WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Vyacheslav Malevich
Case No. D2010-1143
1. The Parties
The Complainants are Costco Wholesale Corporation and Costco Wholesale Membership Inc. of Washington, United States of America, represented by Law Office of Mark J. Nielsen of United States of America.
The Respondent is Vyacheslav Malevich of Bobrujsk, Belarus.
2. The Domain Name and Registrar
The disputed domain name <the-costcopharmacy.com> is registered with Center of Ukrainian Internet Names (Ukrnames).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2010. On July 12, 2010, the Center transmitted by email to Ukrnames. a request for registrar verification in connection with the disputed domain name. On July 13, 2010, Ukrnames. 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 July 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2010. The Respondent did not submit any response. Accordingly, the Center announced the Respondent’s default on August 16, 2010.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on August 19, 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 Complainants are a company operating under the name “Costco Wholesale Corporation” and “Costco Wholesale Membership Inc.” with their registered office at 999 Lake Drive, Issaquah, Washington (98027), United States of America, (hereinafter "Costco").
Costco is an internationally well-known company set up in 1983 which is a warehouse club providing merchandizing and related services. The wide range of merchandise offered by Costco includes pharmaceutical products.
Costco has registered various trademarks, in particular it owns registrations of the COSTCO trademark in a variety of forms. Costco obtained its first United States trademark registration of COSTCO in 1985. Some of the COSTCO registrations cover Costco's pharmacy services, its retail and wholesale store services (including the sale of pharmaceuticals and personal care products) in the United States:
-COSTCO, filed on March 20, 1995, Registration No. 1,976,242
-COSTCO WHOLESALE & Design, filed on March 5, 1997, Registration No. 2,244,972
-COSTCO.COM, filed on January 18, 2000, Registration No. 2,440,636
-COSTCO (stylized), filed on March 24, 2000, Registration No. 2,481,924
Costco owns the <costco.com> domain name.
Price Costco International, Inc. ("PCII"), a wholly owned subsidiary of Costco, owns a Belarus registration for COSTCO that covers, inter alia, “pharmaceutical preparations" in Class 5 and "pharmacy services" in Class 42. This registration was issued on January 31, 2002 under No. 14,798.
Costco has learnt, that the disputed domain name <the-costcopharmacy.com> relating to a retail pharmacy web site under the name "Official Canadian Pharmacy" is actually operated by the Respondent, wherein prescription pharmaceuticals and related consumer products are offered for sale. The site appears to be allegedly legitimate, offers on-line payment by credit cards, and allegedly serves multilingual customer service (English, Italian, Spanish, French and German).
5. Parties’ Contentions
The Complainants claim that:
The disputed domain name <the-costcopharmacy.com> is confusingly similar to the trademark COSTCO owned by the Complainants. According to the Complainants, the disputed domain name owned by the Respondent is clearly identical to the word elements of its trademark COSTCO, given that it comprises of a specific name that is neither banal nor common, with no specific meaning in other languages and which is also well known on the pharmacy market.
Furthermore, in the Complainants’ view the Respondent has no rights or legitimate interests in the disputed domain name, as they are not using the disputed domain name for a bona fide offering of goods or services.
Regarding the registration and usage of the disputed domain name in bad faith, the Complainants held that Costco received its trademark registrations for the COSTCO trademark as early as 1985, while the Respondent registered the disputed domain name on June 21, 2010, which is many years after the COSTCO trademark had become famous. Because of the fame of the COSTCO trademark, the Respondent must have been aware of Costco's rights in the COSTCO trademark, at the time of registration of the disputed domain name. The Respondent's purpose in registering the disputed domain name was to profit from the diversion of Internet users to its own retail web site unrelated to Costco, which constitutes proof of bad faith (paragraph 4(b)(iv) of the Policy). Further, the Respondent's use of the disputed domain name is to “divert Internet traffic to a retail website in direct competition with Costco”, which proves the Respondent's intention to disrupt Costco's business by diverting potential Costco customers to the Respondent's retail website (paragraph 4(b)(iii) of the Policy). Finally, the Respondent benefits from confusing customers for its own commercial gain by trading Costco’s reputation and goodwill (paragraph 4(b)(iv) of the Policy).
The Complainants request the disputed domain name to be transferred to the Complainants.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainants have proven that the disputed domain name <the-costcopharmacy.com> is identical or confusing similar to the trademarks and service marks of the Complainants.
The confusing similarity of the disputed domain name <the-costcopharmacy.com> to the Complainants’ trademarks and service marks is apparent from a simple visual comparison. The disputed domain name is a replica of the Complainants’ name and marks. The phrase “costco” does not appear to have any dictionary meaning in any language. Even the Wikipedia encyclopedia states that “Costco, is the largest membership warehouse club chain in the United States. As of July 2009 it is the third largest retailer in the United States and the ninth largest in the world. As of October 2007, Costco is the largest retailer of fine wines in the world” (http://en.wikipedia.org/wiki/Costco), which clearly refers to the Complainants.
The disputed domain name <the-costcopharmacy.com> contains trademarks owned legally by the Complainants. As the Complainants rightly indicated, the addition of common terms to the COSTCO mark is not sufficient to negate the confusing similarity between the domain name and the mark, especially when the term added has a meaning directly related there to, as is the case with “pharmacy” (see Costco Wholesale Corporation and Costco Wholesale Membership Inc., v. Yezican Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638). This is sufficient to satisfy the requirement that the disputed domain name be confusingly similar to a mark in which the Complainants have rights.
The Panel therefore finds that the disputed domain name <the-costcopharmacy.com> is confusingly similar to the Complainants’ trademark and as a consequence, the Complaint brought by the Complainants meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
From the evidence keep the Panel it is clear that the Respondent has no rights or legitimate interests in disputed domain name. The name of the company run by the Respondent does not appear to be related to the trademark COSTCO, used in the disputed domain name. The Respondent has not been commonly known by the disputed domain name.
The Respondent is not the Complainants’ licensee in any respect, nor is the Respondent authorized to use the Complainants’ marks.
Nonetheless, the Respondent was also given the opportunity to contest the case against Complainants. However, the Respondent did not submit any evidence that would demonstrate that it has any rights to, or legitimate interests in the disputed domain name <the-costcopharmacy.com>.
The Panel therefore infers from the Respondent’s silence and the Complainants’ contentions that the Respondent has no serious arguments to prove its rights to, or legitimate interests in the disputed domain name <the-costcopharmacy.com>. The Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled.
C. Registered and Used in Bad Faith
The Complainants are the owners of the trademark comprising of the word COSTCO.
Paragraph 4(b) of the Policy sets out four circumstances, without limitation, that demonstrate bad faith including that “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainants’ 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”. Regarding the Respondent’s use of the disputed domain name it transpires that the disputed domain name is creating a likelihood of confusion with the Complainants’ mark, hence is being used in bad faith. The Respondent uses the disputed domain name in order to mislead its potential customers as to the identity of the seller, using the trademark and renown of the Complainants. The website at the <the-costcopharmacy.com> offers pharmacy products, likewise the Complainants’ scope of business.
In the absence of evidence to the contrary, and given the worldwide scope of business and reputation of the Complainants, the Panel finds that the Respondent knew of or should have known of the Complainants’ trademark and services at the time the Respondent registered the disputed domain name.
There is no evidence of the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Neither is there evidence that the Respondent is making a legitimate non-commercial or fair use of the domain name.
As a result, the Panel finds that the disputed domain name <the-costcopharmacy.com> was registered and is used by the Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be 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 <the-costcopharmacy.com> be transferred to the Complainants.
Dated: August 24, 2010