Costco Wholesale Membership, Inc. v. Songyuan Songyuan
Claim Number: FA1610001697262




   Complainant: Costco Wholesale Membership, Inc. of Issaquah, WA, United States of America
Complainant Representative: The GigaLaw Firm, Douglas M Isenberg, Attorney at Law, LLC Douglas M Isenberg of Atlanta, GA, United States of America

   Respondent: Songyuan Songyuan Songyuan Songyuan of Hiroshima, WG, II, JP


   Registries: Jiangsu Bangning Science & Technology Co.,Ltd.
   Registrars: Chengdu west dimension digital


   The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
   Ho-Hyun Nahm, as Examiner


   Complainant Submitted: October 7, 2016
   Commencement: October 11, 2016
   Default Date: October 26, 2016
   Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").


   Complainant requests that the domain name be suspended for the life of the registration.


   Clear and convincing evidence.


   Findings of Fact: [OptionalComment]


Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

[URS] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant 

Complainant prevailed on (i) in that the Complainant holds a valid national or regional registration and that is in current use. The record makes clear that “the Complainant holds valid national registrations for the mark “COSTCO” U.S. Reg. No. 1,318,685 (registered February 5, 1985) for use with “distributorship services in the field of discount general merchandise for participating members,” and that it is in current use,” and that the mark “COSTCO” is confusingly similar to the second-level portion of the disputed domain name, as required by paragraph of the URS. Accordingly, Complainant has satisfied the first element of the URS.

[URS] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 

Complainant contends that Registrant has no legitimate right or interest in domain name. Complainant further contends that it is obvious Registrant has made no demonstrable preparations to use domain name in connection with a bona fide offering of goods or services (given Registrant’s use of domain name to sell products also sold by Complainant – although, notably, Complainant believes that Registrant’s products are counterfeit); Registrant is not commonly known by the domain name (indeed, the Whois record shows that Registrant is known as “Songyuan Songyuan”); and, by using domain name in connection with a website selling competing goods, Registrant is obviously not making a legitimate noncommercial or fair use of the domain. In the absence of proper Response to Complainant's claims, Examiner agrees with Complainant. Therefore, the Examiner finds that the Complaint meets URS requirement of

[URS] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or 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 documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site 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 Registrant’s web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant 

Examiner notes from Complainant's allegations that Complainant's marks are well known and have good reputation around the world. Complainant has submitted reliable evidence showing that by registering and using domain name in connection with a website that sells (seemingly counterfeit) shoes in competition with Complainant, Registrant has created a “likelihood of confusion” in violation of paragraph of the URS. Given the circumstances above, Examiner holds that Respondent registered and is using the disputed domain name in bad faith. Therefore, the Examiner finds that the Complaint meets URS requirement of


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:

  1. The Complaint was neither abusive nor contained material falsehoods. 


After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

  1. costco-eshop.top


Ho-Hyun Nahm
Dated: October 27, 2016



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