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 Li Wei Wei of Weinan, Shanxi, China. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the "Registrar"). 3. Procedural History
The Complaint was filed in English 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 Domain Name. On October 23, 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. On October 23, 2017 the Center sent an email in English and Chinese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on October 25, 2017. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on October 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 21, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on November 24, 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 brand primarily trades. The ASOS group operates an online fashion store at "" together with five language-specific websites and its mobile platforms. The ASOS group also offer a magazine (print and online), social media channels, including Instagram, Facebook and Twitter, and was a partner in the first shoppable Google + hangout.
The ASOS group business was started in 1999 by founders Quentin Griffiths and Nick Robertson. The business was originally called "As Seen On Screen". It started off as an Internet enterprise where customers could source clothing and accessories which they had seen worn or used by stars of television or film. The website platform went live in March 2000 at "". Almost immediately, the business began to be referred to internally as "ASOS" (as an acronym of "As-Seen-On-Screen"). In October 2000 the domain name was purchased by the business. In 2003, the business changed its name and branding from "AsSeenOnScreen" to "ASOS". The ASOS group is now a leading global online fashion and beauty retailer and the UK's largest online-only fashion retailer. It ships to more than 240 countries and territories and sells over 85,000 branded and own label products, with 60,000 pieces of content uploaded every month. As at August 2017, ASOS' annual turnover was over GBP 1,923.6 million. The UK is ASOS group's domestic market and accounts for its largest portion of sales, with total retail sales of 698.2 million as at August 2017. The website at attracted over 1,669 million visits during the first half of the Complainant's Financial Year (August 2016- August 2017). It is the second most visited fashion website in the world. For the first quarter of 2017, the ASOS group accumulated GBP 889.2 million in retail sales, which is a 38% increase from the financial year 2016.
The Complainant's products and services are sold under the trade mark ASOS. It has an extensive trade mark portfolio with registrations all over the world including China, where the Respondent is based. The earliest trade mark registration for ASOS in UK appears to be in 2009 (registration no. 200551698, registered on October 28, 2009) (the "Trade Mark"). The Complainant also owns over 300 domain names which incorporate the mark ASOS.
The ASOS group advertises and promotes its brand through a variety of marketing channels including Internet marketing, social media and magazines. As at September 1, 2017 it has 6.3 million followers on Instagram, 4.9 million "likes" on Facebook, 1.04 million followers on Twitter, 2.4 million followers on Google+ and 583,856K followers on Pinterest. It is reported in the media widely and has won many awards and accolades.
The Respondent is an individual who resides in Shanxi, China. It registered the Domain Name on July 31, 2017. The Domain Name is connected to a website which is an online fashion store bearing the Trade Mark and has photographs of images of clothing which also appear on the Complainant's website (the "Website"). The Website is in English and purports to offer free shipping worldwide. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is identical to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith. 6.2. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits in paragraph IV of the Complaint and its statement on October 25, 2017 that the language of the proceeding should be English. The Complainant contends that the Domain Name is in the English language. The generic Top-Level Domain ("gTLD") of the Domain Name is an ordinary English word "top" which is descriptive of a category of the goods of the Complainant. The Respondent has registered a variety of other ".top" domain names as well as a number of other English language domain names which demonstrates an understanding of the word "top" and the English language generally. The Website is also in English and is targeting customers in English speaking countries by virtue of the currencies used on the Website – Great British pounds. The Complainant further submits if it has to conduct the proceeding in the Chinese language, it will be subject to disproportionate expense and undue delay caused by the cost of translation services and the inconvenience of having to conduct the proceeding in Chinese.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties' ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant's submissions and is satisfied that the Respondent is familiar with the English language. The Respondent has chosen not to respond. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding. 6.3 Substantive Analysis A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to the complainant's trademark. The trade mark would generally have to be recognizable within the domain name. In this case the Domain Names integrate the Trade Mark in its entirety plus a hypen and the descriptive term "outlet." The addition of a hyphen and the descriptive term "outlet" does not negate the confusing similarity encouraged by the Respondent's complete integration of the Trade Mark in the Domain Name. E.g. N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyP,WIPO Case No. D2011-0260; Oakley, Inc. v. Wu bingjie aka bingjie we/ Whois Privacy Protection Service,WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic,WIPO Case No. D2010-0207. If anything because it is descriptive of the products sold by the Complainant, it adds to the confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD even when it is descriptive word as in this case. It is viewed as a standard registration requirement.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non- commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of production always remaining on the complainant.
The Complainant alleges that the Respondent is not commonly known by the Domain Name. The Complainant has no commercial link with the Respondent. It has not granted the Respondent any authorization, licence or any right whatsoever to use the Trade Mark as part of the Domain Name. Nor is the Respondent an authorised dealer, licensee or distributor of the Complainant. It appears to be a reseller of products bearing the Trade Mark at a heavily discounted price.
Paragraph 2.8.1 of the WIPO 3.0 says this:
"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. Outlined in the "Oki Data test", 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 Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant's trademark."
In this case, there is nothing on the Website explaining the relationship between the Complainant and the Respondent. Indeed there is minimal information on the Website about the Respondent. The fact that the Website is offering for sale the Complainant's clothing and accessories and has images from the Complainant's website, does strongly indicate to the Panel that the content of the Website is intended to mislead Internet users that there is a connection between the Complainant and the Respondent. The Panel therefore finds the Oki Data principles are not satisfied in this case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and is used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant's trade mark when he registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name given the reputation of the Complainant. In the WIPO Overview 3.0, paragraph 3.2.2 states as follows:
"Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant's mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant's mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent's claim not to have been aware of the complainant's mark."
Given that the Respondent is selling products bearing the Trade Mark and using images belonging to the Complainant, it is clearly inconceivable that the Domain Name was selected by the Respondent without the Complainant in mind. As outlined under the second element above, the clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent's choice of the Domain Name is also a significant factor to consider (as stated in 3.1.1 of WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The Panel also concludes that the actual use of the Domain Name is also in bad faith. The use of the Trade Mark as the dominant part of the Domain Name is intended to capture Internet traffic from Internet users who are looking for the Complainant's products. The Domain Name and the content of the Website are calculated to confuse Internet users that the Respondent is somehow connected to the Complainant when this is not the case. It is also likely that the goods sold on the Website are counterfeit given that they are heavily discounted. There are no contact details on the Website which could suggest that personal data and credit card details entered by customers could potentially be collected and used for nefarious purposes. The lack of response by the Respondent is another indicator or typical cybersquatter behaviour. There is a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Website and the products sold on them were authorised or endorsed by the Complainant.
The above is clearly bad faith under paragraph 4(a)(iv) of the Policy and the Panel concludes that the Respondent's registration and use of the Domain Name is in bad faith.
In addition to the above, the Respondent also registered the following domain names which correspond to the distinctive marks of individual brand owners:
Abercrombie & Fitch
Adidas
Balmain
Nike
The above is an indication that it is engaged in a pattern of bad faith conduct (Section 3.1.2 of WIPO Overview 3.0).
The Panel determines that the Domain Name was registered and used in bad faith. 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 Domain Name, be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: November 27, 2017
Full & Egal Universal Law Academy