WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Costco Wholesale Corporation, Costco Wholesale Membership Inc. v. Wonjun Lee
Case No. D2010-0987
1. The Parties
The Complainants are Costco Wholesale Corporation and Costco Wholesale Membership Inc. of Issaquah, Washington, United States of America (collectively, “Complainant” or “Costco”), represented by Law Office of Mark J. Nielsen, United States.
The Respondent is Wonjun Lee of Los Angeles, California, United States.
2. The Domain Names and Registrar
The disputed domain names <thecostco.info>, <costcoonline.info>, <mycostco.info>, <costcostore.info>, <costconow.info>, <newcostco.info>, and <bestcostco.info> (the “Domain Names”) are registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2010. On June 16, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 17, 2010, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2010.
The Center appointed Dana Haviland as the sole panelist in this matter on July 28, 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.
4. Factual Background
The Complainant has furnished evidence of its trademark registrations for the COSTCO trademark (the “COSTCO Mark”), dating back to 1985. The Complainant operates over 500 membership warehouse stores worldwide and an online website, offering many products for sale, including vehicle wheels, under its COSTCO Mark,
The Respondent registered the Domain Names on July 17, 2009. Six of the seven Domain Names resolve to a website offering vehicle wheels for sale in competition with the Complainant. The seventh, <bestcostco.info>, does not resolve to the competing website or any other active website.
5. Parties’ Contentions
The Complainant asserts that the Domain Names are identical or confusingly similar to a registered trademark in which it has rights, that the Respondent has no rights or legitimate interests in the Domain Names, and that the Respondent registered and used the Domain Names in bad faith. The Complainant requests transfer of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent’s domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The Complainant has provided evidence of its prior use and numerous registrations of the COSTCO Mark under which it has operated its warehouse merchandising business for many years before the registration of the Domain Names. Each of the Domain Names incorporates the Complainant’s COSTCO Mark in its entirety, adding only the “.info” suffix and one of the following generic terms: “the”, “online”, “my”, “store”, “now”, “new”, and “best”.
The specific top level of a domain name such as “.com,” “.net” or “.info” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Iconcard S.p.A. v. Linecom, WIPO Case No. D2005-1115.
Many UDRP panelists have held that the inclusion of an additional descriptive or generic word in a domain name incorporating a well-known trademark in its entirety does not negate the confusing similarity of the domain name to that trademark. See Société AIR FRANCE v. Angelika Freitag, Angelika Freitag Company, WIPO Case No. D2008-1219; Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey, WIPO Case No. D2007-0555; Nikon Inc. and Nikon Corporation v. Photocom Korea, WIPO Case No. D2000-1338; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464; Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627.
In addition, a number of previous UDRP panels 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. See, e.g., Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Yezican Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638 (“Adding the common English words “my” and “book” in the Domain Name [i.e., mycostcobook.com] does not avoid confusing similarity with the COSTCO mark.”); 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., Costco Wholesale Corporation v. Almantas Kakareka and Hostmaster Oneandone, 1&1 Internet, Inc., WIPO Case No. D2007-1833; Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Cindy Chau, WIPO Case No. D2008-1283; Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Nathniel Ho/EDF RTD, WIPO Case No. D2009-0782; Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Windsurfing Direct Limited, WIPO Case No. D2010-0505.
For these reasons, the Panel finds that each of the Domain Names is confusingly similar to the Complainant’s COSTCO Mark in which the Complainant has prior rights, and that the Complainant has thus established the first element of its claim, pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, the respondent used, or made 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has not acquired trademark or service mark rights; or
(iii) the respondent is 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 Complainant asserts that it has not licensed or otherwise permitted the Respondent to use its COSTCO Mark, in the Domain Names or for any other purpose. The Complainant further alleges that the Respondent has no legitimate interest in any domain name, trademark or trade name incorporating or confusingly similar to the COSTCO trademark, has not used the Domain Names in connection with a bona fide offering of goods or services, owns no trademark registrations for the Domain Names or any portion thereof, and has not been commonly known by the Domain Names or any portion thereof.
As noted in CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201, it is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name in dispute. Thus, “where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is ‘uniquely within the knowledge and control of the respondent’“. Diebold, Incorporated v. Paul Terwilliger, WIPO Case No. D2003-0416. The Respondent has not responded to the Complaint to assert any right or legitimate interest in the Domain Names or present any evidence in opposition to the Complainant’s assertions.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names, and that the Complainant has therefore satisfied the second element of its claim in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4 (a)(iii) above:
(i) circumstances indicating that the registrant has registered or 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location.
Six of the seven Domain Names, all except <bestcostco.info>, resolve to the web site at “www.audiocityusa.com”, which appears to be a California-based online store devoted exclusively to the sales of vehicle wheels. The Complainant has submitted evidence of its own online sales of vehicle wheels at its website “www.costco.com”. It thus appears that in registering and using these six Domain Names to divert vehicle wheel customers to a website offering products in competition with those of the Complainant, the Respondent has registered and used these six Domain Names in bad faith, pursuant to paragraph 4(b)(iv) of the Policy.
Although the seventh Domain Name, <bestcostco.info>, does not currently function as a relay site diverting Internet users to the Audio City USA web site or any other active web site, this Domain Name is not thereby exempt from a finding of bad faith. The Respondent has a clear pattern of registering and using in bad faith domain names based on the COSTCO Mark, and thus an inference may be drawn that this Domain Name was also registered in bad faith and that the Respondent may well actively use the <bestcostco.info> Domain Name to divert Internet users to a competing commercial web site in future. Although, as a general rule, passive holding of a domain name, without more, does not constitute bad faith use, where there are additional circumstances indicating bad faith, as in this Respondent’s pattern of bad faith registration and use of other domain names incorporating the Complainant’s COSTCO Mark, even passive holding may constitute bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000); Wildfire, Inc. v. Namebase, WIPO Case No. D2007-1611; TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361.
The Panel therefore finds that the Respondent registered and used each of the seven Domain Names in bad faith, pursuant to paragraph 4(b)(iv) of the Policy, and that the Complainant has satisfied the third element of its claim, under paragraph 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 <bestcostco.info>, <costconow.info>, <costcoonline.info>, <costcostore.info>, <mycostco.info>, <newcostco.info>, <thecostco.info> be transferred to the Complainant.
Dated: August 11, 2010