WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION ASOS PLC v. Page 7 Media Ltd Case No. DIE2010-0003 1. The Parties
The Complainant is ASOS PLC of London, United Kingdom of Great Britain and Northern Ireland, represented by Dechert LLP, United Kingdom (“U.K.”).
The Registrant is Page 7 Media Ltd. of Dublin, Ireland, represented by Niall T. Cawley, Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with IE Domain Registry Limited. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2010. On April 9, 2010, the Center transmitted by email to IE Domain Registry Limited a request for registrar verification in connection with the disputed domain name. On April 9, 2010, IE Domain Registry Limited transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details. The Center verified that the satisfied the formal requirements of the .IE Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IE Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”)
In accordance with the Rules, paragraphs 2.1 and 4.1 the Center formally notified the Registrant of the Complaint, and the proceedings commenced on April 19, 2010. In accordance with the Rules, paragraph 5.1, the due date for Response was May 19, 2010. The Response was filed with the Center on May 19, 2010. The Center received a supplemental filing from the Complainant on May 20, 2010 and from the Registrant on May 27, 2010.
The Center appointed Adam Taylor as the sole panelist in this matter on May 26, 2010. 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. Preliminary Issue
As mentioned above, the Complainant made a supplemental filing on May 20, 2010 and the Registrant responded with its own supplemental filing on May 27, 2010.
Paragraphs 9.4 and 11 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 9.4 states: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” Paragraph 11 states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.”
The principles which the Panel should apply in exercising such discretion have been considered in many cases under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
It is appropriate for the Panel to have regard to principles established under the UDRP where they are of assistance in applying comparable provisions under the Policy. See Adidas AG and Adidas (Ireland) Limited v. Gabor Varga and Jozsef Petho, WIPO Case No. DIE2006-0004.
Here, the principal purpose of the Complainant's supplemental filing was to invoke as evidence of bad faith an alleged offer by the Registrant after filing of the Complaint to sell the disputed domain name to the Complainant for a substantial sum. The Registrant made its own supplemental filing, objecting to the Complainant's filing and also responding to the points raised.
The Panel considers that the alleged offer by the Registrant following the initiation of this proceeding is of marginal, if any, relevance to the case. It casts little light on the key issue to which such evidence might speak, namely the Registrant's state of mind on acquisition of the disputed domain name. (The position would have been different had there been an unsolicited offer to the Complainant before the Complainant had asserted its claim). Accordingly, the Panel does not consider that there are exceptional circumstances justifying the admission of either supplemental filing. 4. Factual Background
The Complainant is an U.K. online fashion retailer. It has traded from a website at since 2000. Its original trading name was “As Seen on Screen” and it focussed initially on celebrity-inspired clothing. In 2002 it changed its trading name to “ASOS” and began to sell its own branded products and the products of independent third party designers. The Complainant group's worldwide turnover by reference to the name ASOS was GBP 13 million in 2004/5, rising to GBP 165 million in 2008/9.
The Complainant owns Community Trade Mark 1455484 filed January 10, 2000 for ASSEENONSCREEN.COM and design, and Community Trade Mark 1749563 filed July 11, 2000 for ASSEENON.
The Registrant is a Republic of Ireland limited company incorporated on July 7, 2003. The Registrant registered the disputed domain name on May 29, 2008.
The Registrant redirected the disputed domain name to a website at which offered dresses for sale. 5. Parties' Contentions A. Complainant Identical or Misleadingly Similar
The Complainant owns substantial goodwill and reputation and unregistered trade mark rights in the protected identifiers ASOS, AS SEEN ON SCREEN and AS SEEN ON.
The rights in ASOS arise through its use in relation to online sale of fashion items through the website at since 2002.
The Complainant also owns a number of other “asos” related domain names, which forward to .
The Complainant is the U.K.'s largest online fashion retailer (calculated by number of users, items sold and market capitalization) with customers worldwide. It offers 35,000 branded and own label products. The Complainant's website attracts over 6.9 million users per month of which approximately 3% are from Ireland. It has 2.9 million registered users of which 101,500 are in Ireland.
The Complainant was listed on The London Stock Exchange through AIM in 2001 and currently has a market capitalization of GBP 392 million.
In Ireland, turnover was GBP 1.3 million in 2007/8, GBP 4.5 million in 2008/9 and GBP 4.8 million in 2009/10 (year to date).
As of April 8, 2010, the Complainant's site was ranked 1,524 in the world, 123 in the U.K. and 282 within Ireland.
According to Experian Hitwise, as of January 2009 the Complainant's share of the total user traffic to U.K. fashion websites was approximately 4%.
A significant majority of the Complainant's sales are in the U.K. and Ireland.
