Westmore · UDRP DecisionCostcostory.com
The Panel ordered transfer of <costcostory.com> to Costco Wholesale Membership Inc. It found the domain confusingly similar to the COSTCO mark because it combined that mark with the generic term “story.” The Respondent had no rights or legitimate interests because the unrebutted evidence showed use for a Chinese-language website linking to gambling services, with nothing indicating that the Respondent or website was known as “CostcoStory.” The Panel also found bad-faith registration and use under paragraph 4(b)(iv), concluding that the domain was used to attract Internet users for presumed commercial gain through confusion with the COSTCO mark and websites.
The timeline behind costcostory.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
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The case illustrates application of the UDRP where a registered trademark is reproduced in full, followed by an ordinary word, and the resulting domain is used for commercially oriented content unrelated to the trademark owner. The decision also shows how unrebutted website evidence can support both the absence of legitimate interests and bad faith under paragraph 4(b)(iv).
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Marquita Rivera Case No. D2014-0793 1. The Parties The Complainant is Costco Wholesale Membership Inc., Costco Wholesale Corporation of Issaquah, Washington, United States of America, represented by Law Office of Mark J. Nielsen, United States of America. The Respondent is Marquita Rivera of Lincoln, Nebraska, United States of America. 2. The Domain Name and Registrar The disputed domain name <costcostory.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2014. On May 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 13, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2014. The Center appointed Michelle Brownlee as the sole panelist in this matter on July 4, 2014. 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 Complainant owns numerous registrations for the word mark COSTCO and stylized forms of the mark in connection with retail and wholesale store services in jurisdictions throughout the world, including the following: - United States Registration Number 1,976,242; - United States Registration Number 2,481,924; - Taiwan Province of China Registration Number 153,472; - China Registration 3,422,877; - Hong Kong, China Registration 302,113,587. The Domain Name was registered on January 17, 2014. 5. Parties’ Contentions A. Complainant The Complainant states that it is a recognized world leader in warehouse club merchandizing and related services. The Complainant has operated membership warehouse stores under the COSTCO trademark and trade name since 1983, and currently operates 652 warehouse stores worldwide, including 463 stores in the United States and Puerto Rico, and 189 in Australia, Canada, Japan, Republic of Korea, Mexico, Taiwan Province of China and the United Kingdom of Great Britain and Northern Ireland. The Complainant has 70 million authorized cardholders worldwide and more than 45 million authorized cardholders in the United States. The Complainant is currently the twenty-second largest company in the Fortune 500, the third largest retailer in the United States and the seventh largest retailer in the world. The Complainant owns a number of domain names that incorporate the COSTCO trademark and operates websites at these domain names, including, <costco.com.mx>, <costco.co.jp>, <costco.co.kr>, <costco.com.tw> and <costco.com.au>. The Complainant provides a printout of the Respondent’s website that shows that the Respondent is using the Domain Name to advertise a Chinese-language gambling website, which includes advertisements for and links to many online casinos and other gambling websites as well as forum discussions about online casinos. The Complainant contends that the Domain Name is confusingly similar to its COSTCO trademark, that the Respondent has no rights to or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith. The Complainant argues that the COSTCO mark is a coined term and is not owned by anyone but the Complainant throughout the world. The Complainant argues that the Respondent must have been aware of the Complainant’s rights in the mark due to the fame of the mark, and the only reason the Respondent would have to register the Domain Name would be to profit from the diversion of Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (2) the respondent has no rights to or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has demonstrated that it owns rights in the COSTCO trademark. There are many UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See , e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions , WIPO Case No. D2007-1140 ; Parfums Christian Dior v. 1 Netpower, Inc ., WIPO Case No. D2000-0022 (<christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer , WIPO Case No. D2001-0032 (<leasinglexus.com> and <lexuselite.com> confusingly similar to LEXUS). Accordingly, the Panel finds that the Domain Name, which pairs the COSTCO trademark with the generic term “story” is confusingly similar to the Complainant’s COSTCO trademark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts: (i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name; or (iii) the respondent is 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 at issue. In this case, the Respondent has not presented evidence that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services; that the Respondent is commonly known by the Domain Name; that the Respondent is making a legitimate noncommercial or fair use of the Domain Name; or in any other way refuted the Complainants’ prima facie case. The Complainant has presented evidence, which was not refuted by the Respondent, that the Respondent is using the Domain Name in connection with a Chinese language website that offers links to gambling services, and there is nothing in the website printout to suggest that the name of the Respondent or the Website is “CostcoStory.” This activity cannot, under the circumstances, be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Respondent does not have any rights to or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name at issue primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or (ii) the respondent registered the domain name in order to prevent the owner of the trademark 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 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 its web site or location or of a product or service on its web site or location. The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Complainant has demonstrated that the Respondent is using the Domain Name to promote its gambling website by creating a likelihood of confusion with the Complainant’s COSTCO mark and websites. This activity presumably results in commercial gain to the Respondent. Thus, the Panel finds that the Respondent registered and is using the Domain Name in bad faith. 7. Decision 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 <costcostory.com> be transferred to the Complainant Costco Wholesale Membership Inc. Michelle Brownlee Sole Panelist Date: July 17, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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