WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Costco Wholesale Corporation v. Anthony Jansen
Case No. D2013-1672
1. The Parties
The Complainant is Costco Wholesale Corporation of Issaquah, Washington, United States of America, represented by Law Office of Mark J. Nielsen, United States of America (“USA”).
The Respondent is Anthony Jansen of Bloemfontein, Free State, South Africa.
2. The Domain Name and Registrar
The disputed domain name <kirklandsignaturedogfood.com> (the “Domain Name”) 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 September 24, 2013. On September 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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.
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 September 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2013. The Response was filed with the Center on October 20, 2013.
The Respondent appeared to be willing to settle the dispute with the Complainant according to the filed Response. Accordingly, the Center invited the Complainant to confirm if it would like to suspend the proceeding to explore the possible settlement with the Respondent on October 21, 2013. On the same day, the Complainant declined such invitation.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on October 30, 2013. 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 Complainant is a publicly trading entity in the USA, and is well-known worldwide for operating warehouse-style stores which retail to trade and individual member customers; the Complainant also offers a wide range of goods for sale through its websites, examples being “www.costco.com” and “www.costco.co.uk”. The Complainant currently operates over 600 warehouse stores worldwide, is currently the twenty-second largest company in the Fortune 500 (which has apparently changed since the Complainant submitted its written Complaint, as it was stated that the Complainant is twenty-fourth largest), and is one of the overall largest retailers in the world.
In 1995, the Complainant adopted KIRKLAND SIGNATURE as a trademark and first registered this mark in the USA in 1997, although the Complainant has built an extensive portfolio of KIRKLAND SIGNATURE marks worldwide since then. The KIRKLAND SIGNATURE trademark is used by the Complainant on a range of merchandise, from alcoholic beverages to personal care products, and was first used in connection with pet food products in July 1996.
The Complainant has provided in its Complaint a complete list of active trademark registrations for its KIRKLAND SIGNATURE trademark registrations in the USA, and it is apparent from the United States Patent and Trademark Office (USPTO) trademark register accessible at “www.tess.uspto.gov” that the Complainant has held registrations in various KIRKLAND SIGNATURE marks since 1997.
The Domain Name was registered on March 30, 2013.
5. Parties’ Contentions
The Complainant contends that:
(i) the Domain Name is confusingly similar to the Complainant’s KIRKLAND SIGNATURE trademark and leads to a risk of confusion between the Domain Name and the KIRKLAND SIGNATURE trademark;
(ii) the Respondent has no rights or legitimate interests in any domain name, trademark or other trade name which incorporates or is confusingly similar to the KIRKLAND SIGNATURE trademark, as it has not used the Domain Name in connection with a bona fide offering of goods and services, it does not own any trademark registrations for the Domain Name or part thereof, and furthermore it is not commonly being known by the Domain Name or part thereof; and
(iii) the Respondent has registered and is using the Domain Name in bad faith.
The Response to the Complaint explains the circumstances under which the Respondent has come to own the Domain Name, namely that the Respondent paid USD 497 to a web-design and marketing service (which is not named in the Response) to effectively create a website for him and provide services such as niche and keyword selection, content creation, site development and SEO (i.e. search engine optimization) promotion.
The Respondent claims that the service provider suggested that the Respondent register the Domain Name and securing web hosting for the website to which it would point. The Respondent contends that he understood that the Domain Name had been randomly selected by the web services provider.
The Respondent does not seek to defend the contention made by the Complainant that the Domain Name is confusingly similar to the Complainant’s KIRKLAND SIGNATURE trademarks, nor the contention that the Respondent has no rights or legitimate interests in the Domain Name.
The Respondent denies that the Domain Name was registered and is being used in bad faith, although admits that the registration of the Domain Name was a way to supplement his income; the Respondent also concedes that if bad faith registration and use is found, it was not intentional on his part, which suggests that the Respondent is aware that his actions may be construed as having happened in bad faith. The Respondent submits that the Domain Name featured product-related articles only at first, before the Respondent then started to “experiment” with “more content and related Amazon products”, which the Panel assumes to mean that the Respondent added sponsored links to its website at the Domain Name. The Respondent submits that he generated two sales of dog food products through the website at the Domain Name, amounting to USD 73 which resulted in USD 2.96 of earnings to him personally, and also that he earned “a few dollars” from Google Adsense click-throughs from the website.
The Respondent surrenders the Domain Name to the Complainant, and consents to the remedy requested by the Complainant, namely that the Domain Name be transferred to the Complainant, without need for a decision from the Panel.
6. Discussion and Findings
As the Respondent has consented to the transfer of the Domain Name to the Complainant, the Panel has the discretion to transfer the Domain Name on this basis alone. Nevertheless, the reasoning of the Panel in connection to this dispute is stated below.
Paragraph 4(a) of the Policy provides that in order to be entitled to the transfer of a domain name, a complainant shall prove the following three elements:
(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
It is established that the Complainant has rights in the trademark KIRKLAND SIGNATURE necessary for a finding of identity or confusing similarity under paragraph 4(a)(i) of the Policy.
The Complainant contends that the addition of the term “dog food” to the KIRKLAND SIGNATURE trademark (which comprises the entire Domain Name, save for the suffix “.com”, which the Panel is permitted to disregard as a generic and a technical requirement of registration) does not mitigate the confusing similarity between the Domain Name and the KIRKLAND SIGNATURE trademark. The Complainant submits several examples of previous UDRP decisions to support its argument, including Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253, which considered that <quixtarmortgage.com> was identical to the mark QUIXTAR as “mortgage” is a generic term which has little or no effect on distinguishing between the marks. The Complainant also identifies Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022, which found that when a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity so as to render it confusingly similar to that mark.
