WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com /Jayson Waller
Case No. D2015-2098
1. The Parties
The Complainants are Costco Wholesale Membership Inc. of Issaquah, Washington, United States of America ("United States") and Costco Wholesale Corporation of Issaquah, Washington, United States represented by Law Office of Mark J. Nielsen, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States / Jayson Waller of Mooresville, North Carolina, United States.
2. The Domain Name and Registrar
The disputed domain name <costcosolarpanels.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed on November 18, 2015, with the WIPO Arbitration and Mediation Center (the "Center"). On November 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 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 Complainants on November 25, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on November 25, 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. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 17, 2015.
The Center appointed as the sole panelist in this matter on Steven L. Snyder. 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
Using an identity shielding service, Respondent Jayson Waller registered <costcosolarpanels.com> on August 31, 2015. He has linked the disputed domain name to a website that advertises the products and services of Power Home Solar LLC (the "LLC"), a company that purportedly provides solar panels for generating electricity and offers financing for their purchase. According to the North Carolina Secretary of State's website, William Jayson Waller is a member of the LLC.
There is no apparent connection between the LLC's website and the Complainants in this action, Costco Wholesale Corporation (the "Wholesale Corporation") and Costco Wholesale Membership Inc. (the "Membership Corporation"). The LLC's website does not feature the COSTCO trademark or advertise any COSTCO-branded goods and services.
The Wholesale Corporation is the legal entity that directly or indirectly owns all of the business operations carried out under the COSTCO trademarks and service marks throughout the world. The Membership Corporation is one of the Wholesale Corporation's subsidiaries and is the legal owner of the COSTCO trademarks and service marks in the United States, as well as domain names associated with those marks. For the purposes of this proceeding, both the Wholesale Corporation and the Membership Corporation shall be collectively referred to as the "Complainant" or "Costco."
Long before the Respondent registered the disputed domain name, the Complainant had registered more than fifty trademarks and service marks with the United States Patent and Trademark Office ("USPTO") that featured the word COSTCO. The Complainant's marks are registered in numerous International Classes, reflecting the fact that the COSTCO marks are used for a wide variety of goods and services available through Complainant's ubiquitous warehouse stores and websites.
5. Parties' Contentions
The Complainant began operations in 1983 in Seattle, Washington. It has grown to be the third-largest retailer in the United States. In 2014, the company and its affiliates and subsidiaries operated 671 warehouse stores across the United States and in Canada, Mexico, the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), Japan, Korea, Taiwan, Australia and Spain.
In addition, the Complainant operates online websites in the United States, Canada, the United Kingdom and Mexico and owns the domain names <costco.com>, <costco.ca>, <costco.com.mx> and <Costco.com.uk>. In 2014, Complainant realized sales of approximately $3 billion through the websites linked to those domain names. Including the websites' revenue, the Complainant's various operations produced $110 billion in sales in 2014.
The Complainant's sales come from a wide variety of products and services. Over the decades, the Complainant and its affiliates have expanded the company's offerings services to include food, snacks, pharmaceuticals, personal care products, appliances, electronics, hardware, apparel, home furnishings, gas, travel and optical services. In addition, the Complainant has moved into the home improvement field. Kiosks located in its warehouse stores are designed to help homeowners find products and services for their abodes, including garage doors, closets, flooring, water treatment systems, window decor and custom countertops.
The Complainant's trademark and service mark portfolio reflects its size and variety. In 1985, the Complainant obtained its first registration for a COSTCO mark from the USPTO. Since then, it has obtained dozens of registrations for the COSTCO mark in the United States and other countries. The registrations are in many different International Classes ("IC"), including the class that covers home improvement services: IC 37. See, e.g., USPTO reg. 3657105 (registering COSTCO in IC 037 for "[r]esidential repair and improvement services….").
In its Complaint, Costco argues that the disputed domain name is confusingly similar to its famous COSTCO mark. The fact that generic or descriptive words are included in the disputed domain name does not lessen the confusion, the Complainant argues, particularly since it now offers many home improvement products and services.
