WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Perfect Privacy, LLC / Apparel Label Company

Case No. D2020-2238

1. The Parties

The Complainant is Costco Wholesale Membership Inc. and Costco Wholesale Corporation, United States of America (“United States”), represented by Law Office of Mark J. Nielsen, United States.

The Respondent is Perfect Privacy, LLC, United States / Apparel Label Company, United States.

2. The Domain Name and Registrar

The disputed domain name <costcosupplierlabels.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2020. On August 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 8, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 8, 2020.

The Center verified that the Complaint together with the amendment to 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 September 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2020.

The Center appointed Evan D. Brown as the sole panelist in this matter on October 20, 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 in the business of providing warehouse club merchandizing and related services. It owns the COSTCO trademark, which is the subject of, among other things, United States Registration No. 1,318,685, registered on February 5, 1985.

The Respondent registered the disputed domain name on March 25, 2019. As of the date of the Complaint, the Respondent was using the disputed domain name to publish a website in connection with a business that appears to provide labels for products sold at the Complainant’s stores. The website features photographs of the Complainant’s goods offered for sale, and drawings and photos of labels. A user can apparently submit information in furtherance of a potential purchase of labels. Notably, the website contains the following language:

Welcome to Costco Supplier Labels.com.

Our 3 Promises

We guarantee buyer approval
We guarantee lowest cost delivered to your factory
We guarantee to meet your delivery date
Your Costco-required labels on-time, under budget, every order

Near the bottom of the page is the following:

Costco Supplier Labels.com
A division of Dynamic Labels Inc
Phone 888-646-COSTCO

5. Parties’ Contentions

A. Complainant

The Complainant did not authorize the Respondent to register the disputed domain name, nor did it authorize the Respondent to provide the goods and services advertised and available at the website appearing at the disputed domain name.

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has 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.

The Panel finds that all three of these elements have been met in this case.

A. Identical or Confusingly Similar

The Complainant clearly has rights in the mark COSTCO, evidenced by the registration certificate for that mark. The disputed domain name, for purposes of this first element, is confusingly similar to the Complainant’s mark. The addition of “supplier” and “labels” within the disputed domain name does not prevent a finding of confusing similarity. Accordingly, the Complainant has succeeded under this first element of the Policy.

B. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.

On this point, the Complainant asserts that the Respondent:

- has no legitimate interest in any domain name, trademark or trade name incorporating or confusingly similar to the COSTCO trademark,

- has not used the disputed domain name in connection with a bona fide offering of goods or services,

- 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 Respondent has not introduced any of its own evidence to contradict these assertions.

UDRP panels have recognized that service providers using a domain name containing a complainant’s trademark to undertake sales related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

The Panel has applied the Oki Data test to the facts of this case and finds that the circumstances do not warrant the finding of a bona fide offering of goods and services. The first, second, and fourth Oki Data factors appear to be met. There is no indication the respondent is not actually offering labels for use on products sold at the Complainant’s stores. And there are no other goods or services other than what appear to be product labels for sale. Nothing in the record indicates the Respondent has tried to “corner the market” in domain names the reflect the COSTCO trademark.

But the Panel cannot find that the website accurately and prominently discloses the Respondent’s relationship with the Complainant.

A reasonable, ordinary observer looking at the Respondent’s website may be led to conclude that the Respondent is a third party, independent of the Complainant. The logo at the top of the page is of a different style than the Complainant’s logo. The promise on the website of “we guarantee buyer approval” might mean “we guarantee Costco approval,” but one cannot be certain. There is a certain subtle aspect about the experience one has when looking at the Respondent’s website to lead to the conclusion that it is not a Costco-provided website, but the site of an independent supplier.

At the same time, there are indications the website has been designed to show endorsement, approval or some other form of affiliation with the Complainant. It uses photos of legitimate looking goods and labels. And the phone number at the bottom of the page, 888-646-COSTCO, smacks of legitimacy and approval by the Complainant. So, there is likewise reason for one to believe that the website is not a third party endeavor.

In any event, for a Respondent to succeed under the Oki Data test, the facts must show accurately and prominently what the Respondent’s relationship with the Complainant is. Unfortunately for the Respondent, there is no such accurate and prominent showing here. One has to engage in guesswork to ascertain the relationship, and guesswork is not the province of one seeking accurate and prominent information.

Accordingly, the Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not come forth with evidence to rebut that showing. The Complainant has satisfied this second element of the Policy.

C. Registered and Used in Bad Faith

The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [respondent’s] website or location”.

Because the Complainant’s COSTCO mark is well known, and because it appears the Respondent provides goods and services targeted toward the Complainant’s goods and services, the Panel finds that the Respondent was aware of the COSTCO mark when it registered the disputed domain name. The Panel finds, on these facts, that the Respondent targeted the Complainant and its COSTCO mark when it registered the disputed domain name. These facts show bad faith registration of the disputed domain name. Bad faith use is shown from the Respondent’s activities of using the disputed domain name to set up an online business branded in a way that could lead web visitors to think such online business was provided by the Complainant. The Complainant has successfully established the third Policy element.

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 name <costcosupplierlabels.com> be transferred to the Complainant Costco Wholesale Membership, Inc.

Evan D. Brown
Sole Panelist
Date: November 3, 2020