The Complainant is ASOS plc of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom.
The Respondent is Li Pinglong of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2017. On January 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 12, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2017.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on February 23, 2017. 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 the parent company of the ASOS group of online fashion retail companies which includes the subsidiary ASOS.com Ltd under which the ASOS trademark is primarily traded. It is the owner, amongst several others, of the following trademark registrations:
- United Kingdom Trademark Registration No. UK00002530115 for the word mark ASOS with priority date from October 28, 2009, and
- Chinese Trademark Registration No. 8762977 for the word mark ASOS registered on November 21, 2011.
The disputed domain name was registered on April 20, 2016 and was used in connection with a website operating as an online fashion store. Currently, no active webpage resolves from the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant asserts to have initiated its activities in 1999 when the business was originally called “As Seen On Screen” based on the idea of providing Internet users products (such as clothing and accessories) seen on television or films. The acronym “ASOS” started being used in 2000 and is now the group’s trademark and name. According to the Complainant as at August 2016 the Complainant’s website attracted over 12.7 million active customers, being the second most visited fashion website in the world, having attracted over 1.34 billion visits.
The Complainant further asserts that the disputed domain name is confusingly similar to its coined and highly distinctive through use ASOS trademark. The suffix “ed” in the disputed domain name, under the Complainant’s view, does not disassociate it from the Complainant or the Complainant’s trademark in any sufficient manner since the average Internet user would be accustomed to seeing them used to indicate the past tense of a particular action and would not understand these letters to denote any distinctive character in themselves.
As to the absence of rights or legitimate interests, the Complainant argues that:
i. the Respondent is not and has not been commonly known by the disputed domain name, nor holds any rights over such expression;
ii. the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names;
iii. the website that resolved from the disputed domain name operated as an online fashion store, in direct competition to the services for which the Complainant uses its ASOS trademark what cannot characterize a legitimate noncommercial or bona fide use of the disputed domain name.
The registration and use of the disputed domain name in bad faith arises from the Respondent’s use of the disputed domain name who intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established rights in the ASOS trademark.
The disputed domain name includes the Complainant’s trademark in its entirety. The addition of the “ed” suffix does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.
The first element of the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non‑exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark or service mark rights; 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 or service mark at issue.
In that sense, the Complainant indeed states that no permission to use the Complainant’s trademarks in any manner, including in domain names, was given to the Respondent.
Also, the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with a finding as to the absence of a right or legitimate interest.
The Respondent’s use of the disputed domain name in connection with an online fashion store, in direct competition to the Complainant’s notable website cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert the Complainant’s consumers. Currently no active website resolves from the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the Respondent’s webpage which operated as an online fashion store, in direct competition with the Complainant and, to a certain extent with a similar layout to that of the Complainant’s webpage.
The Respondent’s use of the disputed domain name not only clearly indicates full knowledge of the Complainant’s trademark but also an attempt of misleadingly diverting consumers for its own commercial gain.
Other factors corroborate a finding of bad faith such as wrong information in the WhoIs records (non-existing address relating to the Respondent), non-active email addresses and the absence of any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate good faith in the registration or use of the disputed domain name. Moreover, in the circumstances of this case, the current passive holding of the disputed domain name is further evidence of bad faith.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name. 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 be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: March 2, 2017
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