WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Private Registration
Case No. D2014-0251
1. The Parties
The Complainants are Costco Wholesale Membership Inc., Costco Wholesale Corporation of Washington, United States of America (the "United States" or "USA"), represented by Law Office of Mark J. Nielsen, United States.
The Respondent is Private Registration, Mansfield, New South Wales, Australia.
2. The Domain Names and Registrar
The disputed domain names <costcogasoline.com> and <costcopetrol.com> are registered with Crazy Domains FZ-LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 18, 2014. On February 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 22 and 27, 2014, 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 response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed two brief amendments to the Complaint on February 27 and 28, 2014. The Panel proceeds to decide this Complaint on the basis of the amended Complaint.
The Center verified that the Complaint together with the amendments 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 March 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2014. Apart from the numerous email communications sent by the Respondent, offering to transfer the disputed domain names to the Complainant, no formal response was filed with the Center.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on April 17, 2014. 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 are Costco Wholesale Membership Inc., a California corporation and Costco Wholesale Corporation, a Washington State corporation (together called "the Complainant").
According to the Complainant, it is a recognized world leader in warehouse club merchandising and related services. The Complainant has operated membership warehouse stores under the trademark COSTCO and trade name since 1983. The Complainant currently operates over 648 warehouse stores worldwide including over 461 in the United States and Puerto Rico and 187 in Australia, Canada, Japan, South Korea, Mexico, Taiwan and the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"). It has more than 70 million authorised card holders worldwide and more than 45 million authorised card holders in the USA. The Complainant is one of the largest and best known retailers in the USA with USD102 billion in sales in the fiscal year 2013. The Complainant's stock has been publically traded since 1985. It is currently the 22nd largest company in the Fortune 500, the third largest retailer in the USA and the 7th largest retailer in the world. As a result of its size and reputation, the Complainant has been the subject of regular news and feature coverage in all types of media. As a result, the trademark COSTCO has become famous for the sale of brand name and high quality private label merchandise in no frills warehouse style stores. Exhibited at Exhibit C to the Complaint is a copy of the Complainant's annual report for 2013 which sets out details of Costco's trading.
The Complainant is a name developed by its founders. The Complainant is the legitimate owner of trademarks COSTCO throughout the world. It owns trademark registrations for COSTCO in a variety of forms including COSTCO (in stylized letters), COSTCO WHOLESALE and device and COSTCO.COM for a wide variety of services and for various printed publications and other materials. The Complainant obtained its first US trademark registration for the mark 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. It has been granted numerous trademark registrations from the US Patent and Trademark office for marks including the wordcostco". Exhibited at Exhibit D to the Complaint is a complete list of active trademark registrations for COSTCO. In addition, through a wholly owned affiliate the Complainant also owns "hundreds of trademark registrations" for COSTCO marks in other countries throughout the world.
The Complainant's warehouse stores offer a wide range of merchandise including fresh, frozen and packaged food, beverages, nutritional supplements, over the counter pharmaceuticals, prescription pharmaceuticals, personal care products, household paper products, clothing, computers and home electronics products, office supplies, books, DVDs and CDs, furniture and home furnishing, appliances, jewellery, holiday decorations, tools, garden supplies, tyres and automated supplies and sports equipment. Most Costco warehouse stores in the USA and Canada also have gas/petrol stations bearing the COSTCO gasoline logo mark.
The Complainant also offers a wide variety of services such as pharmacy services (both online and in its warehouse stores), photo processing and printing, optical and hearing aid services, bakery, deli and take-out food, tyre installation, delivery services, auto, home and health insurance, auto sales and financing, road side assistance, mortgage lending, online training, telecommunications, polaroid processing, credit card processing, financial planning, online investing, overnight delivery and travel services. Some of these services are provided by the Complainant itself but many of them are provided by third parties carefully selected by the Complainant and authorised by the Complainant to provide services to the Complainant's card holders in association with the COSTCO trademark. The Complainant provides information about these services in its warehouse stores, in the Complainant's monthly publication, "the Costco Connection" (which has a monthly circulation of over 8 million in the US) and at its "www.costco.com" website which provides links to access or apply for these services or obtain information about them.
