The Complainants are Costco Wholesale Corporation and Costco Wholesale Membership, Inc. of Issaquah, Washington, United States of America, represented by Law Office of Mark J. Nielsen, United States of America.
The Respondent is Windsurfing Direct Limited of Kingston, Ontario, Canada.
The disputed domain names <costcostanduppaddleboards.com>, <costcosurfboards.com>, <costcosurf.com> and <costcosurfdirect.com> are registered with Wild West Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2010. On April 6, 2010, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain names. On April 6, 2010, Wild West Domains, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant of the disputed domain names and providing contact details. In response to the Center's request of April 7, 2010, the Complainants on the same day confirmed that the Complaint, including annexes, had been sent to the Respondent. 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 the Respondent of the Complaint, and the proceedings commenced on April 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 29, 2010.
The Center appointed David Stone as the sole panelist in this matter on May 5, 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.
The Complainants have operated under the Costco name since 1983. The Complainants sell a wide range of merchandise, including, amongst others, a variety of recreational watercraft and marine products, both through their stores and online. In 1985, the Complainants obtained the first United States trade mark registration for COSTCO and since then, the Complainants and related entities have expanded and now maintain a large portfolio of COSTCO trade mark registrations in the United States and many other countries. The Complainants currently operate 77 stores in Canada and opened their first store in Ontario in 1990. They have a store in Kingston.
The disputed domain names were registered on June 28, 2008. Each of the disputed domain names currently resolves to a retail web site at “www.paddleboarddirect.com”, which offers for sale a broad range of stand up paddle boards and accessories.
The Complainants allege that the disputed domain names are confusingly similar to the Complainants' COSTCO trade marks, because they consist of the Complainants' well-known registered trade mark COSTCO together with the common terms “stand up paddle boards”, “surfboards”, “surf” and “surf direct”.
The Complainants submit that the Respondent has no legitimate interest in the disputed domain names, has not used the disputed domain names in connection with a bona fide offering of goods or services, owns no trade mark registrations for the disputed domain names or any portion thereof, and has not been commonly known by the disputed domain names or any portion thereof. Further, the Complainants have not licensed or otherwise permitted the Respondent to use their marks or the disputed domain names.
The Complainants contend that the Respondent registered the disputed domain names many years after the COSTCO trade mark had become famous. Because of the notoriety of the COSTCO trade mark, the Respondent, say the Complainants, must have been aware of the Complainants' rights in the COSTCO trade mark at the time the disputed domain names were registered. Further, the Respondent's registration of the disputed domain names was done in bad faith because it had no legitimate right or business interest in any COSTCO-formative domain name.
In addition, the Respondent continues to use the disputed domain names to divert Internet users looking for the Complainants to a web site for its own commercial benefit. The Respondent's use of the disputed domain names to divert Internet users to its web site also unfairly associates the famous COSTCO trade mark with its business operations at “www.paddleboarddirect.com” and thereby deceives Internet users as to an implicit association between the Complainants and the Respondent. The Complainants say that the Respondent's use of the disputed domain names confuses and deceives Internet users, damages the Complainants' business and reputation, and provides an illicit commercial benefit to the Respondent by trading on the Complainants' reputation and goodwill. The Respondent does not use the disputed domain names in any legitimate, good faith manner, and there is no legitimate, good faith use of the disputed domain names possible by the Respondent.
The Respondent did not reply to the Complainants' contentions.
Paragraph 4(a) of the Policy requires the Complainants to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights;
(ii) the 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.
Previous UDRP panels have held that adding common terms to a registered trade mark and registering the result as a domain name does not mitigate the confusing similarity between the domain name and the mark (EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 and Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022).
Indeed, previous panel decisions have applied this reasoning to trade marks registered by the Complainants: Costco Wholesale Corporation and Costco Wholesale Membership Inc. v. Yezican Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638; Costco Wholesale 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 Dinway/Hosting Media, WIPO Case No. D2007-1426; Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Almantas Kakareka and Hostmaster Oneandone, 1&1 Internet, Inc., WIPO Case No. D2007-1833; Costco Wholesale Corporation, Costco Wholesale Membership, Inc. v. Cindy Chau, WIPO Case No. D2008-1283 and Costco Wholesale Corporation and Costco Wholesale Membership Inc. v. Nathniel Ho / EDF RTD, WIPO Case No. D2009-0782.
This Panel therefore finds that the addition within the disputed domain names of the common terms “stand up paddle boards”, “surfboards”, “surf” and “surf direct” do not mitigate the confusing similarity of the domain names to the Complainants' trade mark and other rights in COSTCO. Accordingly the Panel finds that the Complainants have established element 4(a)(i) of the Policy.
Guidance in relation to establishing rights or legitimate interests is provided in paragraph 4(c) of the Policy. Three circumstances are identified: (i) bona fide prior use; (ii) common association with the domain name and (iii) legitimate non-commercial use. The Complainants have made a prima facie case that the first two circumstances do not apply. The Respondent did not exercise its right to respond in these proceedings, and, thus, has failed to rebut the prima facie case made by the Complainants (or advance any other argument supporting rights or legitimate interests). The Panel finds that the third circumstance does not apply, as the disputed domain names have clearly been used commercially.
Accordingly the Panel finds that the Complainants have established element 4(a)(ii) of the Policy.
Guidance regarding establishing bad faith is provided in paragraph 4(b) of the Policy. Four (non-exhaustive) circumstances are identified where the respondent's intention in registering a domain name may provide evidence of bad faith. These intentions may be summarised as follows: (i) to sell the domain name to the rights holder at a profit; (ii) to prevent the rights holder registering a domain name; (iii) to disrupt the business of a competitor; and (iv) to divert Internet traffic. The Complainants refer primarily to the latter two circumstances. The Respondent has not submitted any counter-arguments.
Given the fame of the COSTCO mark, including in Canada where the Respondent resides, the Panel finds that in all likelihood the Respondent would have been aware of the Complainants' trade marks at the time it registered the disputed domain names. The Panel therefore finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainants' marks.
Accordingly the Panel finds that the Complainants have established element 4(a)(iii) of the Policy.
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 <costcostanduppaddleboards.com>, <costcosurfboards.com>, <costcosurf.com> and <costcosurfdirect.com> be transferred as requested to the Complainant Costco Wholesale Membership, Inc.
Dated: May 14, 2010