WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. I AM DMS
Case No. D2012-1264
1. The Parties
The Complainants are Costco Wholesale Membership Inc. and Costco Wholesale Corporation of, respectively, California and Washington, United States of America represented by Mark J. Nielsen, United States of America.
The Respondent is I AM DMS of Newbury Park, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <costco-members.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2012. On June 21, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On June 22, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on June 25, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on June 25, 2012, substituting I AM DMS as the Respondent in this proceeding.
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 the Respondent of the Complaint, and the proceedings commenced on June 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2012.
The Center appointed William F. Hamilton as the sole panelist in this matter on August 6, 2012. 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
"Costco” is a coined name. The Complainants obtained a registration of the mark COSTCO in 1985 and have continued to expand and currently maintain a large portfolio of COSTCO trademark registrations in the United States and many other countries. Through a wholly owned affiliate, the Respondents own hundred of trademark registrations.
The Complainants own the <costco.com> domain name and it is in active use. Complainants also operate a retail web site for Canadian shoppers at “www.costco.ca”. Complainants' operations in the United Kingdom, Mexico, Japan, Taiwan, Korea and Australia also operate Costco web sites at <costco.co.uk>; <costco.com.mx>; <costco.co.jp>; <costco.com.tw>; <costco.co.kr>; and <costco.com.au>; respectively.
The disputed domain name was registered on November 14, 2010 and there is evidence that it resolved to a website that copies the look, feel, and content of Complainant’s <costco.com> website and where products were offered for sale.
5. Parties’ Contentions
The Complainants contend that the disputed domain name is confusing similar to their COSTCO mark in that the disputed domain name entirely incorporates the COSTCO mark and only adds the suffix "members". Complainants contend that the appendage of such a prefix is insufficient to avoid the likelihood of confusion. Complainants assert that the Respondent has no rights of legitimate interests in the disputed domain name or the COSTCO mark, and that the disputed domain name was registered and is being used in bad faith to attract unsuspected Internet users.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to a complainant under the Policy it is necessary that the complainant prove, as required by paragraph 4(a) of the Policy, that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the COSTCO mark. The disputed domain name merely adds the term "members" as a suffix. The merely addition of such a suffix has long been held to be insufficient to avoid confusing similarity. Swarovski Aktiengesellschaft v. Transure Enterprise Ltd., WIPO Case No. D2009-1638 (citing Swarovski Aktiengesellschaft v. Kimi DeLuca, WIPO Case No. D2007-0252 “[T]he mere addition of a common or generic word such as ‘beads’ to a registered trademark has consistently been deemed insufficient to avoid confusing similarity between the domain name and the complainant's trademark”). EAuto, L.L.C.v. Triple S. Auto Parts, WIPO Case No. D2000-0047 (“When 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.”); Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (domain names that added the descriptive words “fashion” or “cosmetics” after the trademark were confusingly similar to the trademark).
Moreover, numerous UDRP panels have repeatedly found in cases involving the Complainants that confusion is likely when generic or general terms are added to the COSTCO mark. See e.g. Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Mr. Taxes.ca, WIPO Case No. D2011-1302 (September 18, 2011) (“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 Complainants have satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
On this record, the Panel finds that the Respondent lacks any rights or legitimate interests in the COSTCO mark or the disputed domain name. The disputed domain name resolves to a website clearly established for commercial purposes. The Complainants specifically disavow any commercial or other relationship with the Respondent that would entail any authorization from the Complainants for Respondent to use the COSTCO mark or register the disputed domain name. It does not appear that the Respondent has conducted any legitimate business under the disputed domain name or the COSTCO mark. The Respondent does not appear to be commonly known as “Costco” or a similar name. Moreover the Respondent has not come forth with any evidence of any rights or legitimate interests in the COSTCO mark or the disputed domain name. Swarovski Aktiengesellschaft v. James Johnson, WIPO Case No. D2012-0080; Swarovski Aktiengesellschaft v. Transure Enterprise Ltd., WIPO Case No. D2009-1638.
The Panel finds that the Complainants have satisfied 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 respondent 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on the respondent’s website or location;
The Panel has little difficulty in finding that the disputed domain name was registered and is being used in bad faith. At some point in time, the disputed domain name resolved to a website that copies the look, feel, and content of Complainants’ <costco.com> website and where products were offered for sale. In this Panel’s view, the Respondent cannot be ignorant of the worldwide COSTCO trademark when registering the disputed domain name. It appears that the Respondent’s website periodically resolves to different locations, including redirecting Internet traffic to the legitimate <costco.com> website. The Panel does not believe it necessary to ferret out the full details of the Respondent's scheme and intentions in registering and using the disputed domain name. It is sufficient to conclude that Respondent's registration and use of disputed domain name is not in good faith based upon the present circumstances. In short, the Panel concludes that Respondent registered and uses the disputed domain name as part of an artifice to divert, in all likelihood for commercial purposes, Internet users looking for Complainants.
The Panel finds that the Complainants have satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <costco-members.com> be transferred to the Complainants.
William F. Hamilton
Dated: August 21, 2012