The Complainant owns the <costco.com> domain name and maintains an active presence on the Internet using this domain name as its URL. A print of the homepage of the Complainant's USA website as of February 18, 2014 is Exhibit E to the Complaint. The Complainant operates online retail websites. Its members in the United States, Canada and the United Kingdom offer a wide range of good and services through its "www.costco.com", "www.costco.ca" and "www.>costco.co.uk" websites. In fiscal year 2013, The Complainant's sale through its "www.costco.com" and "www.costco.ca" websites were approximately USD3 billion. It is clear, therefore, that many of the Complainant's customers use the Internet to find and purchase the Complainant's goods and services. The Complainant's operations in Mexico, Japan, South Korea, Taiwan and Australia have informational websites at "www.costco.com.mx", "www.costco.co.jp", "www.costco.co.kr", "www.costco.com.tw" and "www.costco.com.au" respectively but provides shoppers with information about membership, products and services and warehouse store locations and hours.
As at the end of its fiscal year in August 2013, the Complainant operated 414 gas/petrol stations at its warehouse stores in the USA and in Canada (page 4 of the Complainant's annual report for 2013 at Exhibit C to the Complaint). These stations are identified by the Complainant's gasoline logo mark which is patented using the design elements of Costco's core brand, the COSTCO logo. A page from the "www.costco.com" website with information about Costco gasoline/petrol stations is attached to Exhibit F to the Complaint. A page of photographs taken of Costco gasoline stations is attached as Exhibit G. In addition to gasoline/petrol, the Complainant also sells a wide variety of tyres and automotive products through its warehouse stores and through its "www.costco.com" and "www.costco.ca" websites.
Among the Complainant registrations set forth in Exhibit D to the Complaint, the following are some of the registrations that cover the Complainant's retail and wholesale store services in the United States. These expressly cover the sale of gasoline/petrol. True copies of current pages from the website of the US patent and trademark office for the following registrations are attached as Exhibit H to the Complaint:
COSTCO WHOLESALE and device
March 5, 1997
March 24, 2000
The Respondent registered the disputed domain names <costcogasoline.com> and <costcopetrol.com> on November 11, 2013.
Having considered the above evidence and in the absence of a Response, the Panel finds that the evidence of the Complainant to be true and proceeds to determine the Complaint on the basis of this evidence.
5. Parties' Contentions
1. The Complainant submits that the disputed domain names are confusingly similar to Complainant's registered trademarks and submits that the Panel should follow earlier panel decisions relating to the Complainant.
2. The Respondent has no rights or legitimate interests in the disputed domain names. The Complainant submits that the Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services, owns no trademark registrations for the disputed domain names or any portion thereof and has not been commonly known by the domain names. Rather the actions of the Respondent in registering the disputed domain names represent a clear intent to disrupt the Complainant's business by deceiving consumers and trading off of the Complainant's goodwill by creating unauthorized association between it and the trademarks COSTCO. The Complainant further submits that at the date of the Complaint the disputed domain names resolved to a commercial website (Exhibit I to the Complaint) The Complainant states that it is unaware and does not allege, that there is a connection between the Respondent and this website.
3. The Respondent registered and is using the disputed domain names in bad faith. The Complainant submits that the Respondent's choice of the disputed domain names was not a coincidence but rather was done being aware of the Complainant's trademark rights and registered for the purposes of diverting Internet users to its commercial website. It registered the disputed domain names in circumstances demonstrating that 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 its source, sponsorship, affiliation and endorsement. Moreover, it is using the domain names to divert Internet users looking for the Complainant website to the Respondent's website for its own commercial benefit and potentially commercial benefit of others. This establishes bad faith.
In the absence of a Response, there are no formal submissions from the Respondent. From February to March 2014, the Center received several email communications from the Respondent offering to transfer the disputed domain names to the Complainant. In response to the offer, the Complainant confirmed its intention to proceed with the case until a final determination.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant submits that the disputed domain names are confusingly similar to the trademark COSTCO. It submits that the disputed domain names <costcopetrol.com> and <costcogasoline.com> consist merely of the COSTCO trademark with the common terms "petrol" and "gasoline" added.
