WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Costco Wholesale Corporation v. John Cardell, Desert Synthetics
Case No. D2017-1546
1. The Parties
Complainant is Costco Wholesale Corporation of Issaquah, Washington, United States of America ("U.S."), represented by Law Office of Mark J. Nielsen, U.S.
Respondent is John Cardell, Desert Synthetics of Nevada, Las Vegas, U.S.
2. The Domain Name and Registrar
The disputed domain name <trunaturevitamins.com> is registered with Wild West Domains, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 9, 2017. On August 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 5, 2017. On the same date, Respondent sent an email to the Center.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on September 8, 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
Complainant is a public company based in the state of Washington, in the U.S. Complainant is a world leader in warehouse club merchandising and related serves, with over 88 million cardholders worldwide, including 54 million in the U.S. as of fiscal year 2016. The same year, Complainant reported USD 116 billion in sales. Complainant is the 15th largest company in the Fortune 500. Complainant owns several trademarks, including for its TRUNATURE products. These include U.S. Registration No. 2927476 (registered February 22, 2005) for TRUNATURE for "vitamins and dietary food supplements" as well as registrations in other jurisdictions including Australia, the European Union, and Mexico, for the word mark and/or a design.
Complainant also owns the registrations for the domain names <costco.com>, <costco.ca>, <costco.com.mx>, and <costco.com.uk>, among others which it uses to connect to URLs from which it offers its goods to consumers.
The disputed domain name <trunaturevitamins.com> was registered on September 18, 2012. As of the date the Complaint was filed, the disputed domain name resolved to a URL which featured links to competing products. Respondent has no affiliation with Complainant, nor any license to use its marks.
5. Parties' Contentions
Complainant contends that (i) <trunaturevitamins.com> is identical or confusingly similar to Complainant's trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it is the owner of the mark TRUNATURE. Complainant contends that Respondent has incorporated-in-full this mark in the disputed domain name, and otherwise merely added the descriptive term "vitamins", which describes a product for which Complainant has rights in its TRUNATURE mark. Complainant further alleges that consumers would expect to find a website offered by Complainant at the URL associated with the disputed domain name, since Complainant owns several domain names and offers sales of its products online. Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name, and rather has registered and is using it in bad faith, by offering links to competing products.
Respondent did not reply to Complainant's contentions. However, after receiving a Notice of Respondent Default dated September 5, 2017, Respondent sent an email on September 5, 2017, stating the following:
"Reply? Where? I contacted their lawyer and got no real response. Plus I was never told to reply where? You guys have been vague. I took the website down a long time ago anyway."
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether <trunaturevitamins.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name incorporates in full Complainant's registered mark, TRUNATURE, and otherwise simply combines it with the term "vitamins", which is descriptive of a good in which Complainant has rights under its registered mark.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less "identical or confusingly similar" for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620 (transferring <walmartbenfits.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>).
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel next considers whether Complainant has shown that Respondent has no "rights or legitimate interest" as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name "in connection with a bona fide offering of goods or services"; (ii) demonstration that respondent has been "commonly known by the domain name"; or (iii) "legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
No evidence has been presented to this Panel that might support a claim of Respondent's rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant. Respondent did not initially respond to the Complaint, but later responded that he "took the website down a long time ago anyway."
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent's lack of "rights or legitimate interests" in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where "by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent's] web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] website or location or of a product or service on [the] web site or location". As noted in Section 4 of this Panel's decision, as of the time the Complaint was filed, Respondent had the URL associated with the disputed domain name resolved to a webpage featuring competing products. Respondent was thus trading on the goodwill of Complainant's trademarks to attract Internet users, presumably for Respondent's own commercial gain.
The Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph (4)(a)(iii) 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 <trunaturevitamins.com> be transferred to Complainant.
Date: September 12, 2017