Between April 2008 and April 2009, the Complainant's turnover was more than GBP 1 million in the U.K., Denmark, Ireland, France, the United States of America, Germany, Sweden and the Netherlands.
The Complainant has won numerous fashion industry awards.
The Complainant's worldwide marketing expenditure was GBP 1.2 million in 2004/5 rising to GBP 8.1million in 2008/9.
The Complainant spent GBP 50,000 in digital advertising in Ireland in 2008/9 and GBP 80,000 in 2009/10.
The Complainant's advertising in Ireland includes a recent promotion in the Irish magazine “Image” (circulation 28,000) and TV advertising on “America's Next Top Model” on the “Living” television channel, which is available in Ireland.
The Complainant has featured heavily in the press including features and advertising in the Irish Daily Mirror in 2010.
The Complainant has some 227,000 friends on Facebook and 32,000 followers on Twitter.
The disputed domain name is identical to the Complainant's protected identifier ASOS. It is also confusingly similar to the Complainant's protected identifiers AS SEEN ON SCREEN and AS SEEN ON.
The disputed domain name was deliberately registered to take unfair advantage of the Complainant's rights in its protected identifiers, particularly the name “ASOS”. The Complainant's original business model was the offering of celebrity inspired clothing and accessories. The Registrant uses the name “ASOS” as an acronym for “As Seen on Stars”, its modus operandi being to ostensibly sell celebrity inspired products. The only difference between “as seen on screen” and “as seen on stars” is the use of the word “stars” by the Registrant instead of the word “screen”. The average consumer will consider “ASOS” as used by the Registrant to be confusingly similar to the Complainant's protected identifiers AS SEEN ON SCREEN and AS SEEN ON.
The addition of the suffix “.ie” is irrelevant for the purposed of comparing the disputed domain name with the Complainant's protected identifiers. Rights or Legitimate Interests
The Complainant has carried out international trade mark searches and can find no registered trade marks for ASOS owned by the Registrant.
The Complainant has not licensed or otherwise permitted or authorised the Registrant to use its protected identifiers or to apply for a domain name incorporating any such protected identifiers.
The Registrant is unable to rely on any of the circumstances set out in paragraph 3.1 of the Policy in order to demonstrate its rights in law or legitimate interest in the disputed domain name.
The Registrant's use of the disputed domain name was not in connection with a bona fide offering of goods or services or the operation of a business in accordance with paragraph 3.1.1 of the Policy. Given the distinctiveness and reputation of the Complainant's name and protected identifiers, it defies belief that the Registrant could innocently and in good faith register the disputed domain name without knowledge of the Complainant and then use the disputed domain name in the same industry as the Complainant, competing directly against the Complainant. This is particularly so given the close links between the United Kingdom and Ireland, and the very significant goodwill owned by the Complainant in the word ASOS in Ireland.
Also, the website at the disputed domain name has a very similar look, feel, style and layout to the Complainant's website at .
The Registrant's efforts to attract Internet users to its website for commercial gain through confusion with the Complainant's protected identifiers prevents any possibility that the disputed domain name is being used in connection with either the good faith offering of goods or services or operation of a business.
It is evident that the disputed domain name does not consist of a personal name or pseudonym of the Registrant nor does it correspond to a good faith use of a geographical indication given that the word ASOS has no geographic significance. Registered or Used in Bad Faith
The disputed domain name was registered and is being used in bad faith.
Contrary to paragraph 2.1.2 of the Policy the disputed domain name has been registered and used primarily in order to prevent the Complainant from reflecting its protected identifier ASOS. At the time of registration of the disputed domain name, the Registrant would have been well aware of the reputation of the Complainant's protected identifiers. It is highly unlikely that the Registrant chose the disputed domain name for its descriptive qualities or some other genuine reason independently of the Complainant's protected identifiers, particularly given that the Registrant is using the disputed domain name in the same industry in which the Complainant operates and in the same way to compete directly against the Complainant.
Furthermore, the Complainant has registered a number of ccTLD domain names, and the Registrant either being aware of this, or quite reasonably speculating that the Complainant would likely want to register the disputed domain name, anticipated that the Complainant would be interested in registering the disputed domain name and registered the disputed domain name for itself in order to prevent the Complainant from doing so.
Contrary to paragraph 2.1.3 of the Policy, the Registrant has registered and/or is using the disputed domain name primarily for the purpose of interfering with or disrupting the business of the Complainant. The Registrant could not have chosen or subsequently used the word “asos” in its disputed domain name for any reason other than to trade on the Complainant's rights in that name and to confuse Internet users and by that means to attract them to a website with a name which is the same as that of the Complainant's protected identifier ASOS with the intention to profit from the reputation and goodwill of the Complainant's protected identifier ASOS. That is, in itself, evidence of bad faith, both generally and specifically within the meaning of paragraph 2.1.3 and 2.1.4 of the Policy.
