WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Domain Administrator, Fundacion Privacy Services LTD
Case No. D2020-0174
1. The Parties
The Complainants are Costco Wholesale Membership Inc. (“First Complainant”) and Costco Wholesale Corporation (“Second Complainant”), both of the United States of America (“United States”), represented by Law Office of Mark J. Nielsen, United States.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.
2. The Domain Name and Registrar
The disputed domain name <costcobenefit.com> (“Domain Name”) is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2020. On January 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 29, 2020, 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 February 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2020.
The Center appointed Nicholas Smith as the sole panelist in this matter on March 15, 2020. 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 Second Complainant is a public company that directly or indirectly owns all the business operations conducted under the trade mark COSTCO (the “COSTCO Mark”) throughout the world. The First Complainant is a subsidiary of the Second Complainant that owns the United States trade mark registrations for the COSTCO Mark and corresponding domain names.
The Second Complainant and its subsidiary entities (collectively, “Costco”) operate a well-known warehouse club merchandising and retail business. Costco has operated warehouse stores under the COSTCO Mark since 1983 and at the date of the Complaint, currently operates 785 stores worldwide in 12 countries. Costco has 95 million authorized cardholders worldwide (also known as members), made USD 149 billion in sales in the 2018-19 fiscal year and maintains an active online presence from the <costco.com> domain name. Costco also offers a variety of non-retail services under the COSTCO Mark including offering health insurance, both to its employees and its members.
The First Complainant is the owner of trade mark registrations for the COSTCO Mark in the United States, including registration number 1318685, registered on February 5, 1985 for services in class 42.
The Domain Name <costcobenefit.com> was registered on December 10, 2006. It presently redirects to a website (the “Respondent’s Website”) that offers sponsored listings (often referred to as pay-per-click advertisements) under the descriptions “Employee Health Insurance”, “Health Insurance”, “Health Plans”, “Costco Health Insurance”, and “Medical Insurance”.
5. Parties’ Contentions
The Complainants make the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainants’ COSTCO Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainants are the owner of the COSTCO Mark, having registered and used the COSTCO Mark in the United States and other jurisdictions. The Domain Name is confusingly similar to the COSTCO Mark since it wholly incorporates the COSTCO Mark and adds the descriptive word “benefit”.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization from the Complainants to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve a website that capitalises on the Complainants’ reputation in the COSTCO Mark to offer pay-per-click links to services that disrupt the Complainants’ business and deceive their customers.
The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website in direct competition with the Complainants, the Respondent is using the Domain Name to divert Internet users searching for the Complainants to the Respondent’s Website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Consolidation of Multiple Complainants
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides at section 4.11.1, in respect of the issue “Multiple complainants filing against a single respondent” that:
“Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.
In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.”
The present proceeding involves two Complainants bringing a single complaint against a common Respondent. The Complainants have made a request for consolidation and bear the onus of establishing that such a consolidation is justified.
The Panel is satisfied, based on the material filed, that the Complainants have a specific common grievance against the Respondent, in that the Complainants have a common legal interest as related entities that hold and use the COSTCO Mark.
The Panel has considered whether it would be equitable and procedurally efficient to permit the consolidation. In the present case it is no doubt equitable and procedurally efficient.
The Panel finds that it is equitable and procedurally efficient to grant the Complainants’ request for consolidation.
B. Identical or Confusingly Similar
To prove this element the Complainants must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainants’ trade or service mark.
The First Complainant is the owner of the COSTCO Mark, having registrations for the COSTCO Mark as a trademark in the United States. The Domain Name wholly incorporates the COSTCO Mark along with the term “benefit” (and the “.com” generic Top-Level Domain (“gTLD”), which can be discounted as an essential element of any domain name). Other UDRP panels have repeatedly held that “the addition of a generic word to a recognized mark creates a confusing similarity between the domain name and the mark of the [c]omplainant”; see The Bank of Nova Scotia v. Whois Protection, WIPO Case No. D2007-0884. See also Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc., WIPO Case No. D2011-1227.
The Panel finds that the Domain Name is confusingly similar to the Complainants’ COSTCO Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
C. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a 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.”
The Respondent is not affiliated with the Complainants in any way. The Respondent has not been authorized by the Complainants to register or use the Domain Name or to seek the registration of any domain name incorporating the COSTCO Mark or a mark similar to the COSTCO Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial fair use or a bona fide offering of goods and services; the use of the Domain Name for what appears to be a parking page with pay-per-click links related to the Complainant’s medical insurance services does not amount to use for a bona fide offering of goods and services.
The Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has failed to rebut that prima facie case and establish that it has rights or legitimate interests in the Domain Name under the Policy. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainants and their reputation in the COSTCO Mark at the time the Domain Name was registered. The Respondent’s Website offers advertisements for services similar to those offered by the Complainants including one advertisement that makes direct reference to the Complainants’ COSTCO Mark. The registration of the Domain Name in awareness of the COSTCO Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.
The Respondent’s Website offers what appear to be pay-per-click links that refer to both the Complainants and the services they offer to their members and employees. In these circumstances where the Respondent has offered no plausible explanation for the registration of the Domain Name, the Panel finds that that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the COSTCO Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website (Policy, paragraph 4(b)(vi)). As such, the Panel finds that the Domain Name is being used in bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under 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 Domain Name, <costcobenefit.com>, be transferred to the First Complainant.
Date: March 26, 2020