WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION>
Costco Wholesale Corporation, Costco Wholesale Membership, Inc. v. Noah George
Case No. D2011-0191
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 Noah George of Hawthorne, New Jersey, United States of America (“United States” or “U.S.”).
2. The Domain Name and Registrar
The disputed domain name <costcotiresonline.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2011. On February 1, 2011, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, Dotster, Inc. 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 February 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2011.
The Center appointed R. Eric Gaum as the sole panelist in this matter on March 7, 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.
4. Factual Background
The Complainants in this administrative proceeding are Costco Wholesale Membership Inc. and Costco Wholesale Corporation (“Costco” or the “Complainant”). For the purposes of this dispute the interests of the Complainants are co-extensive. Costco obtained its first U.S. trademark registration of COSTCO in 1985 and has continued to expand and maintain a large portfolio of COSTCO trademark registrations in the United States and many other countries. Costco has received numerous trademark registrations from the United States Patent and Trademark Office for various marks that include the word COSTCO.
Among the many COSTCO registrations, the following are some of the registrations that cover Costco’s retail and wholesale store services in the United States: COSTCO, filed March 20, 1995, Registration No. 1,954,925; COSTCO WHOLESALE & Design, filed March 5, 1997, Registration No. 2,250,149; and COSTCO (stylized), filed March 24, 2000, Registration No. 2,459,542.
Costco owns the <costco.com> domain name and maintains an active presence on the Internet using this domain name as its URL. Costco also operates a retail web site for Canadian shoppers at “www.costco.ca”. Costco’s operations in the United Kingdom, Mexico, Japan, Taiwan, Province of China, the Republic of Korea and Australia also operate Costco web sites at “www.costco.co.uk”, “www.costco.com.mx”, “www.costco.co.jp”, “www.costco.com.tw”, “www.costco.co.kr”, and “www.costco.com.au”, respectively.
According to a WhoIs database search through Network Solutions, the Respondent in this administrative proceeding is Noah George, and the registrar is Dotster, Inc.
5. Parties’ Contentions
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 580 warehouse stores worldwide, including over 400 Costco warehouse stores in the United States and Puerto Rico and over 150 in Australia, Canada, Japan, the Republic of Korea, Mexico, Taiwan, Province of China, and the United Kingdom. Costco has more than 60 million authorized cardholders worldwide and more than 40 million authorized cardholders in the United States. Costco is one of the largest and best-known retailers in the United States, with USD 76 billion in sales in fiscal year 2010. 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 eighth 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.
“Costco” is a coined name developed by the founders of Costco, and Costco is the only legitimate owner of COSTCO trademarks anywhere in the world. Costco owns trademark registrations for the famous COSTCO trademark in a variety of forms, including COSTCO (in stylized letters), COSTCO WHOLESALE & Design, and COSTCO.COM, for a wide variety of services and for various printed publications and other materials. Costco obtained its first U.S. trademark registration of COSTCO in 1985 and has continued to expand and maintain a large portfolio of COSTCO trademark registrations in the United States and many other countries. Costco has received numerous trademark registrations from the United States Patent and Trademark Office for various marks that include the word COSTCO. Through a wholly owned affiliate, Costco also owns hundreds of trademark registrations for COSTCO marks in other countries around the world.
The sale and installation of vehicle tires is a significant and very important part of Costco’s business. Costco is one of the top Bridgestone and Michelin dealers in the U.S., and its sales of tires run in the hundreds of millions of dollars annually. Virtually all of its 425 warehouse stores in the U.S. sell tires and offer tire installation and repair services. Tires are also available for purchase online through the “www.costco.com” web site.
Costco offers a wide variety of goods and services through its “www.costco.com” web site. In fiscal year 2010, Costco’s sales through its “www.costco.com” website was nearly $2 billion. Many Costco shoppers use the Internet to find and purchase Costco’s goods and services, including vehicle tires.
Costco has learned that the <costcotiresonline.com> domain name currently resolves to a “link farm” web site apparently operated by the Respondent. The Respondent’s “link farm” site features prominent links to several of Costco’s competitors in the tire business. By clicking on any of the “Related Searches” listed on the left side of the Respondent’s site, users are offered another menu of sponsored links more specifically tailored to the topic chosen.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, a “Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, [the] Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(iii) that the Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as are appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (January 20, 2003). As a result of the Respondent’s default, the Panel may even accept as true all of the allegations of the Complaint. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000).
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a number of U.S. trademark registrations for the COSTCO trademark since 1985 with use claimed back to 1983 (see, e.g., U.S. Registration Nos. 1,318,685). Based on the registered trademarks and the Complainant’s continuous use of the marks, the Complainant clearly has rights in the marks.
