DECISION

 

Costco Wholesale Corporation v. Muhammad Sufyan Afzal

Claim Number: FA2603002210260

 

PARTIES

Complainant is Costco Wholesale Corporation ("Complainant"), represented by David K. Caplan, of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Muhammad Sufyan Afzal ("Respondent"), Hungary.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <kirkland-golf.com>, registered with DreamHost, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Jeffrey M. Samuels, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 13, 2026; Forum received payment on March 13, 2026.

 

On March 16, 2026, DreamHost, LLC confirmed by e-mail to Forum that the <kirkland-golf.com> domain name is registered with DreamHost, LLC and that Respondent is the current registrant of the name. DreamHost, LLC has verified that Respondent is bound by the DreamHost, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On March 16, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 2026, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@kirkland-golf.com. Also on March 16, 2026, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts.

 

A timely Response was received and determined to be complete on April 6, 2026.

 

On April 6, 2026, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Jeffrey M. Samuels as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant Costco Wholesale Corporation is a global pioneer in warehouse club merchandising, operating a network of 914 stores worldwide and boasting a membership base of approximately 145 million cardholders.

 

Complainant owns multiple trademark registrations around the world for its KIRKLAND SIGNATURE marks. Such registrations include United States Registration Nos. 2201547, 3435834, and 5814343. Complainant has used its KIRKLAND SIGNATURE marks since at least as early as 1992 on a wide variety of products, including sporting equipment, sold in warehouses and online at costco.com, as well as numerous third-party sites. United States Registration No. 5814343 includes in its identification of goods clause "golf balls and golf gloves." 

 

The disputed domain name, <kirkland-golf.com> was created on September 8, 2025. It resolves to a website that uses the KIRKLAND SIGNATURE marks to offer or promote for sale golfing products that are from the "Trusted Costco Brand." The website indicates that such products are "Backed by Costco's reputation." When users click on the "Check Price" button for any listed products, they are redirected to Amazon affiliate links to secondary market listings of Complainant's golf products.

 

Complainant alleges that the disputed domain name is identical or confusingly similar to its KIRKLAND SIGNATURE marks. It notes that the disputed domain name incorporates the term "Kirkland," which is the dominant term in Complainant's mark. Complainant indicates that the incorporation of the generic or descriptive term "gold" in the disputed domain name does not effectively distinguish it from Complainant's marks.

 

Complainant further argues that Respondent has no rights or legitimate interests in the disputed domain name. It indicates that no relationship exists between the parties, that Respondent has no rights to own or use any domain name that incorporates the KIRKLAND SIGNATURE marks, and that there is no evidence that Respondent is commonly known by the disputed domain name.

 

Complainant contends that Respondent is not using the disputed domain name for bona fide offerings of goods or services or for making a legitimate noncommercial or fair use of the disputed domain name. "Instead, Respondent is using the Infringing Domain name and the offer of Complainant's products to redirect users to affiliate links for Respondent's commercial gain."

 

With respect to the issue of "bad faith" registration and use, Complainant asserts that Respondent's registration of the disputed domain name long after Complainant first uses its KIRKLAND SIGNATURE marks "is sufficient to satisfy the bad faith requirement."  Further, Complainant complains, the fact that "Respondent deliberately refers to Complainant and Complainant's KIRKLAND SIGNATURE Marks to divert internet traffic to Respondent's own affiliate links for financial gain also constitutes bad faith under the policy." Complainant maintains that Respondent's references to Complainant throughout the website in issue "indicates Respondent's intent to attract users to the Infringing Website by creating confusion with Complainant's mark as the source of Respondent's website."  

 

B. Respondent

Respondent contends that the disputed domain name is not identical or confusingly similar to the KIRKLAND SIGNATURE marks because it does not incorporate the term "signature."

 

Respondent indicates that it has a legitimate interest in the disputed domain name as it "registered and used <kirkland-golf.com> as an independent affiliate and informational website that reviewed and listed golf products sold under the Kirkland brand. The site provided genuine product information to consumers and linked to legitimate product listings. This constitutes a bona fide use of the domain. Respondent is not an impersonator of Costco and was not selling counterfeit goods."

