WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. MrTaxes.ca
Case No. D2011-1302
1. The Parties
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 MrTaxes.ca of Langley, British Columbia, Canada.
2. The Domain Name and Registrar
The disputed domain name <costcotaxes.com> is registered with GoDaddy.com, Inc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2011. On July 29, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2011, 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.
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 August 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2011. The Respondent sent several email communications on August 7, 22, 26 and September 2, 2011 indicating its consent without prejudice to the remedy requested by the Complainants. It did not however submit a formal Response.
The Center appointed Fleur Hinton as the sole panelist in this matter on September 5, 2011. 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 Respondent sent an email communication on September 9, 2011 to the effect that the Respondent had “conceded to the Complainant’s wishes” and asking why a single member panel has been appointed under these circumstances”. However, the Panel has not been informed of any settlement agreement between the Parties and it is only in that event that these proceedings would be terminated under paragraph 17 of the Policy Rules.
4. Factual Background
The Complainants are Costco Wholesale Corporation and Costco Wholesale Membership, Inc. (collectively, the “Complainant”). The Complainant has operated a business under the trade mark COSTCO since 1983 and it now has a global reputation. It has more than 580 stores worldwide including 425 in the United States and Puerto Rico and 155 in other countries including Australia, Canada, Japan, Korea, Mexico, the United Kingdom and Taiwan. It has more than 66 million authorized cardholders worldwide, more than 40 million of whom are in the United States. It is one of the biggest retailers in the United States with its sales being in excess of USD 76 billion in the fiscal year 2010. It has become well-known for the sale of private branded goods at low prices in a no frills sales environment.
The Complainant offers a wide range of goods and services, including some financial services, under the COSTCO trade mark. Some of these services are not actually provided by Costco itself but by third parties who have been selected by Costco and are authorized by it to offer these services under the COSTCO trade mark. It is the owner of many trade mark registrations which include the element “costco” both in the United States and in other countries around the world. It is also the owner of the <costco.com> domain name.
In addition, the Complainant has a substantial reputation in Canada, where the Respondent is situated using the disputed domain name.
5. Parties’ Contentions
The Complainant argues that the disputed domain name <costcotaxes.com> is confusingly similar to its famous trade mark COSTCO. The generic word “taxes” does not act as a point of distinction between the Complainant’s trade mark and the disputed domain name. The Complainant refers to Pixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 in which the Panel found that, <quixtarmortgage.com> is legally identical to Complainant’s mark, QUIXTAR and that the addition of the generic terms “mortgage” and “.com” to the domain name in dispute has little, if any, effect on a determination of legal identity between the domain name and the mark. The panel’s decision in EAuto, L.L.C. v. Triple S. Auto Parts, WIPO Case No. D2000-0047 was that “[w]hen a domain name incorporates, in its entirety, a distinctive mark, that creates a sufficient similarity between the mark and the domain name to render it confusingly similar.” Similarly, the panel found in Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 that four domain names that added the descriptive words “fashion” or “cosmetics” after the complainant’s trade mark were confusingly similar to that trade mark.
In addition, the Complainant refers to a number of previous decisions in which panels have found specifically that the addition of common terms to the COSTCO trade mark does not suffice to prevent there from being confusing similarity between the domain names and the COSTCO trade mark. In the case of Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Yezican Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638 the panel found that “[a]dding the common English words “my” and “book” in the Domain Name [i.e., mycostcobook.com] does not avoid confusing similarity with the COSTCO mark.”). In the decision Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Henry Chan, WIPO Case No. D2004-0218 the panel found that, “[t]he domain names <costcofurniture.com> and <costcohome.com> are confusingly similar to [the COSTCO] mark in which Complainants have rights.” In Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Yong Li, WIPO Case No. D2004-0296 the panel found that, “[t]he Complainant’s trademark ‘COSTCO’ is embodied in the disputed domain name <costcotires.com> and the addition of the generic term such as ‘tires’ is descriptive and does not mitigate the phonetical and visual confusing similarity”. In Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Jogn Dinway/Hosting Media, WIPO Case No. D2007-1426 the panel found that, “the addition of such terms as ‘usa’ and ‘info’ does not mitigate the confusing similarity between the domain name in dispute [i.e., usacostco.info] and the COSTCO Trademarks”. In Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Almantas Kakareka and Hostmaster Oneandone, 1&1 Internet, Inc., WIPO Case No. D2007-1833 the panel found that “the addition of the word ‘feedback’ to Complainants’ COSTCO mark strongly suggests a web site for consumers to provide comments to the Costco company with respect to its goods and services and thus tends to increase rather than diminish the confusing similarity between the Domain Name and Complainants’ marks”. In Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Cindy Chau, WIPO Case No. D2008-1283 the panel found that, “[b]ecause the disputed domain name [i.e., costcogift.com] uses the mark in its entirety and merely adds the generic word ‘gift,’ the domain name is confusingly similar to the Complainant’s mark”. In Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Nathniel Ho/EDF RTD, WIPO Case No. D2009-0782 the panel found that, “[t]he <costco-drugs.com> domain name consists of Complainant’s well-known registered trademark, COSTCO and the common term, “drugs”, separated from “costco” by a hyphen, which has the effect of making “costco” more prominent. The addition of common terms such as “drugs” to the COSTCO trademark does not mitigate the confusing similarity between the domain name in dispute and Complainant’s COSTCO trademarks”. Therefore, taking into account the fact that the Complainant offers a wide range of financial services, the Complainant argues that the addition of descriptive financial words such as “taxes” exacerbates the confusing similarity between the disputed domain name and the Complainant’s trade mark.
