WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Price Costco International, Inc. v. Huynh Van Duc

Case No. D2020-0321

1. The Parties

The Complainant is Price Costco International, Inc., United States of America (“US”), represented by BMVN International LLC, Viet Nam.

The Respondent is Huynh Van Duc, Viet Nam.

2. The Domain Names and Registrar

The disputed domain names <sieuthicostco.com> and <sieuthicostco.net> (“Disputed Domain Names”) are registered with P.A. Viet Nam Company Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2020. On February 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 28, 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 Registrar also indicated that the language of the Registration Agreement was Vietnamese. The Center sent an email communication in English and Vietnamese, to the Complainant on March 3, 2020, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into Vietnamese, or a request for English to be the language of proceeding. The Complainant filed a request for English to be the language of proceeding on the same day. The Respondent did not comment on the language of proceeding.

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 in English and Vietnamese, of the Complaint, and the proceedings commenced on March 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2020. In response to the latter, the Center received from the Respondent an informal communication in English and Vietnamese.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on April 6, 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 Complainant is an American corporation which specializes in warehouse club merchandizing and related services. Since 1983, the Complainant has operated membership warehouse stores under the COSTCO trademark and trade name.

Currently, the Complainant operates 785 warehouse stores and has more than 95 million authorized cardholders worldwide. In fiscal year 2019, the Complainant had USD 149 billion in sales. The Complainant is currently the 15th largest company in the Fortune 500, and is the second largest retailer in the world.

The Complainant owns numerous trademark registrations for COSTCO trademark in Class 35 for retail and wholesale trading services in various jurisdictions throughout the world, including, but not limited to, the US, European Union, Canada, Japan, Republic of Korea and China. The Complainant obtained its first US trademark registration for COSTCO under trademark No. 1318685, registered on February 5, 1985, for distributorship services. In Viet Nam, where the Respondent resides, the COSTCO trademark has been registered for retail and wholesale trading services in Class 35 under Trademark Registrations No. 185633, registered on May 31, 2012, and No. 328023, registered on August 21, 2019.

The Complainant also owns a number of domain names featuring the trademark COSTCO, among which the notable one is <costco.com>.

The Disputed Domain Names were registered on March 8, 2019. As of the date of this Decision, the Disputed Domain Name <sieuthicostco.com> redirected to another website at “www.sieuthicostcos.com”, which promotes foods and health products, while the Disputed Domain Name <sieuthicostco.net> did not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in Paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Names are confusingly similar to a trademark or service mark in which the Complainant has rights.

Firstly, the Complainant contends that it is the owner of the COSTCO trademarks in various countries, including in Viet Nam, where the Respondent resides.

Secondly, the Complainant contends that the Disputed Domain Names are confusingly similar to the marks owned by the Complainant by arguing that:

- The Disputed Domain Names reproduce entirely the registered trademark COSTCO of the Complainant; and

- The addition of the word “sieuthi”, which means “supermarket” in Vietnamese, could not dispel any confusing similarity. On the contrary, this term misleads the Internet users into thinking that the Disputed Domain Names are related to, sponsored by, or affiliated with the Complainant and its services in Viet Nam, when this is not the case.

- Finally, the Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” or “.net” in the Disputed Domain Names does not add any distinctiveness to the Disputed Domain Names.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.

The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled.

First, the Complainant submits that the Respondent has no legitimate interest in any Disputed Domain Name, trademark or trade name incorporating or confusingly similar to the COSTCO trademarks. In fact, the Respondent owns no trademark registration for the Disputed Domain Names or any portion thereof.

Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its COSTCO trademark (or a domain name which will be associated with this trademark).

Third, the Complainant contends that the Respondent used the Disputed Domain Name <sieuthicostco.com> to direct Internet traffic to its website under the Disputed Domain Name, evidencing a clear intent to disrupt the Complainant’s business, deceive consumers, and trade off of the Complainant’s goodwill and reputation by creating an unauthorized association between it and the COSTCO trademarks.

(iii) The Disputed Domain Names were registered and are being used in bad faith.

The Complainant asserts that it is evident from the Respondent’s use of the Disputed Domain Names that the Respondent has been well aware of the Complainant’s COSTCO trademark when registering the Disputed Domain Names. Such knowledge is clearly demonstrated by the fact that the Respondent is offering for sale of different kinds of goods bearing the COSTCO trademarks at its physical store in Ho Chi Minh City, Viet Nam and on the website under the Disputed Domain Name <sieuthicostco.com>.