Contrary to Rule 2.1.4 of the Policy, the Registrant has, through its use of the disputed domain name, intentionally attempted to attract Internet users to a website or other online location by creating confusion with the protected identifiers in which the Complainant has rights. Given that the Complainant is an internationally renowned online fashion retailer, particularly in the U.K. and Ireland, and that the Complainant has significant goodwill and reputation in its protected identifiers, it is inevitable that Internet users will be confused into believing that any website at the disputed domain name is registered to, operated, endorsed or authorised by, or affiliated to, the Complainant. This is particularly so given that the website at the disputed domain name offers goods and services which are in direct competition with those of the Complainant. It is reasonable to assume that this would result in revenue for the Registrant. The Registrant has designed its website in such a way as to create further confusion on the part of Internet users, leading them into thinking they have reached the Complainant's website or a business associated with the Complainant. Further, even if a user accessing the website at the disputed domain name realises that it is not a website related to the Complainant, the user may decide to stay on the website and purchase products through the website and this will all stem from the initial interest in the website caused by the Registrant's confusing use of ASOS.
Contrary to paragraph 2.1.5 of the Policy, the disputed domain name has also been used in a way that is likely to dilute the reputation of a trade or service mark in which the Complainant has rights. The mere registration alone of the disputed domain name by the Registrant and not the Complainant has meant that the protected identifiers are not as unique as they were prior to the registration of the disputed domain name. This lack of uniqueness means that the protected identifiers are not acting as a guarantee of origin that the goods and services provided in relation to the protected identifiers are provided uniquely by or with the endorsement of the Complainant and is thereby adding to the dilution of the reputation in the protected identifiers. The Registrant's use of the disputed domain name in offering directly competing goods and services to the Complainant will further dilute the Complainant's protected identifiers. B. Registrant Identical or Misleadingly Similar
The Complainant is not the owner of substantial goodwill and reputation protected by Irish common law.
The Complainant's registration of its own domain name occurred in June 2000 and the Complainant is a company based in the U.K. and not in the Republic of Ireland.
The ownership by the Complainant of Community trade mark registrations 1749563 and 1455484 is not material and/or in the alternative does not affect the rights of the registrant.
A very tiny proportion of the Complainant's business (on the order of 3%) comes from the Republic of Ireland.
The Complainant's market share in the U.K. is not relevant to the Complaint.
The Complainant misleadingly purports to show turnover figures as being substantial without indicating that a very tiny proportion of same relates to the Republic of Ireland.
The Complainant does not distinguish between the Republic of Ireland and Northern Ireland.
The Complainant's expenditure on advertising in Ireland does not in itself entitle it to the reliefs sought. Nor does the Complainant's television campaign.
The Complainant does not have a protected identifier for the purposes of the Policy.
The term “asos” is not registered in the Republic of Ireland nor in Europe. The term “asos” is not a personal name in which the Complainant has acquired a reputation in Ireland. The term is not a geographical indication that can prima facie be protected in the Republic of Ireland. Rights or Legitimate Interests
The Complainant does not provide any evidence of having registered ASOS as a trade mark.
The Complainant has not discharged its duty of proving prima facie that the three conditions specified in paragraph 1.1 of the Policy has been met.
The disputed domain name was registered in the following circumstances:
In 1980, Mr. Downey Sr. established his business “Penthouse and Pavement” in Dublin, in a district which at that time was at the heart of the fashion business in Dublin. It was a wholesale fashion showroom and distribution centre. Subsequently two retail stores were opened in Dublin and Cork. It changed its name in 1994 to “Lipsy” and refocused its business on celebrity and catwalk styles at affordable prices. The business was promoted by the name AS SEEN ON STARS (ASOS) for the first time.
To further promote the brand, Lipsy employed a host of Irish celebrities to both model and promote their stores.
In 2006 Mr. Downey Jr. (son of the founder of the business) took over the business and renamed it “Heart and Soul”.
In 2007 Mr. Downey Jr. launched “www.” as the online version of Heart and Soul. From the beginning the site was called “” with AS SEEN ON STARS as the slogan underneath the title of the disputed domain name, which the Respondent states to this day still continues.
During 2007 and 2008, Mr. Downey Jr. registered the domain names and its abbreviated form through the Registrant. Presently the disputed domain name is the joint property of Mr. Downey Jr. and the Registrant.
Through strong advertising campaigns for “”, AS SEEN ON STARS is today one of Ireland's best-known brands and one of the biggest sponsors on “Ireland AM” and “Expose”, two well-known fashion television programmes.
