WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Tayler Boyer
Case No. D2016-2587
1. The Parties
The Complainants are Costco Wholesale Membership Inc. and Costco Wholesale Corporation of Issaquah, Washington, United States of America ("United States"), represented by Law Office of Mark J. Nielsen, United States.
The Respondent is Tayler Boyer of Zwischbergen, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <costcoadmin.com> is registered with Ascio Technologies Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 20, 2016. On December 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 13, 2017.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on January 23, 2017. 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' activities are related to warehouse club merchandising and related services. 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 others, the following trademark registrations in the United States:
- Trademark Registration No. 1,976,242, filed on March 20, 1995 and registered on May 28, 1996 for COSTCO;
- Trademark Registration No. 2,244,972, filed on March 05, 1997 and registered on May 11, 1999 for COSTCO WHOLESALE and logo.
The disputed domain name <costcoadmin.com> was registered on October 30, 2016. Currently no active website resolves from the disputed domain name. However, as demonstrated by the evidence submitted with the Complaint, the disputed domain name previously resolved to an employment website apparently designed to offer job postings for the Complainant's group of companies.
5. Parties' Contentions
The Complainants assert that they are one of the world leaders in warehouse club merchandising and related services, operating membership warehouse stores under the COSTCO trademark and trade name since 1983. Currently they claim to operate 723 warehouse stores located in the United States, Australia, Canada, Japan, Republic of Korea, Mexico, Spain, Taiwan, Province of China, and the United Kingdom of Great Britain and Northern Ireland, having had USD116 billion in sales in the fiscal year of 2016, being ranked as the15th largest company in the "Fortune 500" listing.
According to the Complainants, the disputed domain name reproduces their registered trademark being confusingly similar therewith given that the addition of the common term "admin" is not relevant for the purposes of the Policy and could mislead Internet users into believing that the disputed domain name is owned by the Complainants or used by them for "administrative" purposes.
As to the absence of rights or legitimate interests, the Complainants argue that:
i. no license or authorization of any kind has been given by the Complainants to the Respondent to use the COSTCO trademark;
ii. the Respondent is not commonly known by the disputed domain name, nor owns a trademark or trade name incorporating the COSTCO trademark; and
iii. the disputed domain name has not been used in connection with a bona fide offering of goods or services.
As to the bad faith in the registration and use of the disputed domain name, the Complainants assert that the Respondent's knowledge of the Complainants well-known trademark is evident given the reproduction of their logotype on the Respondent's website as well as in the deliberate way the site was designed so as to appear to be sponsored or operated by the Complainants (the site even mentioned "Costco Group of Companies" as the owner of the site). The Complainants therefore conclude that the Respondent knew about the Complainants' trademark and reputation, and attempted to use them to its advantage in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainants:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainants must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to them, according to paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainants have established rights in the COSTCO trademark.
In this Panel's view the common term "admin" is not sufficient to add distinctiveness to the well-known COSTCO trademark, thus not avoiding the risk of undue association between the disputed domain name and the Complainants' trademark.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainants' trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent's rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has not acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainants to make at the least a prima facie case against the Respondent.
In that sense, the absence of any indication that the Respondent owns any registered trademarks or trade names corresponding to the disputed domain name as well as the Complainants' statement that no authorization or license was granted for the use of the COSTCO trademark in the disputed domain name corroborate with the indication of a lack of rights or legitimate interests in the disputed domain name.
The question then falls under whether any rights or legitimate interests could be found in view of the use made by the Respondent of the disputed domain name, which consisted of a webpage reproducing the Complainants' COSTCO WHOLESALE trademark and indication that "This is Costco Group of Companies. Here you apply or post jobs and get latest job alter or many more", in addition to links for job offers.
According to the evidence submitted by the Complainant (printouts of the website that resolved from the disputed domain name), the Respondent attempted to impersonate the Complainants, claiming to be the "Costco Group of Companies". Furthermore, the reproduction of the Complainants' logotype lead this Panel to the conclusion that the Respondent attempted to create a false impression of association with the Complainants, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of the disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the reproduction of the Complainants' trademark logotype in connection with the job offers relating to the Complainants on the website that resolved from the disputed domain name.
The Respondent's use of the disputed domain name not only clearly indicates full knowledge of the Complainant's trademark when registering the disputed domain name, but also is an attempt to misleadingly obtain information from Internet users interested in the Complainants.
For the reasons above, the Respondent's conduct has to be considered, in this Panel's view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of 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, <costcoadmin.com>, be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: February 6, 2017