Secondly, the Complainant submits that the Respondent registered and is using the Disputed Domain Name <sieuthicostco.com> for commercial gain and to profit from the resulting consumer confusion that this Disputed Domain Name is connected with the Complainant and/or that the Respondent and the website under the Disputed Domain Name is somehow connected to or endorsed by the Complainant. Particularly, the website under the Disputed Domain Name has prominently displayed the sign “COSTCO SIÊU THỊ, device” confusingly similar to the Complainant’s trademark “COSTCO WHOLESALE, device” and placed in the website’s title a Vietnamese phrase “Mua hàng Costco chính hãng 100% | Costco Việt Nam” (in English: “Buy Costco’s 100% authentic products | Costco Viet Nam”). Also, the website under the Disputed Domain Name offered for sale many products bearing the mark KIRKLAND SIGNATURE, a well-known brand of Costco, along with COSTCO trademarks.

Regarding the evidence of bad faith registration of the Disputed Domain Name <sieuthicostco.net>, although at the time of submitting this Complaint, the Disputed Domain Name <sieuthicostco.net> does not resolve to any specific website, its simultaneous registration with the other Disputed Domain Name, i.e., <sieuthicostco.com>, shows the Respondent’s clear intention to take advantage of the Complainant’s and its trademarks’ fame and reputation. Moreover, the registration of two Disputed Domain Names at the same time also proves the Respondent’s intention to disrupt the Complainant’s business in Viet Nam. In addition, the Respondent’s failure to make active use of its confusingly similar Disputed Domain Name <sieuthicostco.net> is evidence of bad faith registration and use.

Consequently, the Complainant contends that three elements under the Policy have been established and requests for a transfer of the Disputed Domain Names to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, but it submitted an informal email in both English and Vietnamese: “Nói chung là nên lo chóng dịch covid đi các luật sư ah! Chúc bình an!
Wait and see! to be continued.”

6. Discussion and Findings

A. Procedural Issues

(i) Language of the Proceeding

The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese.

As the Complaint was filed in English, the Center, in its communication dated March 3, 2020, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding.

On March 3, 2020, the Complainant submitted a request that English be the language of the proceeding.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties' level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).

In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:

(i) the fact that the Complainant, an American business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation;

(ii) the English language is quite popular in Viet Nam, where the Respondent is located, and the website under the Disputed Domain Name <sieuthicostco.com> contains English contents; these suggest that the Respondent has knowledge of the English language and will be able to communicate in English;

(iii) the Respondent did not object for English to be the language of the proceeding and did not submit a response in neither English nor Vietnamese.

Therefore, in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.

(ii) The Respondent’s Failure to Respond

The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010‑1413,and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.

B. Identical or Confusingly Similar

The Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Names are identical or confusingly similar to its trademark.

First of all, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights in the term “costco”, well before the Disputed Domain Names were registered.

Second, the Disputed Domain Names comprise the Complainant's COSTCO trademark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Names and the trademark is the addition of the dictionary term “sieuthi” (in English: “supermarket”). The Panel finds that “costco” remains the dominant element in the Disputed Domain Names. It is well established that the addition of a dictionary term (such as “sieuthi”) to a trademark does not prevent a finding of confusing similarity. Thus, in the Panel’s view, the addition of the said term does nothing to distinguish the Disputed Domain Names from the Complainant’s trademark, nor to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., Philip Morris Products S.A. v. Ong Nguyen Ngoc Ha, WIPO Case No. D2019-2509; Facebook, Inc. v. Domain Admin Privacy Protect, LLC (PrivacyProtect.org) / Do Viet Dung, WIPO Case No. D2019-1121).

Third, the Panel finds, similarly to other UDRP panels, that the addition of the gTLDs “.com” or “.net” to the Disputed Domain Names does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Sika AG v. Gia Nhu, Cong Ty Co Phan Truyen Thong Suc Manh Viet, WIPO Case No. D2019-2224; Philip Morris Products S.A. v. Domain Admin, Domain Whois Protection Service / Phan Van Dung, WIPO Case No. D2019-0482).

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant's COSTCO trademark, and the first element of the Policy is established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent's rights or legitimate interests in the Disputed Domain Names for the purposes of paragraph 4(a)(ii) of the Policy, including:

“(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 Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.

The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the complainant, once a prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating his rights or legitimate interests in the disputed domain name (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted for evidence to the contrary.

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant's asserted facts, that no license, permission or authorization of any kind to use the Complainant's trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the trademark COSTCO.