 

Respondent further denies that the disputed domain name was registered or used in bad faith. "Respondent did not register the domain with the intent to sell it to Complainant or any competitor. Respondent did not register the domain to disrupt Complainant's business. The domain was registered for the purpose of building a legitimate affiliate review website about Kirkland's golf products, which are genuine products available to consumers."

 

FINDINGS

The Panel finds that: (1) the disputed domain name is confusingly similar to the KIRKLAND SIGNATURE mark; (2) Complainant has rights in the KIRKLAND SIGNATURE mark; (3) Respondent has rights or legitimate interests in the disputed domain name; and (4) the disputed domain name was not registered and is not used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)       the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)       Respondent has no rights or legitimate interests in respect of the domain name; and

(3)       the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

The Panel concludes that the disputed domain name is confusingly similar to the KIRKLAND SIGNATURE mark. The disputed domain name incorporates in full the term "kirkland." The fact that the disputed domain name does not also incorporate the term "signature" does not avoid a finding of confusing similarity since the domain name incorporates a dominant feature of the mark that is recognizable in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions 3.1(hereinafter "WIPO Overview 3.1.") ¶1.7. The inclusion in the disputed domain name of the generic term "golf" fails to distinguish the disputed domain name from the KIRLKLAND SIGNATURE mark.

 

The case file indicates that Complainant, through its multiple trademark registrations for the KIRKLAND SIGNATURE mark around the world, including those mentioned above, has rights in the mark. See WIPO Overview 3.1, ¶1.2.1 ("Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.").

 

Rights or Legitimate Interests

Respondent asserts that he is making a bona fide use of the disputed domain name. The disputed website indicates that Respondent is an Amazon Associate and, thus, Respondent earns a commission when one buys through links to the disputed website.

 

As noted in the WIPO Overview 3.1. ¶ 2.8.1, "Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant's trademark to undertake sales or repairs 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."  The WIPO Overview refers to the four-part test first set forth in 2001 in Oki Data America, Inc. v. ASD Inc, WIPO Case No. 2001-0903, as the applicable standard to determine whether a reseller or distributor has established a legitimate interest in the disputed domain name.

 

The precise issue before the Oki Data panel was "whether an authorized sales or service agent of trademarked goods can use the trademark at issue in its domain name." In this connection, Complainant asserts that Respondent "is not an authorized seller, distributor, or licensee of Complainant's products" and that Complainant "has not granted the Respondent any rights to uses its trademark(s)…."  Respondent makes no claim that Complainant authorizes him to use Complainant's mark as part of the disputed domain name. The Panel notes, however, that other UDRP panels have applied the Oki Data criteria even where the complainant has not authorized the respondent to use the trademark in issue in its domain name. See, e.g., Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447; Dr. Ing. h.c.F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481. The Panel concludes that the Oki Data analysis has some relevance to resolution of this dispute.

 

As noted above, Oki Data sets forth a four-part test to determine if a respondent has established a legitimate interest in the disputed domain name under the Policy. As set forth in WIPO Overview 3.1, ¶2.8.1, the relevant factors to consider are as follows:

 

1.       The respondent must actually be offering the goods or services at issue;

2.       The respondent must use the site to sell only the trademarked goods or services;

3.       The site must accurately and prominently disclose the respondent's relationship with the trademark owner; and

4.       The Respondent must not try to "corner the market" in domain names that reflect the trademark.

 

With respect to the first factor, the disputed website indicates that Respondent, as an Amazon Associate, earns a commission when one buys through links at the site. Thus, it may be held that Respondent, in facilitating a sale, is offering the goods at issue.

 

Moving on, the disputed website apparently offers only KIRKLAND brand gold clubs and related equipment for sale. 

 

The website also discloses, accurately, that "Kirkland is a trademark of Costco Wholesale Corporation. This website is not affiliated with, endorsed by, or sponsored by Costco." The website also states that Kirkland Golf [, the name under which Respondent apparently conducts business], is an "independent resource for Kirkland golf balls, clubs, and gear, trusted by golfers worldwide."  

