The Complainant is ASOS plc of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK"), represented by Stobbs IP Limited, United Kingdom.
The Respondent is Lois Wilson of Dunedin, Alabama, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Web Werks India Pvt. Ltd (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 19, 2017. On October 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 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 October 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 20, 2017.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on December 7, 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 disputed domain name was registered on the June 28, 2017.
The Complainant's business was established in 1999 as an Internet enterprise through which customers could source products such as clothing and accessories, examples of which had been seen on film or television. It was originally called "As Seen on Screen" which name was later changed to "ASOS". The Complainant, ASOS plc, was incorporated in August, 2003. The Complainant is the owner of the domain names and through which it conducts its online business. The Complainant claims to be a leading global online fashion and beauty retailer and the UK's largest online fashion retailer. It claims to ship to more than 240 countries and territories and to sell over 85,000 branded and own label products, with an annual turnover of almost GBP2 billion. It owns over 300ASOS-related domain names under various Top-Level Domain name registries. The ASOS brand is heavily promoted through Internet marketing and social media including Instagram, Facebook, Google and Pinterest. It has been widely reported in the media and has received several awards and accolades including the 2015 Cosmopolitan Fashion Awards Best Online Offering. All of these activities predate the registration of the disputed domain name in June, 2017.
The Complainant's ownership and reputation in its ASOS trade mark. It has an extensive trade mark portfolio with registrations all over the world. The Complainant has been recognized in many prior decisions under the Policy. It has so far been the successful Complainant in 14 complaints under the Policy which had been filed with the Center.
The disputed domain name comprises the Complainant's trade mark and also the name of another global fashion industry brand, Chi Chi London. Chi Chi London is a supplier of fashion products available for purchase from the Complainant's "www." website.
According to the WhoIs record for the disputed domain name, the Respondent is an individual located in Alabama, United States of America. At the time of filing of the Complaint, the disputed domain name resolved to a website prominently featuring the Complainant's ASOS trade mark and purporting to offer for sale dresses by Chi Chi London at substantially discounted princes and links to the Complainant's website displaying images which the Complainant asserts are reproductions of images in which it owns copyright. The disputed domain name does not currently resolve to an active website.
The Complainant is the owner of many trade mark registrations consisting of or including the word term "ASOS" which had been registered in many countries throughout the world including United Kingdom Registration No. 2530115 registered since December 7, 2012. 5. Parties' Contentions A. Complainant
The Complainant's submissions may be summarized as follows:
- The disputed domain name includes, wholly, the Complainant's trade mark ASOS in which it has strongly established and widely recognized rights.
- The addition of the words "Chi Chi London" and "Dress" can be clearly associated with the Complainant as Chi Chi London is a supplier of fashion products, including dresses, which are available at the Complainant's website. The addition of those words do not serve to disassociate the disputed domain name from the Complainant's ASOS brand. It is well recognised that the addition of the generic Top-Level Domain ".com" does not serve to distinguish the disputed domain name from a Complainant's trade mark.
- At the time of creation of the disputed domain name in June, 2017, the Complainant's reputation in its ASOS trade mark was already well established and widely known. It is not possible for the Respondent to have been unaware of the ASOS brand at the time of registering the disputed domain name.
- The Complainant has not authorised the Respondent to use its trade mark in the disputed domain name or otherwise and to the best of the Complainant's knowledge, the Respondent has not been known by the disputed domain name.
- The Complainant submits that the Complainant's registration and use of the disputed domain name falls within each of the circumstances enumerated in paragraph 4(b) of the Policy. The Respondent has registered and used the disputed domain name; for the purpose of selling it to the Complainant, to prevent the Complainant from reflecting its mark in a corresponding domain name, for the purpose of disrupting the business of a competitor, and is attempting to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant's mark. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has provided evidence of many registrations of its trade mark ASOS dating back many years prior to the date of registration of the disputed domain name and has also provided evidence of widespread use of that trade mark. The disputed domain name wholly includes, and commences with, the Complainant's trade mark. The addition of the trade mark of another well known fashion designer and the descriptive word "dress" do not serve to disassociate the disputed domain name from the Complainant's trade mark. As noted in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") section 1.7, where the disputed domain name incorporates the entirety of a trade mark, the domain name will normally be considered confusingly similar to that mark for the purposes of the Policy.
The Panel therefore finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. The first element of the Policy is therefore satisfied. B. Rights or Legitimate Interests
As further discussed in section 6C below, the Respondent's selection of the disputed domain name must have been made in the light of knowledge of the Complainant's mark and reputation. Its subsequent use to attract Internet users to its own website offering the same goods as those in which the Complainant trades cannot be regarded as use of the disputed domain name in relation to the bona fide offering of goods or services. That may be so even in cases such as this where the Respondent's website provides a link to the Complainant's site. See WIPO Overview 3.0, section 3.1.4.
The Complainant has clearly established a prima face case which the Respondent has not attempted to rebut.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second element of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
The disputed domain name comprises three parts. First the Complainant's trade mark which is an invented word formed from the acronym for the Complainant's previous name "As Seen on Screen". The second part comprises the name and trade mark of another prominent operator in the fashion industry with whom the Complainant trades, and the third part comprises the descriptive word "dress" which is a principal commodity in which the Complainant trades. It is not conceivable that the Respondent could have chosen to include the Complainant's well-known trade mark in the disputed domain name without having the Complainant in mind and without the intention to trade, one way or another, on the value and reputation of the Complainant's mark as part of the disputed domain name.
Evidence provided by the Complainant of the Respondent's subsequent use of the disputed domain name to direct to a website purporting to offer goods, namely dresses, the same as and in competition with those offered by the Complainant and using reproductions of images in which the Complainant claims copyright clearly indicates an intention on the part of the Respondent to create a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website and of the products there offered. Such conduct falls squarely within paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the disputed domain name has been registered and has been used in bad faith. The third element of the Policy is thereby satisfied. 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.
Desmond J. Ryan AM
Sole Panelist
Date: December 21, 2017
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