The Complainant submits that the Respondent has no rights nor legitimate interests in the disputed domain name or in any domain name, trade mark or trade name incorporating or confusingly similar to the COSTCO trade mark. The Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services, does not own any trade mark registrations for the disputed domain name or any portion thereof, and has not been commonly known by the domain name or any portion of it. Despite that, the Respondent has registered the disputed domain name and uses it to direct Internet traffic to its web site. This action, submits the Complainant, indicates the intention to disrupt the Complainant’s business, deceive consumers, and to trade off the Complainant’s reputation by creating an unauthorized association between it and the COSTCO trade marks. In support of this the Complainant refers to the decision in Sanrio Company Ltd. and Sanrio Inc. v. Neric Lau, WIPO Case No. D2000-0172 in which the panel found that that, the “Respondent cannot be said to have legitimately chosen the SANRIOSURPRISES.COM domain name unless it was seeking to create an impression of an association with Complainants. Since there is no such authorized association, Respondent’s interests in the domain name cannot be said to be legitimate”.
The Complainant alleges that the Respondent has registered the disputed domain name in bad faith and is using it in bad faith, contrary to paragraph 4(b)(iii) of the Policy. In support of the alleged breach by the Respondent of the Policy, the Complainant relies on the fame of the COSTCO trade mark and the fact that it has been used extensively since the 1980s both in the United States and in Canada, where the Respondent is situated. The Complainant argues that the fact that the Complainant has many registrations for the COSTCO trade mark should result in a finding that the Respondent has constructive notice in the United States of the Complainant’s rights in the COSTCO trade mark. Such awareness of another’s rights in a trade mark or domain name at the time of registration is evidence of a registration in bad faith. In support of this, the Complainant refers to the panel decision in The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038 in which the panel found that prior knowledge of Complainant’s registered trade mark was a key factor in the panel’s finding of bad faith. The Complainant argues further that, in view of the very substantial use which the Complainant has made of the trade mark both in the United States and Canada, it is very likely that the Respondent had actual knowledge of the trade mark when it registered the domain name.
The Complainant argues that the disputed domain name is used in bad faith in that the Respondent uses the disputed domain name to divert Internet users looking for the Complainant’s website to a web site for its own commercial benefit. This causes deception and confusion to web browsers as well as damaging the Complainant’s business and reputation. It also provides an illicit commercial benefit to the Respondent by trading on the Complainant’s reputation and goodwill. This clearly establishes bad faith use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.
In view of the uniqueness and fame of the COSTCO trade mark and the Respondent’s transparent intention to register and use a domain name based on the COSTCO trade mark purely for its own commercial gain, the Respondent’s use of the Domain Name is inescapably in bad faith.
The Respondent did not submit a formal response.
6. Discussion and Findings
In order to be successful in having a domain name transferred or cancelled, the Complainant must satisfy the Panel that all three elements of the UDRP Policy have been satisfied, that is, that:
i. the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
ii. the 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.
A. Identical or Confusingly Similar
Very extensive use has been made by the Complainant of the COSTCO trade mark since its business commenced in 1983. The evidence lodged by the Complainant shows that the trade mark has been used in the United States and in various other countries including that in which the Respondent is located, that is, Canada. The disputed domain name encompasses the Complainant’s trade mark in its entirety. There are many UDRP decisions in which it has been held that descriptive words such as “taxes” do not suffice to distinguish a disputed domain name from the complainant’s trade mark. In particular, as set out above, there are many such decisions about the COSTCO trade mark itself. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
B. Rights or Legitimate Interests
In a case where the trade mark forming the basis of the complaint is a well-known trade mark, it is particularly difficult for a respondent to claim that it was not aware of it. In this case, the Respondent has not attempted to do so. He did not file a proper Response. Whilst the onus of proof is on the Complainant to establish its case under the three criteria set out in the UDRP Policy referred to above, the consensus view expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 is that, once the Complainant has established a prima facie case in relation to this element, the burden of production shifts to the Respondent. If the Respondent fails to produce either appropriate allegations or evidence, the Complainant is found to have established its case.
The Complainant has not authorized this use by the Respondent and the Respondent has not used the trade mark in any legitimate way. Therefore the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant has argued that the Respondent should be found to have constructive notice of the COSTCO trade mark because of the large number of trade mark registrations which it owns. It is not appropriate to make a finding of constructive notice in this forum, particularly as the Respondent is in Canada and not in the United States. However, the trade mark COSTCO has been used by the Complainant very extensively for a period well in excess of 20 years. It has also been used widely in Canada. The Complainant operates 14 stores in British Columbia and opened one in Langley in British Columbia, where the Respondent is located, in 2005. It is difficult to see how the Respondent could fail to have been aware of that use and the Panel finds that its registration is contrary to paragraph 4(b)(iii) of the Policy in that it was obtained primarily to disrupt the Complainant’s business activities .
The use by the Respondent of the disputed domain name causes web browsers who enter the disputed domain name to be directed to the Respondent’s own website set up to attract business to the Respondent’s own business contrary to paragraph 4(b)(iv) of the Policy. The Complainant has referred to the case of General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher, WIPO Case No. D2000-0377 in which the panel found that, “[t]here is no conceivable good faith use to which Respondent, who has no right or legitimate interest in the domain name at issue, could put the [wwwge.com] domain name at issue, which is identical or confusingly similar to the famous ‘GE’ mark”. The Panel finds that that decision is applicable here. The Respondent’s use and registration of the disputed domain name is in bad faith.
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 <costcotaxes.com> be transferred to the Complainant Costco Wholesale Membership, Inc., as requested by the Complainant.
Dated: September 18, 2011