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 Francis King of Los Angeles, California, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2017. On November 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 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 November 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2017.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on December 13, 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 October 15, 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 United Kingdom’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 GBP 2 billion. It owns over 300 ASOS related domain names over various Top-Level Domain names. 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 October, 2017.
The Complainant is the owner of many trade mark registrations consisting of or including the word “ASOS” which has been registered in many countries throughout the world including United Kingdom Registration No. 2530115 registered since December 7, 2012.
The Complainant’s ownership and reputation in its ASOS trade mark has been recognized in many prior decisions under the Policy. It has so far been the successful Complainant in 15 complaints under the Policy which have been filed with the Center.
According to the WhoIs record for the disputed domain name, the Respondent is an individual located in Los Angeles, California, United States. The written notice of the Complaint could not be delivered to the Respondent at the address shown in the WhoIs for the disputed domain name. The disputed domain name does not resolve to an active website. It is used for an email address. According to the Complainant, on October 10, 2017, using a typo-squatted variation of the suppliers address, the Respondent infiltrated a chain of email correspondence between the Complainant’s accounts department and one of the Complainant’s suppliers relating to payment of outstanding accounts and disclosing bank account details of the supplier. The Respondent registered the disputed domain name and thereafter used it and the typo-squatted variation of the suppliers’ domain name, continued the correspondence imitating personnel of the Complainant and of the supplier.
Reverse WhoIs evidence provided by the Complainant shows that the Respondent is the owner of several domain names which include the well-known trade marks of third parties such as LINKEDIN and SUBARU. 5. Parties’ Contentions A. Complainant
The Complainant’s submissions may be summarized as follows:
- The Complainant has well established and widely recognised rights in the trade mark ASOS dating from well before the creation of the disputed domain name.
- The Complainant’s rights and reputation in the trade mark ASOS have been recognized in many prior decisions under the Policy.
- The disputed domain name includes, wholly, the Complainant’s trade mark ASOS.
- The Complainant is a United Kingdom fashion retailer and the addition of the descriptive word “ukfashion” does not serve to distinguish the disputed domain name from the Complainant’s ASOS brand. Accordingly the relevant assessment is between ASOS and ASOS.
- 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.
- There is no believable or realistic reason for registration of the disputed domain name other than to take advantage of the Complainant’s rights.
- 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 Respondent is using the disputed domain name as an email address at which it impersonates the Complainant and members of the Complainant’s staff for the purpose of obtaining information about outstanding remittances with a view to diverting monies due to the supplier to a bank account connected to the Respondent.
- The Respondent has registered the disputed domain name to prevent the Complainant from reflecting its trade mark on a corresponding domain name and for the purpose of disrupting the business of the Complainant.
- The Respondent 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 descriptive words “UK” and “fashion” 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 and subsequent use of the disputed domain name must have been made in the light of knowledge of the Complainant’s mark and reputation. The Respondent has not used the disputed domain name at an actual website or otherwise in relation to the bona fide offering of goods or services but rather has used it in an attempt to perpetrate a fraud. The Complainant has not authorised the Respondent to use the disputed domain name and there is no suggestion that the Respondent is commonly known by it.
The Complainant has 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 two 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 descriptive words “UK” and “fashion”. The Complainant is a United Kingdom company and fashion is the field in which it operates. 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 Respondent in mind. The disputed domain name was registered shortly after the Respondent had infiltrated the Complainant’s email correspondence with its supplier and was used thereafter to impersonate the Complainant and its employees. Such use is clearly fraudulent and constitutes use for commercial purposes by the Respondent to create a likelihood of confusion with the Complainant’s mark as to the source of emails sent from that address. Such conduct falls squarely within paragraph 4(b)(iv) of the Policy and is obviously in bad faith.
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
Sole Panelist
Date: December 20, 2017
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