It is well established that a domain name is confusingly similar to a trademark when the domain name includes the entire mark, even if one or more generic terms are added. See, e.g., The American Automobile Association, Inc.. v. Rami Smair, WIPO Case No. D2009-0294 (April 29, 2009) (<aaa-insurance.info>, <insurance-aaa.com>, and <insurance-aaa.info> domains names confusingly similar to AAA marks for insurance services); American Automobile Association, Inc. v. Nevis Domains LLC., WIPO Case No. D2006-0489 (June 13, 2006) (<aaaautomotive.com> domain name confusingly similar to the AAA marks for automotive products and services).
Moreover, although the risk of consumer confusion exists any time a mark is combined with a generic or descriptive term in a domain name, that risk is particularly great where, as here, the terms describe a central aspect of Complainant’s business. Such a combination “in all likelihood heightens the confusion.” The American Automobile Association, Inc. v. PSI, WIPO Case No. D2008-1931 (February 6, 2009) (<aaaautorewards.com> confusingly similar to AAA marks for automotive services); see also The American Automobile Association Inc. v. AAA-Vacationsunlimeted, WIPO Case No. D2009-0373 (May 3, 2009) (finding the confusing similarity to be “especially acute” where the generic term added to the complainant’s mark relates to the complainant’s services). Here, adding the generic terms “tires” and “online” will likely heighten consumer confusion because Costco is well-known for selling tires and doing so online through its various websites.
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 that mark. See Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Yezican Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638 (June 20, 2007) (“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 (May 18, 2004) (“[T]he domain names <costcofurniture.com> and <costcohome.com> are confusingly similar to [the COSTCO] mark in which Complainants have rights.”); Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Yong Li, WIPO Case No. D2004-0296 (June 9, 2004) (“[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.”); Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Jogn Dinway/Hosting Media, WIPO Case No. D2007-1426 (November 23, 2007) (“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”).
The Panel finds that the domain name is confusingly similar to the COSTCO trademarks, and that the Complainant has established it has rights in the trademarks, pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii).
There is no evidence in the record that would indicate that the Respondent has any rights or legitimate interests in respect of any of the disputed domain name. Presumably, the Respondent would have provided a response to the Complaint had it had any rights or legitimate interests in the disputed domain name.
There is no evidence that the Respondent is commonly known by the domain name. See Policy at paragraph 4(c)(ii). The Respondent did not register the domain name under a name containing the COSTCO mark; rather, the domain name is registered to Noah George. This names bear no relation to the COSTCO marks, confirming that the Respondent does not have rights or a legitimate interest in the disputed domain name. American Automobile Association, Inc. v. Nevis Domains LLC supra.
Nor is the Respondent using the disputed domain name in connection with a bona fide offering of goods and services; or for a legitimate noncommercial or fair use. See Policy at paragraph 4(c)(i), (iii). Rather, the Respondent is using the domain name as a “link farm” website that features prominent links to several of Costco’s competitors in the tire business. By clicking on any of the “Related Searches” listed on the Respondent’s site, users are offered another menu of sponsored links more specifically tailored to the topic chosen. It appears that the Respondent is operating the site in order to generate click through revenue. A pay-per-click advertising website constitutes “neither bona fide offerings of goods or services under [UDRP] Policy paragraph 4(c)(i) nor legitimate noncommercial or fair uses under Policy 4(c)(iii).” The American Automobile. Association, Inc. v. Jack Holder, NAF Claim No. FA1227171 (December 12, 2008).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, which are set forth in paragraph 4(b) of the Policy, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.
The Respondent’s use of the disputed domain name as the URL and name of a “link farm” web site constitutes bad faith use of the domain name. Numerous UDRP panels have concluded that “operation of commercial link services, designed to lure Internet users and divert them to other commercial sites by use of domain names identical or similar to complainant’s trademark” are not a legitimate use of a domain name and constitute bad faith registration and use under paragraph 4(b) of the Policy. See MBI, Inc. v. Moniker Privacy Services/Nevis Domain Names LLC, WIPO Case No. D2006-0550 (July 2, 2006), citing Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584 (September 7, 2003); Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi, WIPO Case No. D2004-0984 (February 22, 2005); Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795 (November 29, 2004); Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Traverito Traverito, WIPO Case No. D2007-0523 (June 25, 2007); and Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Services LLC, WIPO Case No. D2007-0524 (June 6, 2007).
The Respondent does not use the domain name in any legitimate, good faith manner, and there is no legitimate, good faith use of the domain name possible by the Respondent. See General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher, WIPO Case No. D2000-0377 (July 15, 2000) (“There 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.”).
Accordingly, the Panel finds that the Complainant has established that the Respondent registered and used the disputed domain names in bad faith, pursuant to paragraphs 4(b)(iii) and 4(b)(iv) 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 name <costcotiresonline.com> be transferred as requested in the Complaint to the Complainant, Costco Wholesale Membership, Inc.
R. Eric Gaum
Dated: March 28, 2011