address. The Center also notified Respondent by using an email address provided by the registrar in its verification response to the Center.
The Panel is satisfied that by sending communications to the contacts made available through the registrar, and those provided by the registrant to the registrar as listed in the WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent.
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainants must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) 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.
Complainants must establish these elements even if Respondent does not submit a response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Although the disputed domain name <mycostcodiet.com> is not identical to Complainants' trademarks, the Panel agrees that Respondent's domain name is confusingly similar to Complainant Costco Wholesale Membership, Inc.'s famous COSTCO trademark.
Panels disregard the domain name suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
The domain name in dispute adopts Complainant Costco Wholesale Membership, Inc.'s famous COSTCO trademark in its entirety, adding only the descriptive words “my” and “diet.” The Panel finds that Respondent's addition of these descriptive terms does not negate the confusion created by Respondent's complete inclusion of the COSTCO trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.3
The Panel agrees with Complainants that the addition of the descriptive term “diet” instead increases the risk of confusion experienced by Internet users because Complainants sell a wide variety of food and nutrition-related products. E.g., bwin Interactive Entertainment AG v. Andrei Gladchih, WIPO Case No. D2009-0167 (citing Accor Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant's goods or services marketed in relation to the trademark”)).
The Panel finds therefore that the disputed domain name is confusingly similar to the registered trademarks of Complainant Costco Wholesale Membership, Inc. and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
As shown in exhibits to the Complaint, Respondent's website displays “sponsored listings” which link to third-party websites.4 The diversion of traffic to third parties and their products demonstrates that Respondent is using the COSTCO mark for commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd, WIPO Case No. D2006-1079.
In the absence of a Response, the Panel accepts as true Complainants' allegations that Respondent has no authorization or license to use Complainants' trademarks. The Panel also accepts Complainants' uncontested allegation that Respondent is not known by the disputed domain name.
The Panel agrees with Complainants that Respondent is seeking to attract Internet users through Complainants' marks for Respondent's own commercial purposes. The Panel therefore finds that Respondent's use of the disputed domain name demonstrates Respondent's lack of a legitimate non-commercial interest in, or fair use of, the domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. The Panel also finds that the Complaint makes out a prima facie case.
Filing no response, Respondent has not rebutted Complainants' prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established, as elaborated below.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including the failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Examining the circumstances in this case, the Panel finds that Respondent was undoubtedly aware of Complainants' famous COSTCO mark, which Respondent deliberately adopted to create confusion and attract Internet users to its website for commercial gain. Therefore, the Panel concludes that Respondent registered the disputed domain name in bad faith. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163.
Respondent's website shows that the disputed domain name is used to promote the products of Complainants' competitors in the field of weight-control products, foods and nutritional supplements. The Panel concludes that this activity evidences bad faith use by Respondent. Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088); DaimlerChrysler Corporation and DaimlerChrysler Service North America LLC v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070, (citing Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031).
Respondent's absence of a response to the Complaint and failure to fulfill its obligation to accurately update contact information with the registrar provide further support for the Panel's finding of bad faith.5
The Panel concludes therefore that, in addition to having registered the disputed domain name in bad faith, Respondent is also using the domain name in bad faith.
Consequently, the Panel concludes that the requirements of the third element of Policy Paragraph 4(a) are fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <mycostcodiet.com > be transferred to Complainant Costco Wholesale Membership, Inc.
Jeffrey D. Steinhardt
Dated: February 8, 2010
1 The Panel has undertaken limited research by visiting the web pages to which the disputed domain name routes. See question No. 4.1.of WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
2 Complainants state that Respondent has not complied with the requests to transfer the disputed domain name, and that Respondent continues to use it. Complainants do not state the dates of their requests, whether there is any proof that Respondent actually received the communications, or whether Respondent replied.
3 Several UDRP panels, including this Panel, in other proceedings involving Complainants, have found specifically that the addition of common terms to the COSTCO mark is not sufficient to negate confusing similarity between the domain names and the COSTCO mark. E.g., Costco Wholesale Membership Inc., Costco Membership Inc., Costco Wholesale Corporation v. Henry Chan, WIPO Case No. D2004-0218; Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Yong Li, WIPO Case No. D2004-0296; Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Jogn Dinnia y/ Hosting Media, WIPO Case No. D2007-1426.
4 Respondent's website, as shown in Complaint exhibits, is consistent with its present online appearance.
5 Complainants provide insufficient detail about their alleged communications to Respondent. Consequently, the Panel is not in a position to rule on Complainants' contention that Respondent's alleged failure to cease using or transfer to Complainants the disputed domain name following the alleged communications is further evidence of Respondent's bad faith.