Complainants are 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.
Respondents are Domains by Proxy, Inc. of Scottsdale, Arizona, United States and A & S Direct Inc. of New York, New York, United States.
The disputed domain names <costcowalkinbathtubs.com> and <costcowalkintubs.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2009. On December 14, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On December 15, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on December 17, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on December 19, 2009. The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on December 22, 2009.
On December 28, 2009, Complainants informed the Center that Complainants' attorney had reached a tentative agreement with a representative of Respondent A & S Direct, Inc., to effect the voluntary transfer of the disputed domain names. The Center responded to Complainants' communication, but no further correspondence from the parties or confirmation of that tentative agreement was received.
In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2010. Respondents did not submit any response. Accordingly, the Center notified Respondents' default on January 12, 2010.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on January 20, 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 including, inter alia, services related to the offering for sale of building materials plumbing supplies, with a first use date of November 27, 1984; United States Trademark Registration No. 3471209 in International Class 35 for the words COSTCO.COM in stylized lettering covering retail store and wholesale services via online electronic communication services including in the field of plumbing supplies, with a first use date of October 31, 2000; and United States Trademark Registration No. 3657105 for the word COSTCO in red stylized lettering in International Class 37 including residential repair and improvement services, with a first use date of December 31, 1999.
As a result of Complainants' multiple trademark registrations and continuous widespread use of marks over the past 25 years, the COSTCO trademark is well-known. 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 names were both registered on August 12, 2007, and presently route to commercial websites apparently run by a business named “A1 Walk In Bathtubs.com.” The websites offer the sale and home installation of a variety of walk-in bathtubs and roll-in showers. The content of the websites to which the disputed domain names route appears similar if not identical to the content appearing on the website found at “www.a1walkinbathtubs.com.”1
On their website at “www.costco.com,” Complainants offer sales of a variety of building materials and plumbing supplies, including bathtubs and showers, along with walk-in bathtubs.
“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 they provide a wide range of merchandise and services, including the provision of services by a carefully selected group of third parties, whose services may be secured through in-store and online arrangement. In 1999, Complainants aver, Costco began offering home remodeling, installation, and repair services.
Complainants note that in 2008, more than USD 2 billion in revenue was earned through Complainants' “www.costco.com” website and that Complainants also do business through several other country-specific websites (i.e., “www.costco.co.uk” and “www.costco.com.mx”). Complainants aver that bath tubs, showers and walk-in bathtubs are listed on their websites.
Complainants contend that the disputed domain names are confusingly similar to the COSTCO trademarks in which Complainants have rights, that Respondent has no rights or legitimate interests in the disputed domain names, and that Respondent registered and uses the disputed domain names in bad faith.
Complainants also aver that they communicated twice to Respondent requesting that Respondent cease use of the disputed domain names and transfer them to Complainants.2
On the basis of the above, Complainants seek transfer of the disputed domain names to Complainant Costco Wholesale Membership, Inc.
Respondents did not reply to Complainants' contentions.3
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 names are 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 names; and
(iii) the disputed domain names have been registered and are 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 names <costcowalkinbathtubs.com> and <costcowalkintubs.com> are not identical to Complainants' trademarks, the Panel agrees that Respondent's domain names are confusingly similar to Complainant Costco Wholesale Membership, Inc.'s well-known COSTCO trademark.
Panels disregard domain name suffixes 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 names in dispute incorporate Complainant Costco Wholesale Membership, Inc.'s famous COSTCO trademark in its entirety, adding only the descriptive words “walk in bath tubs” or “walk in tubs.” 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 names. 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. D2006-0629.4
The Panel agrees with Complainants that the addition of the descriptive terms instead increases the risk of confusion experienced by Internet users because the disputed domain name implies that Respondent is offering Complainants' goods and services, including sale and installation of walk-in bathtubs. 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).
The Panel finds therefore that the disputed domain names are 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 names.
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 the Complaint exhibits show, Respondent's websites appear to represent a business named “A1 Walk In Bathtubs.com.” The websites promote the products and services of that business.
None of the websites in question list owners or contacts for the business “A1 Walk In Bathtubs.com,” and the Whois listing for the domain name <a1walkinbathtubs.com> identifies only Respondent Domains by Proxy, Inc. The nature of the relationship between the business A1 Walk In Bathtubs.com and Respondent A & S Direct Inc. is therefore not clear. What is clear, however, is that Respondent appears to be making a direct commercial use of the disputed domain names. The Panel finds, therefore, that Respondent is not making a “non-commercial” or fair use of the disputed domain names.
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 names.
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 names demonstrates Respondent's lack of a legitimate non-commercial interest in, or fair use of, the domain names. 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 names.
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' well-known COSTCO mark, which Respondent deliberately adopted to create confusion and attract Internet users to its websites for commercial gain. Therefore, the Panel concludes that Respondent registered the disputed domain names 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 websites show that the disputed domain names are used to promote the business of A1 Walk In Bathtubs.com, one of Complainants' competitors. 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 provides further support for the Panel's finding of bad faith.5
The Panel concludes therefore that, in addition to having registered the disputed domain names in bad faith, Respondent is also using the domain names 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 names <costcowalkinbathtubs.com> and <costcowalkintubs.com> be transferred to Complainant Costco Wholesale Membership, Inc.
Jeffrey D. Steinhardt
Dated: February 1, 2010
1 The present content of the websites discussed above is consistent with Complainants' exhibits of the websites as they allegedly appeared on December 10, 2009. The Panel has undertaken limited research by visiting the website at “www.a1walkinbathtubs.com” and the web pages to which the disputed domain name routes. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
2 Presumably, Complainants communicated with Respondent Domains by Proxy, Inc. Complainants state that “Respondent” has not complied with the requests to transfer the disputed domain names, and that “Respondent” continues to use them. Complainants do not state the date of their requests, whether there is any proof that either Respondent actually received the communications, or whether one of the Respondents replied.
3 References below to “Respondent” denote Respondent A & S Direct Inc. unless stated otherwise.
4 Several previous UDRP panels, including this Panel, 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 Corporation, Costco Wholesale Membership, Inc., Price Costco International Inc. v. Scott Williams, WIPO Case No. D2009-1698; 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.
5 Complainants provide no 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 names following the alleged communications is further evidence of Respondent's bad faith.