 

While the disclaimer of non-affiliation is only found on the last page of the website, the Panel notes that in 2025, in the so-called "Lost Mary" case, the panel reformulated the Oki Data criteria and indicated that the presence of a disclaimer is not required to establish legitimate interests, although, in reformulating the Oki Data criteria, the "Lost Mary" panel stated that any disclaimer should be on the disputed website's home page.

 

The "Lost Mary" panel adopted a "broader" rule than that stated in Oki Data. According to the "Lost Mary" panel, a "[r]espondent should do anything to assure that there is no confusion possible to distinguish its website from that of the trademark owner. This can be done in various ways, e.g., by mentioning a disclaimer on the website. The disclaimer should though not be interpreted as a strict criterium sine qua non, as the distinction can also be executed in different ways. Any clarity given about the origin of the website is sufficient for demonstrating fair use."

See Dashing Joys Ltd v. Mohammed Zafar, UDRP 107605 (CAC July 16, 2025).

 

As noted in the July 30, 2025 (Volume 5.30) issue of the Internet Commerce Association, "a modified version of the Oki Data test has been adopted by some panelists that adopt a more holistic approach to the Oki Data criteria under which "the absence of a specific disclaimer isn't fatal to a reseller's legitimate interest." (see https://www.internetcommerce.org/udrp-case-summaries/panel-reformulates-oki-data-test-and-proposes-lost-mary-criteria-vol-5-30.) In this case, as pointed out above, the disputed website includes a specific disclaimer of affiliation with Complainant, albeit on the last page of the site and in the same font size as the surrounding text. However, the Panel refers to some recent UDRP decisions that found the existence of legitimate interests under the Policy where the respondent's website lacked any disclaimer until the case was filed. See, Textron Innovations Inc. v. Joerg Dogondke, FA 2151258 (Forum May 20, 2025); Doosan Bobcat North America, Inc. v. mohit jagwani, engine word usa, WIPO Case No. D2024-3191.

 

In sum, the Panel finds that the disclaimer adopted by Respondent in this case, whether viewed by a strict application of Oki Data or under a broader or more holistic approach, provides some support for a finding of the existence of legitimate interests under the Policy.

 

The case file provides further and firmer support for such a determination. First, as conceded by Complainant, when one clicks on the links found on Respondent's website, one is redirected to Amazon affiliate links to secondary market listings of Complainant's golf products. Thus, the products sold through use of Respondent's site appear to be genuine KIRKLAND SIGNATURE brand products. Respondent's references to "Trusted Costco Brand" and "Backed by Costco's reputation, Kirkland golf gear ensures consistency, availability, and peace of mind" thus appear truthful.

 

Further, applying the factors set forth in WIPO Overview 3.1, ¶ 2.5.2, it appears that the disputed domain name was registered and is being used in connection with legitimate purposes, i.e., as part of the Amazon Affiliate program; there is no evidence that Respondent is engaged in a pattern of registering domain names corresponding to marks owned by Complainant¹ or third parties; and there appears to exist an actual connection between Complainant's trademark in the disputed domain name and Respondent's website content. Moroever, Respondent's assertion of legitimate interests appears genuine and well-founded.

 

The Panel believes this may be the first UDRP case to apply an Oki Data-type or modified Oki Data-type analysis to a case involving a commercial affiliate site. The Panel is also aware that use of the disputed domain name, considered by itself, may suggest an affiliation with Complainant and that Respondent, as it freely admits, earns revenue from the disputed site. But so does a re-seller or service/repair operation.  

 

Admittedly, there is an open question regarding the adequacy of the steps Respondent has taken to avoid confusion – and these may ultimately be decided in a courtroom setting – but, on the present record, the facts narrowly tip the preponderance of evidence standard in Respondent's favor on the question of rights or legitimate interests. See Fluke Corp. v. Erwin Bryson/fixmyfluke/Nelson Bryson (majority opinion) FA 1988399 (Forum July 6, 2022). 

 

Registration and Use in Bad Faith

In view of the above determination on the issue of rights or legitimate interests, the Panel concludes that the disputed domain name was not registered and is not being used in bad faith.

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <kirkland-golf.com> domain name REMAIN WITH Respondent.

 

 

 

Jeffrey M. Samuels, Panelist

Dated: April 20, 2026