WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Costco Wholesale Membership, Inc. and Costco Wholesale Corporation v. Domain Admin, Whois Privacy Corp./Ryan G Foo, PPA Media Services
Case No. D2015-2095
1. The Parties
The Complainants are Costco Wholesale Membership, Inc. and Costco Wholesale Corporation of Issaquah, Washington, United States of America, represented by Law Office of Mark J. Nielsen, United States of America.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas/Ryan G Foo, PPA Media Services of Santiago, Chile.
2. The Domain Name and Registrar
The disputed domain name <costcoca.com> is registered with TLD Registrar Solutions Ltd (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 17, 2015. On November 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 2015, the Registrar 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 Complainant on November 24, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 24, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 26, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2015. A Response was not filed with the Center.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on December 29, 2015. 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 Wholesale Corporation is a public company that directly or indirectly owns all of the business operations under the COSTCO trademark throughout the world. Costco Wholesale Membership Inc. is a subsidiary of Costco Wholesale Corporation and owns, among other assets, U.S. trademark rights and domain names associated with the COSTCO trademark.
Together, both Complainants (henceforth Costco) are world leaders in warehouse club merchandizing and related services. Costco has operated membership warehouse stores under the COSTCO trademark and trade name since 1983.
The trademark COSTCO is the object of several registrations, the oldest one dating back to May 2, 1985, (U.S. trademark no. 1318685 COSTCO) that is, 30 years ago, as state the copies attached as Exhibit D of the Complaint.
The Complainant holds a number of domain names formed by its mark COSTCO. It is important to note that among these domain names there are some formed by the mark COSTCO and comprising several different country code Top-Level Domains (ccTLDs), such as ".jp", ".kr", ".tw", ".au", ".es" and ".ca".
The evidence submitted with the Complaint shows that the trademark COSTCO was coined by the founders of Costco and it is original and distinctive. In sum, the Complainant shows evidence of substantial goodwill and recognition in the trademark COSTCO, based on intensive use on a long-term basis.
The disputed domain name was created on November 6, 2013.
5. Parties' Contentions
The Complainant contends that the disputed domain name <costcoca.com> contains its worldwide known trademark COSTCO.
The Complainant has obtained registrations for the trademark COSTCO and variations in the USA and other countries, as well as several domain names formed by this mark, as stated above.
The Complainant claims never having licensed or authorized the Respondent to use its mark or to apply for any kind of domain name.
The Complainant also states that the Respondent is not making a legitimate use of the disputed domain name. On the contrary, the disputed domain name was originally directed to a rotating sequence of web pages advertising and selling goods either under the COSTCO trademark, either under different ones. Also it leads to a survey request for Costco shoppers. The Complainant presented evidence of these pages, as Exhibits G and H of the Complaint.
The Complainant claims that the Respondent has refused to respond to its attempts to resolve this controversy on an amicable basis, although no evidences of such attempts have been submitted.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:
(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 to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Regarding the first of the elements, the Panel is satisfied that the Complainant has presented adequate proof of having rights in the mark COSTCO, which is registered in the USA as well as in other countries and clearly used regularly for at least 30 years.
Further, the Panel finds that the disputed domain name <costcoca.com> is confusingly similar to the Complainant's trademark, since this mark is entirely reproduced in it. Moreover, the disputed domain name incorporates entirely the trademark COSTCO by merely adding the combination of letters "ca", which has no meaning in English but can be misleading to a consumer that looks for the Canadian website of the Complainant, as this is represented by the domain name <costco.ca>.
Hence, the Panel concludes that the first of the elements in the Policy has been satisfied by the Complainant in this dispute.
B. Rights or Legitimate Interests
Given the clear evidence that the trademark COSTCO is widely known, the fact that the retail services rendered under this mark throughout the world as well as the undeniable link between that mark and the Complainant, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not filed a Response and has therefore not rebutted the Complainant's prima facie case.
Hence, the Respondent cannot claim to have been using the trademark not knowing the Complainant's rights to it. Besides, as shown in Exhibits G and H of the Complaint, the disputed domain name leads to a rotating sequence of webpages among which some bore the Complainant's mark, as well as a survey request to the Complainant's shoppers. This shows, in the Panel's opinion, that the Respondent's interests in the disputed domain name cannot have been legitimate.
The Panel, thus, finds for the Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
It is the Panel's opinion that the Respondent has registered the disputed domain name <costcoca.com> with the purpose of taking advantage of the renown of the Complainant's mark. The fact that the letters "ca" can lead to confusion with a Canadian website supports this supposition.
Further, the Respondent registered the disputed domain name and uses it to direct Internet traffic to the rotating web pages from which it most likely derives profit. Such use creates an unauthorized association between it and the COSTCO trademarks. Respondent's action evidences bad faith, as the Respondent appears to be doing so for the purpose of commercial gain arising from the probable confusion of the disputed domain name with the Complainant and its mark.
The Panel finds that, for the reasons mentioned above, the Respondent obtained the registration and has been using the disputed domain name in bad faith.
The Panel, hence, finds present the third element.
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 <costcoca.com> be transferred to the Complainant Costco Wholesale Membership, Inc.
Alvaro Loureiro Oliveira
Date: January 12, 2016