The Panel finds, having considered the evidence of Complainant's trademark rights set out above, that Compainant owns numerous trademarks for the mark COSTCO. The Panel also finds that the descriptive terms "petrol' and "gasoline" are used in such a way that they are descriptive of the Complainant.
The Complainant sets out in the Complaint a number of decisions of previous UDR panels which have uniformally found that the addition of common terms of the COSTCO mark is insufficient to negate confusing similarity between the disputed domain names in dispute and the COSTCO mark. Examples from the decisions include: Costco Wholesale Corporation and Costco Wholesale Membership Inc. v. Yezican Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638 <mycostcobook.com>, Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Henry Chan, WIPO Case No. D2004-0218 <costcofurniture.com>,and <costcohome.com>, Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Jogn Dinway/Hosting Media, WIPO Case No. D2007-1426 <usacostco.info> and Costco Wholesale Corporation, Costco Wholesale Membership, Inc. v. Cindy Chau, WIPO Case No. D2008-1283 <costcogift.com>.
The confusion is increased by the evidence that the Complainant sells gasoline/petrol and a wide variety of automated products so that the addition of the common descripted terms "petrol" and "gasoline" to the Complainant's trademark exacerbates the confusing similarity between the Complainant's trademark and the disputed domain names. This increases the risk of confusion between the disputed domain names and the Complainant's trademarks COSTCO.
Accordingly, the Panel finds for the Complainant in respect of this element.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no legitimate interest in any domain name, trademark or trade name incorporating or confusingly similar to the COSTCO trademark. Given that there is no Response, there is no evidence that establishes that the Respondent is entitled to use domain names incorporating or confusingly similar to the Complainant's trademark.
To the contrary, the evidence from the Complainant is that it did not licence or otherwise permitted the Respondent to use its marks or the domain names. The Respondent does not own and would be unable to obtain any trademark or intellectual property rights in the trademark COSTCO or any words or phrases that incorporate or are confusingly similar to the trademark COSTCO. Moreover, the evidence is such that the Respondent registered the disputed domain names and uses them to direct Internet traffic to the Respondent's commercial website. In the Panel's assessment, This evidence shows a clear intent to disrupt the Complainant's business, deceive consumers and tradeoff the Complainant's trading goodwill by creating an unauthorised association between it and the trademark COSTCO.
Accordingly, the Panel finds for the Complainant in respect of this element.
C. Registered and Used in Bad Faith
The Respondent submits that the Respondent's choice of thedisputed domain names was not a coincidence. The trademark COSTCO has long since become famous and the COSTCO trademarks were first registered as early as 1985. The Respondent did not register the disputed domain names until November 2013, many years after the COSTCO trademark had been famous. Accordingly, the Respondent must have been aware of Complainant's rights in the trademark COSTCO when it registered the disputed domain names and when it put them to use diverting Internet users to a commercial website. The Complainant relies upon earlier UDRP panel decisions that awareness of another's rights in a mark or domain name at the date of registration is evidence of bad faith registration. The Panel agrees with that submission.
In addition to operating nationally within the United States, the Complainant operates stores elsewhere throughout the world as set out in (4) above.
It follows according to the Complainant that the Respondent's registration of the disputed domain names was done in bad faith and that its only conceivable business purposes in registering the disputed domain names was to profit from the diversion of Internet users to a commercial website unrelated to the Complainant. This is "unmistakably bad faith".
Paragraph 4(b) of the Policy establishes that a registrant acts in bad faith if it registers a domain name "primarily for the purpose of disrupting the business of a competitor". The fact that the Respondent registered the disputed domain names for the purposes of diverting Internet traffic to a commercial website not affiliated with the Complainant proves that the Respondent had the necessary intention to disrupt the Complainant's business by diverting potential the Complainant customers. This is evidence of bad faith registration and use of the disputed domain names.
In the absence of a Response, the Panel accepts the Complainant's submissions and finds that the disputed domain names were registered and are being used in bad faith by the Respondent.
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 names, <costcogasoline.com> and <costcopetrol.com> be transferred to the first named Complainant, Costco Wholesale Membership Inc., as requested in the Complaint.
Clive Duncan Thorne
Date: April 23, 2014