The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant nor licensed to use its well-known COSTCO mark in any fashion. Moreover, the Respondent's use of the confusingly similar disputed domain name does not establish any rights or legitimate interests in the disputed domain name. This is because the Respondent's use is illegitimate: He has taken the Complainant's well-known trademark and used it to mislead consumers into visiting his website for solar panels.
This brings us to the third point: The Complainant maintains the disputed domain name was registered and is being used in bad faith. Given Costco's enormous size, its many decades of operations, its family of registered marks, its extensive Internet presence and the close physical proximity of a COSTCO-branded store to the Respondent (only thirty miles away), the Complainant argues that it is inconceivable that the Respondent innocently incorporated the famous COSTCO mark into the disputed domain name. Instead, the Complainant accuses the Respondent of deliberately and in bad faith incorporating the COSTCO mark into the disputed domain name in order to attract traffic to his website. Though the Complainant does not currently offer solar panels to its customers, it would hardly be surprising if Internet users thought the company did offer those products, given its extremely broad array of goods and services.
The Complainant maintains that it has established all elements required under the Policy to prevail in this action and asks that the disputed domain name be transferred to its ownership.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To prevail in this proceeding, the Complainant must introduce proof that establishes each of the following three elements:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is <costcosolarpanels.com>. The words "solar panels" are merely descriptive and can be set aside when determining whether the remainder of the disputed domain name is identical or confusingly similar to the Complainant's mark. Taking that step leaves us with a disputed domain name that is identical to the Respondent's famous COSTCO mark. See, e.g., Pixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000‐0253 (disregarding the word "mortgage" when determining that the respondent's domain name <quixtarmortgage.com> was confusingly similar to the complainant's QUIXTAR mark).
The Complainant has established the first element required by the Policy.
B. Rights or Legitimate Interests
A respondent can establish rights to and a legitimate interest in a domain name by using the domain name "in connection with a bona fide offering of goods or services," or being "commonly known by the domain name," or "making a legitimate noncommercial or fair use of the domain name." SeePolicy 4(c).
There is no evidence in the record that would establish that the Respondent has rights or legitimate interests in <costcosolarpanels.com>. The Respondent is using the disputed domain name for a commercial purpose: To peddle solar panels. The Respondent is not commonly known by the disputed domain name: He is called Jayson Waller, not Costco Solar Panels Waller. Lastly, the Respondent is not making a bona fide offering of goods or services.
Instead of using his company's mark to advertise his company's goods and services, the Respondent has misappropriated the Complainant's famous mark and used it to create the disputed domain name – which likely will lead many Internet users to visit his website in the mistaken but reasonable belief that Costco is now offering solar panels as part of its portfolio of home improvement goods and services.
On these facts, it is clear that the Respondent has no rights or legitimate interests in the disputed domain name. See Sanrio Co. Ltd. v. Neric Lau, WIPO Case No. D2000‐0172 ("Respondent cannot be said to have legitimately chosen the [disputed] domain name unless it was seeking to create an impression of an association with Complainants. Since there is no such authorized association, Respondent's interests in the domain name cannot be said to be legitimate.").
The Complainant has established the second element required by the Policy.
C. Registered and Used in Bad Faith
The Policy provides a non-exclusive list of circumstances that are evidence of the registration and use of a domain name in bad faith. One of the most frequently cited circumstances is a respondent's intentional misappropriation of a complainant's trademark for commercial gain. This occurs when a respondent incorporates a well-known trademark into a domain name, links that domain name to a commercial website that has nothing to do with the trademark owner, and then lures unsuspecting Internet users to that website. Cf. Policy 4(b)(iv).
In other words, evidence of registration and use in bad faith is doing exactly what the Respondent has done. See Fifth Third Bancorp v. Joseph Robinson, WIPO Case No. D2006-1183 ("Respondent could hardly have acted in good faith when it took Complainant's trademark, slipped it into a domain name, and then linked the domain name to a website that offered the services and products of Complainant and its competitors.").
The Complainant has established the third element required by the Policy.
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 <costcosolarpanels.com> be transferred to Costco Wholesale Membership, Inc.
Steven L. Snyder
Date: January 2, 2016