The Complainant relies on a number of examples of UDRP decisions which have considered the addition of common or generic terms to the COSTCO mark, which is also a registered trademark owned by the Complainant. However, although these UDRP decisions support the Complainant’s contention that the addition of a generic term to a distinctive mark does not necessarily detract from the distinctiveness of the mark (and hence such composite sign can be confusingly similar to that mark), the Panel does not feel that these decisions particularly add any extra weight to the Complainant’s argument under paragraph 4(a)(i) of the Policy.
Taking relevant past UDRP decisions into account, the Panel considers overall that the term “dog food” is generic, failing to make the Complainant’s distinctive KIRKLAND SIGNATURE mark less distinctive, and as such the substance of the Domain Name is confusingly similar to KIRKLAND SIGNATURE. The Panel accepts as a possibility the Complainant’s argument that because a range of Kirkland Signature pet food products exist, the likelihood of confusion is increased, as the KIRKLAND SIGNATURE mark is typically applied to a range of products, as described in the Factual Background section above.
The Panel finds that the Complainant has satisfied the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant makes its contentions on the basis that the Respondent has registered the Domain Name, which is confusingly similar to the Complainant’s KIRKLAND SIGNATURE trademark, despite not owning any intellectual property rights in the KIRKLAND SIGNATURE mark, and confirms that it has not authorized nor licensed the Respondent to use the KIRKLAND SIGNATURE mark.
The Complainant further submits that the Domain Name has been registered in order to direct Internet traffic to the Respondent’s website; from the Respondent’s own submissions regarding search engine optimization, the Panel believes this to be accurate.
The Complainant also contends that the registration of the Domain Name by the Respondent is evidence of its intent to disrupt the Complainant’s business, deceive customers and trade off the Complainant’s goodwill by creating an unauthorized association between it and the KIRKLAND SIGNATURE trademark. The Panel has viewed the Respondent’s website at the Domain Name (which depicts largely the same information as was submitted by the Complainant in Exhibit H to its Complaint) and finds that it agrees with the Complainant’s contention in this regard; the website to which the Domain Name points prominently features at least two images of a bag of “Kirkland Signature Super Premium Adult Dog Complete Dog Food”, a product sold by the Complainant, on each webpage. The content of the website makes claims about the composition and nutritional value of “Kirkland signature dog food” [sic], thus using the Complainant’s KIRKLAND SIGNATURE mark to engage Internet users who have visited the site, and deceive them into believing that the website is linked to the Complainant. The Panel considers it highly unlikely that an Internet user would accidentally come across the website at the Domain Name; rather, it is likely that a consumer would be searching for information about the Complainant’s Kirkland Signature range of products, and would be directed to the Domain Name and its website. The Respondent is therefore using the Domain Name to interrupt the Complainant’s business, and to free-ride off the Complainant’s reputation and goodwill.
In light of the above, the Panel finds that the second element of paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Complainant submits that the Respondent was aware of the Complainant’s rights in the KIRKLAND SIGNATURE mark when it registered the Domain Name, which is evidence of bad faith; as part of its argument, the Complainant states that the trademark registrations for KIRKLAND SIGNATURE in the USA means that the Respondent had constructive knowledge of the Complainant’s rights. The Panel hesitates to find that the Respondent had constructive knowledge of the Complainant’s trademark rights in the USA as such, but nevertheless, the Panel considers that the Respondent must have had knowledge of the fact that the Complainant sells products under the mark KIRKLAND SIGNATURE, especially given the Complainant’s extensive reputation and prolific sales. Even if it could be believed that the Respondent did not know that the KIRKLAND SIGNATURE mark belonged to the Complainant, the Respondent was aware that it was using another company’s product name in the Domain Name and in the content of the website to which the Domain Name points (not to mention an image of another company’s products) and that by so doing, it was acting dishonestly and fraudulently which equates to bad faith for these purposes.
Further, the Panel agrees with the Complainant’s contention that the Domain Name was not chosen “accidentally”, but rather the Complainant’s KIRKLAND SIGNATURE mark was targeted for its goodwill and reputation. It may or may not be the case that the Respondent had the Domain Name chosen for him, but the Respondent registered the Domain Name and he is therefore responsible for any consequences arising from that registration. The Panel finds that the registration of the Domain Name does indeed seem to have been for the purpose of attracting the Complainant’s customers, as submitted by the Complainant, and that the registration of the Domain Name was primarily for the purpose of disrupting the Complainant’s business.
In addition, the Panel finds that the Respondent has shown bad faith in the registration and use of the Domain Name by intentionally using the Complainant’s KIRKLAND SIGNATURE mark in the Domain Name to mislead and confuse Internet users into visiting the website to which the Domain Name points for commercial gain. The Panel cannot see that it is possible to buy dog food through the website (although the Panel notes the screenshots submitted in Exhibit J to the Complaint which depict this option) but it is clear from the Respondent’s own submissions in his Response, and from the presence of sponsored advertisements and links on his website, that the Respondent has benefitted financially from the website to which the Domain Name points and it is evident that this is because the Respondent has created a likelihood of confusion as to the source of the product shown on his website.
The Panel finds that the third element of paragraph 4(a) of the Policy has been satisfied.
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 <kirklandsignaturedogfood.com> be transferred to the Complainant.
Date: November 11, 2013