WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Nadeem Qadir
Case No. D2017-2422
1. The Parties
The Complainants are Costco Wholesale Membership Inc. and Costco Wholesale Corporation of Issaquah, Washington, United States of America ("U.S." or "United States"), represented by Law Office of Mark J. Nielsen, United States.
The Respondent is Nadeem Qadir of Dhaka, Bangladesh.
2. The Domain Name and Registrar
The disputed domain name <wwwcostco.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 6, 2017. On December 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 3, 2018.
The Center appointed James Bridgeman as the sole panelist in this matter on January 16, 2018. 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 First Named Complainant is a public company that carries on business in the field of warehouse club merchandizing and related services and has operated membership warehouse stores under the COSTCO trademark and trade name since 1983. The Second Named Complainant is a subsidiary of the First Named Complainant and owns, among other assets, U.S. trademark rights and domain names associated with the COSTCO trademark.
The Complainants' group had USD 126 billion in sales in fiscal year 2017. They operate 744 warehouse stores worldwide, including 517 warehouse stores in the United States and 227 in Australia, Canada, France, Iceland, Japan, Republic of Korea, Mexico, Spain, the United Kingdom of Great Britain and Northern Ireland ("U.K."), and Taiwan, Province of China. The Complainants have more than 88 million authorized cardholders worldwide and more than 54 million authorized cardholders in the United States. They have an established Internet presence and in the fiscal year 2016, the Complainants' sales through their websites amounted to approximately USD 4 billion.
The Complainants' own a large portfolio of registrations for the COSTCO trademark including the following which are registered in the name of the Second Named Complainant in the United States:
• United States trademark COSTCO registration number 1,318,685, filed on October 13, 1983 and registered on February 5, 1985, for services in international class 42;
• United States trademark COSTCO registration number 1,976,242, filed on March 20, 1995 and registered on May 28, 1996, for services in international class 42;
• United States trademark COSTCO WHOLESALE & Design registration number 2,244,972, filed on March 5, 1997 and registered on May 11, 1999, for services in international class 42;
• United States trademark COSTCO.COM registration number 2,440,636, filed on January 18, 2000 and registered on April 3, 2001, for services in international class 35;
• United States trademark COSTCO (stylized) registration number 2,481,924, filed on March 24, 2000 and registered on August 28, 2001, for services in international class 35.
In addition to their warehouse stores, the Complainants provide services for their club members in the United States, Canada, Mexico, U.K., Republic of Korea and Taiwan, Province of China through their websites to which their domain names <costco.com>, <costco.ca>, <costco.com.mx>, <costco.co.uk>, <costco.co.kr> and <costco.com.tw> resolve. The Complainants' operations in Australia, France, Iceland, Japan and Spain have informational websites at "www.costco.com.au", "www.costco.fr", "www.costco.is", "www.costco.co.jp" and "www.costco.es", respectively, that provide shoppers with information about membership, products and services, warehouse store locations and opening hours.
In the absence of a Response, the only information available about the Respondent is the information in the Registrar's WhoIs database and in the Complaint.
The disputed domain name was registered on December 24, 1999. The Complainants allege that they have recently become aware that the disputed domain name now resolves to an active website linked to their main competitors, details of which are set out below.
5. Parties' Contentions
The Complainants rely on their rights in the COSTCO trademark established by their portfolio of registered trademarks including those listed above and their rights at common law established through extensive use of the COSTCO trademark in the sale of goods and provision of services associated with their warehouse business and request that the disputed domain name be transferred to the First Named Complainant.
The Complainants submit that for the purposes of this dispute, the interests of the Complainants are co‐extensive, and their grievance against the Respondent arises from common legal interests so that it is equitable and procedurally efficient to consolidate their claims against the Respondent.
The Complainants submit that the disputed domain name is confusingly similar to their COSTCO trademark arguing that the disputed domain name consists of the Complainants' COSTCO trademark in combination with the letters "www", which is essentially a misspelling of their distinctive mark and looks very similar to the URL for the Complainants' website "www.costco.com".
The Complainants assert that the Respondent has no legitimate interest in the disputed domain name or any domain name, trademark or trade name incorporating or confusingly similar to their COSTCO trademark; that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; that the Respondent owns no trademark registrations for the disputed domain name or any portion thereof, and has not been commonly known by the disputed domain name or any portion thereof.
The Complainants further assert that they have not licensed or otherwise permitted the Respondent to use their trademark or the disputed domain name; that the Respondent does not own and cannot lawfully obtain any trademark or intellectual property rights in the COSTCO trademark or any words or phrases that incorporate or are confusingly similar to the COSTCO trademark.
Additionally the Complainants allege that the Respondent does not use the disputed domain name in any legitimate, good faith manner, and there is no legitimate, good faith use of the disputed domain name possible by the Respondent. See General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher, WIPO Case No. D2000‑0377 ("There is no conceivable good faith use to which Respondent, who has no right or legitimate interest in the domain name at issue, could put the [wwwge.com] domain name at issue, which is identical or confusingly similar to the famous 'GE' mark.").
The Complainants submit that in view of the uniqueness and fame of the COSTCO trademark and the Respondent's transparent intention to register and use the disputed domain name which is based on the COSTCO trademark purely for its own benefit, the Respondent's registration and use of the disputed domain name is inescapably in bad faith.
