WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Oody Kit
Case No. D2012-1297
1. The Parties
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.
Respondent is Oody Kit of Lom Kao, Petchabun, Thailand.
2. The Domain Name and Registrar
The disputed domain name <barbecuegrillcostco.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2012. On June 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 27, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 20, 2012.
The Center appointed Nasser Ali Khasawneh as sole panelist in this matter on July 30, 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
Complainant, namely Costco Wholesale Membership, Inc., holds many trademark registrations for marks incorporating the term “costco” in the United States and elsewhere, both as word and stylized marks, such as:
- United States trademark registration No. 1976242 in international class 42 for the word mark COSTCO, with a first use date of November 27, 1984;
- United States trademark registration No. 2440636 in international class 35 for the word “costco.com”, covering retail store and wholesale services via online electronic communication services, with a first use date of November 4, 1998; and
- United States trademark registration No. 2481924 for the word “costco" in red stylized lettering in international class 35 including retail and wholesale store services and catalog services via online electronic communications or other media featuring, with a first use in commerce date of May 20, 1997.
As a result of Complainants’ multiple trademark registrations and continuous widespread use of marks over the past 27 years, the COSTCO trademark is famous. See, e.g., Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Almantas Kakareka and Hostmaster Oneandone, 1&1 Internet, Inc., WIPO Case No. D2007-1833.
5. Parties’ Contentions
Complainants aver that:
“Costco is a recognized world leader in warehouse club merchandizing and related services. Costco has operated membership warehouse stores under the COSTCO trademark and trade name since 1983. Costco currently operates over 600 warehouse stores worldwide, including 435 COSTCO warehouse stores in the United States and Puerto Rico and 167 in Australia, Canada, Japan, Korea, Mexico, Taiwan, and the U.K. Costco has more than 65 million authorized cardholders worldwide and more than 42 million authorized cardholders in the United States. Costco is one of the largest and best-known retailers in the United States, with USD 87 billion in sales in fiscal year 2011. Costco’s stock has been publicly traded since 1985. Costco is currently the twenty-fifth largest company in the Fortune 500, the third largest retailer in the United States and the seventh largest retailer in the world. As a result of its size and notoriety, Costco has been the subject of regular news and feature coverage in all types of media. The COSTCO trademark has become famous for the sale of brand name and high quality private label merchandise at low prices in no‐frills warehouse‐style stores.”
Complainants attribute nearly USD 2 billion of their 2010 revenues to sales through their “www.costco.com” website.
Complainants contend that the disputed domain name is confusingly similar to the COSTCO trademarks in which Complainants have rights, that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent registered and uses the disputed domain name in bad faith.
On the basis of the above, Complainants seek transfer of the disputed domain name to Complainant Costco Wholesale Membership, Inc.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
A. Notification of Proceedings to Respondent
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration or acquisition in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center informed Respondent of these proceedings by courier notification. The Center used the address listed in the WhoIs record for the disputed domain name, but the courier company indicated that the notification was not deliverable because Respondent had moved from that address. The Center also notified Respondent by using an email address provided by the Registrar in its verification response to the Center. However, that address returned fatal delivery errors.
The Panel is satisfied that by sending communications to the contacts made available through the Registrar, and those provided by the registrant to the Registrar, as listed in the public WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent.
B. Substance of the Complaint and Applicable Standards
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainants must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) 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.
Complainants must establish these elements even if Respondent does not submit a response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
C. Identical or Confusingly Similar
Although the disputed domain name is not identical to Complainants’ trademarks, the Panel agrees that disputed domain name is confusingly similar to Complainant Costco Wholesale Membership, Inc.’s famous COSTCO trademark.
Panels may disregard the generic top-level domain (gTLD) suffix “.com” in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
The disputed domain name adopts Complainant Costco Wholesale Membership, Inc.’s famous COSTCO trademark in its entirety, adding only the descriptive words “barbecue” and “grill” in addition to the gTLD suffix “.com.” The Panel finds that Respondent’s addition of the descriptive terms does not negate the confusion created by Respondent’s complete inclusion of the COSTCO trademark in the disputed domain name. See, e.g., Sanofi-aventis, Sanofi-aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.2
The Panel agrees with Complainants that the addition of the descriptive terms “barbecue grill” instead increases the risk of confusion experienced by Internet users because Complainants sell a wide variety of barbecue-related products. See, e.g., bwin Interactive Entertainment AG v. Andrei Gladchih, WIPO Case No. D2009-0167 (citing ACCOR Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark”)).
The Panel finds therefore that the disputed domain name is confusingly similar to the registered trademarks of Complainant Costco Wholesale Membership, Inc. and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
D. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i-iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent files no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
As shown in exhibits to the Complaint, Respondent’s website promotes products through linking to the third-party “www.amazon.com” website. The offering for sale of products is itself commercial; and the diversion of traffic to “www.amazon.com” also demonstrates that Respondent is using the COSTCO mark for commercial purposes since, as a participant in the Amazon Services LLC Associates Program, traffic referred through Respondent’s website generates ad revenues from Amazon to Respondent. See also The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit … in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd, WIPO Case No. D2006-1079.
In the absence of a Response, the Panel accepts as true Complainants’ summary allegations that Respondent has no authorization or license to use Complainants’ trademarks. The Panel also accepts Complainants’ uncontested allegation that Respondent is not known by the disputed domain name.
The Panel agrees with Complainants that Respondent is seeking to attract Internet users through Complainants’ marks for Respondent’s own commercial purposes. The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the domain name. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. The Panel also finds that the Complaint makes out a prima facie case.
By not filing any response, Respondent has not rebutted Complainants’ prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its rights or legitimate interests in the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
E. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established, as elaborated below.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including the failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Examining the circumstances in this case, the Panel agrees with Complainants and finds that Respondent was undoubtedly aware of Complainants’ famous COSTCO mark, which Respondent deliberately adopted to create confusion and attract Internet users to its website for commercial gain. Therefore, the Panel concludes that Respondent registered the disputed domain name in bad faith. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163.
As for bad faith use, Complainants allege simply that the commercial use of the disputed domain name in a deceptive and confusing way under these circumstances establishes bad faith use. In addition to these circumstances, the Panel finds it particularly significant that Respondent’s website uses the disputed domain name to promote the products of Complainants’ competitors in the field of barbecues and cookware. This activity clearly evidences bad faith use by Respondent. Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088); DaimlerChrysler Corporation and DaimlerChrysler Service North America LLC v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070, (citing Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031).
Respondent’s failure to file a response to the Complaint and to fulfill its obligation to accurately update contact information with the Registrar provide further support for the Panel’s finding of bad faith.
The Panel concludes therefore that, in addition to having registered the disputed domain name in bad faith, Respondent is also using the domain name in bad faith.
Consequently, the Panel concludes that the requirements of paragraph 4(a) of the Policy are fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <barbecuegrillcostco.com> be transferred to Complainant Costco Wholesale Membership, Inc.
Nasser Ali Khasawneh
Date: August 3, 2012
1 The Panel has undertaken limited research by visiting the web pages to which the disputed domain name routes. See Paragraph 4.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Version 2.0. The present appearance of the webpages is consistent with their appearance in annexes to the Complaint.
2 Several UDRP panels have found 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. E.g., Costco Wholesale Corporation, Costco Wholesale Membership, Inc. v. First Class Fitness, WIPO Case No. D2009-1695; Costco Wholesale Membership Inc., Costco 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 Dinnia / Hosting Media, WIPO Case No. D2007-1426.