The Panel finds that the Disputed Domain Names comprise the COSTCO trademark in its entirety, adding only the dictionary term “sieuthi”, which means “supermarket” in English. Further the website under this Disputed Domain Name <sieuthicostco.com> displays the sign “COSTCO SIÊU THỊ, device”, which is confusingly similar to the Complainant’s trademark “COSTCO WHOLESALE, device”, while no statement or disclaimer disclosing accurately the relationship between the Complainant and the Respondent is placed.

In addition, the website under this Disputed Domain Name <sieuthicostco.com> contains in its headline the Vietnamese phrase “Mua hàng Costco chính hãng 100% | Costco Việt Nam” (in English: “Buy Costco’s 100% authentic products | Costco Vietnam”), and at the footer, the copyright notice “Copyright © 2020 Siêu thị Costco” (in English: “Copyright © 2020 Costco supermarket”). These headlines and the copyright notice may mislead consumers into believing that there is a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality.

Therefore, the Panel finds that by using the Disputed Domain Name <sieuthicostco.com> in such a manner, the Respondent is attempting to ride on the reputation of the COSTCO trademark, and thus, such use does not constitute a bona fide use within paragraph 4(c)(i) of the Policy.

Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Names, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names. In fact, as it appears following the Complainant's assertions and evidence with regard to the Respondent's registration of the Disputed Domain Names, the Respondent had full knowledge of the COSTCO trademark and had an intention to gain profit by riding on the goodwill and reputation of the Complainant.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, and the second element, paragraph 4(a)(ii) of the Policy is established.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including:

“(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.

The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Names in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.

The Panel further finds that the Complainant’s COSTCO trademarks have been registered in numerous countries. The Complainant’s trademarks have been registered and used in, among other countries, Viet Nam where the Respondent resides. These trademark registrations well predate the registrations of the Disputed Domain Names.

The Disputed Domain Names comprise the COSTCO trademark in its entirety, adding only the dictionary term “sieuthi” (in English: “supermarket”). Given the extensive use of the COSTCO trademark for services of trading foods and health products by the Complainant, which occurs in numerous countries, including in Viet Nam, where the Respondent resides, it is very unlikely that the Respondent registered the Disputed Domain Names in a fortuity. Also, in consideration of the use of the Disputed Domain Name <sieuthicostco.com> and the contents of the website there under, the Panel is of the view that the Respondent obviously knew of the Complainant and its COSTCO trademark when it registered the Disputed Domain Names, and the Panel considers the registrations an attempt by the Respondent as to take advantage of the Complainant’s goodwill.

On the date of this Decision, the Panel accesses the Disputed Domain Name <sieuthicostco.com>, and finds that it redirected to another website at “www.sieuthicostcos.com”. Although the current interface of its associated website is slightly different from the one shown before , but it is well proved and evidenced by the Complainant that the website under the Disputed Domain Name <sieuthicostco.com> prominently displayed the sign “COSTCO SIÊU THỊ, device” confusingly similar to the Complainant trademark “COSTCO WHOLESALE, device” to offer for sale of foods and health products. In addition to the adoption of the Complainant’s COSTCO trademark as a uniquely distinctive part in this Disputed Domain Name, the Respondent used the Complainant’s trademark on the website and falsely represented itself like an affiliate or distributor of the Complainant by the copyright notice “Copyright © 2020 Siêu thị Costco” (in English: “Copyright © 2020 Costco supermarket”) and website’s headline “Mua hàng Costco chính hãng 100% | Costco Việt Nam” (in English: “Buy Costco’s 100% authentic products | Costco Viet Nam”).

The Panel takes the view that any Internet users seeking to purchase the Complainant’s COSTCO services would very likely mistakenly believe that the Respondent is either connected to or associated with the Complainant. However, no such connection exists in fact. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.

It is further noted that as of the date of this Decision, the Disputed Domain Name <sieuthicostco.net> did not resolve to an active website. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. While UDRP panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. (See section 3.3. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel finds that the Complainant has established that the Respondent registered the Disputed Domain Name <sieuthicostco.net> in bad faith. Considering the balance of probabilities, at the time of registration, the Respondent was well aware that the Complainant had an established international reputation in the COSTCO trademark and had established a worldwide presence for its services of trading foods and health products. Furthermore, the Panel is of the view that the Respondent intentionally chose to register Disputed Domain Name <sieuthicostco.net> which comprises the dictionary term “sieuthi” in combination with the Complainant’s COSTCO mark for the same services. Therefore, the Panel finds that the Respondent has engaged in passive holding of this Disputed Domain Name in bad faith.

Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Names were registered and used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established.

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 Disputed Domain Names <sieuthicostco.com> and <sieuthicostco.net> be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: April 17, 2020