The Complainants assert that the Respondent's choice of the disputed domain name was not a coincidence. COSTCO is a trademark that was coined in 1983 and registered as a trademark as early as 1985. The reputation of the COSTCO trademark has since grown to become famous as the Complainants' sales grew rapidly from USD 4.1 billion in 1990 to USD 126 billion in fiscal year 2017.
The Complainants argue therefore that the Respondent must have been aware of the Complainants' rights in the COSTCO trademark when it registered the disputed domain name.
The Complainants submit that the Respondent's bad faith is particularly egregious in this case because the disputed domain name is identical to the URL of the website to which the Complainants' domain name <costco.com> resolves, except for a missing period.
Furthermore the Complainants allege that the Respondent is using the disputed domain name to divert Internet users looking for the Complainants' website away to competing websites for the Respondent's own benefit and is thereby confusing and deceiving Internet users, damaging the Complainants' business and reputation, and is providing an illicit benefit to the Respondent by trading on the Complainants' reputation and goodwill.
The Complainants argue that the Respondent's activity clearly establishes bad faith use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy and in support of this assertion the Complainants refer to Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), which states that "[u]nder the second and third elements, panels will normally find that employing a misspelling in this way signals an intention on the part of the respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant."
The Complainants further submit that the Respondent's bad faith is confirmed by its use of the disputed domain name to link Internet users to the websites of the Complainants' main competitors. While the disputed domain name was registered on December 24, 1999, the Complainants learned during the week prior to filing this Complaint that the disputed domain name resolved to a product page on the website of Wal‐Mart Stores, a retailer that is one of the Complainants' competitors. In the 24 hours prior to the execution of this Complaint, the disputed domain name has also resolved to a website with links purportedly by or about the Complainants and to the website of Sam's Club, which is owned by Wal‐Mart and is the Complainants' biggest direct competitor. The Complainants submit that it is deceptive to consumers and harmful to the Complainants to have Internet users enter a typosquatting domain name like <wwwcostco.com> and find themselves on the website of one of the Complainants' competitors or on a website consisting of links to websites purportedly operated by the Complainants.
The Complainants aver that Sam's Club and Wal‐Mart are among the Complainants' biggest competitors. A collection of articles demonstrating the competitive relationship between the Complainants and Sam's Club/Wal‐Mart are submitted as evidence attached to the Complaint.
Furthermore the Complainants submit that the Respondent is using the disputed domain name as the URL for a "link farm" page which also constitutes bad faith use. Other UDRP panels have concluded that "operation of commercial link services, designed to lure Internet users and divert them to other commercial sites by use of domain names identical or similar to complainant's trademark" are not a legitimate use of a domain name and constitute bad faith registration and use under paragraph 4(b) of the Policy. See MBI, Inc. v. Moniker Privacy Services/Nevis Domain Names LLC, WIPO Case No. D2006-0550, citing Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584; Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi, WIPO Case No. D2004-0984; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Traverito Traverito, WIPO Case No. D2007-0523; and Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Services LLC, WIPO Case No. D2007-0524.
The Respondent did not reply to the Complainants' contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainants to establish that:
(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.
This Panel accepts the Complainants' submissions that the interests of the Complainants are co‐extensive, and their grievance against the Respondent arises from common legal interests so that it is equitable and procedurally efficient to consolidate their claims against the Respondent.
A. Identical or Confusingly Similar
The Complainants have provided convincing evidence that they have rights in the COSTCO trademark established through their abovementioned portfolio of registered trademarks and the goodwill established by their extensive use of the COSTCO mark in connection with the sale of goods and provision of services in their warehouse business and online.
The disputed domain name consists of the letters "www", the Complainants' COSTCO trademark and the generic Top-Level Domain Name extension ".com". Two of the elements, namely the letters "www" which in the context of an Internet domain name are taken to refer to the World Wide Web, and the ".com" domain extension lack any distinctiveness in the context of a domain name. The Complainants' COSTCO trademark is therefore the only distinctive and the dominant element of the disputed domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the Complainants' COSTCO mark.
The Complainants have therefore succeeded in the first element, as set out in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name: the disputed domain name is confusingly similar to the Complainants' distinctive COSTCO mark; the Complainants have not given the Respondent any right or entitlement to use its COSTCO mark in the disputed domain name or otherwise; there is no evidence that the Respondent is known by the disputed domain name and the Respondent is using the disputed domain name for commercial gain to divert Internet traffic to competitors of the Complainants.
In these circumstances the burden of production shifts to the Respondent who has failed to file any Response to the Complaint. The Respondent has therefore failed to discharge the burden.
The Complainants therefore succeed in the second element, as set out in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It is most improbable that the registrant of the disputed domain name was unaware of the Complainants and the extensive international reputation of their warehouse and Internet retail business when the disputed domain name was registered. On the balance of probabilities the disputed domain name was chosen and registered because of its close similarity to the Complainants' COSTCO trademark and name and in particular to the address of the website to which the Complainants' <costco.com> domain name resolves.
The Complainants have provided evidence that the Respondent is using the disputed domain name to resolve to websites of their primary competitors. In the absence of a Response or any explanation, this Panel finds therefore that on the balance of probabilities the disputed domain name was registered to take predatory advantage of the Complainants' reputation in the COSTCO mark and the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of its website.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith.
As the Complainants have therefore succeeded in establishing the third element, as set out in paragraph 4(a)(iii) of the Policy, they are entitled to the relief sought in the Complaint.
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 <wwwcostco.com> be transferred to the Complainant Costco Wholesale Membership Inc.
Date: January 19, 2018