During 2008 “” were a regular monthly feature on the Ireland AM fashion slot. This slot was exclusively used to model celebrity and AS SEEN ON STARS fashion. This continued until 2009.
These circumstances are entirely independent of the Complainant's business. The Complainant is seeking through the Policy to acquire the property of the Registrant.
The Complainant originally corresponded with the Registrant and asserted that it was the registered owner of the trade mark ASOS. This assertion proved to be untrue.
The disputed domain name is not confusingly similar to “As Seen On Screen” or “As Seen On”. This assertion is made because the Complainant has not registered ASOS as a trade mark.
The Registrant rejects the assertions of the Complainant that it has no rights or legitimate interest in the disputed domain name. Registered or Used in Bad Faith
The registration or use of the disputed domain name does not come within any of the categories of bad faith specified in the Policy.
The disputed domain name was registered by the Registrant during 2008 following a natural course of development set out above.
The disputed domain name was created independently of the Complainant and is the property of the Registrant and Mr. Downey Jr. who have not and continue not to act in bad faith. 6. Discussion and Findings A. Identical or Misleadingly Similar
The first condition in paragraph 1.1 of the Policy is that the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights.
Under paragraph 1.3.1 of the Policy, protected identifiers include “trade and service marks protected in the island of Ireland”.
As mentioned above, the Complainant invokes community trade marks for ASSEENONSCREEN.COM and ASSEENON. While such marks are of course capable of constituting protected identifiers under the Policy as they are protected in the island of Ireland, these particular marks do not assist the Complainant as they are neither identical nor misleadingly similar to the term “ASOS”. On the contrary, they are materially different, both visually and phonetically.
The Registrant says that the Complainant has not established registered rights per se in the name ASOS. This is correct.
However, the Panel's view is that the Complainant has demonstrated unregistered or common law rights in the name ASOS in the island of Ireland by virtue, inter alia, of turnover in Ireland totalling some GBP 10.6 million from 2007 to 2010, advertising and press coverage in the Irish media and online advertising activities in Ireland.
The Registrant argues that the Complainant is based in the U.K. and not in the Republic of Ireland. The issue here, however, is not whether the Complainant is located with the island of Ireland but whether the Complainant has generated trade mark rights within the island of Ireland.
The Registrant observes that only some 3% of the Complainant's turnover comes from the Republic of Ireland. In the Panel's view the proportion of turnover in the island of Ireland to the Complainant's total turnover is irrelevant. What matters is whether the Complainant's Irish turnover is significant of itself. The Panel is satisfied that it is.
The Registrant further argues that the Complainant does not distinguish between the Republic of Ireland and Northern Ireland. This is true, albeit that the Complainant's references to Ireland and the U.K. respectively suggest to the Panel that it intends “Ireland” to refer only to the Republic of Ireland. While the Complainant could have been clearer, the Panel considers that it makes no difference to the outcome. In the Panel's opinion the level of the Complainant's activity in “Ireland” is such that it is bound to have generated unregistered or common law rights in either the Republic of Ireland or Northern Ireland (which are different legal jurisdictions), if not in both.
Apart from the domain suffix “.ie” (which is immaterial in this context), the disputed domain name is identical to the mark ASOS.
The Panel concludes that the disputed domain name is identical to a protected identifier in which the Complainant has rights. B. Rights or Legitimate Interests
The second condition in paragraph 1.1 of the Policy is that the Registrant has no rights in law or legitimate interests in respect of the disputed domain name.
Paragraph 3.1 of the Policy specifies three non-exhaustive factors which may be considered as evidence of rights or legitimate interests.
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Registrant to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Travel Counsellors plc and Travel Counsellors (Ireland) Ltd v. Portlaoise Travel Limited,WIPO Case No. DIE2006-0001.
The factor in paragraph 3.1.1 of the Policy provides:
“where the registrant can demonstrate that, before being put on notice of the complainant's interest in the domain, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services, or operation of a business”.
The Registrant has used the disputed domain name in connection with an offering of goods but, for the reasons explained below, the Panel's view is that the Registrant's registration and use of the disputed domain name for that purpose has not been in good faith.
Paragraph 3.1.2 of the Policy does not apply as the disputed domain name does not correspond to the personal name or pseudonym of the Registrant.
Paragraph 3.1.3 of the Policy does not apply as the disputed domain name is not a geographical indication.
The Complainant has not licensed or otherwise authorized the Registrant to use its trade mark.
The Panel concludes that the Registrant has no rights in law or legitimate interests in the disputed domain name. C. Registered or Used in Bad Faith
The third condition in paragraph 1.1 of the Policy is that the disputed domain name has been registered or is being used in bad faith.
The Complainant has clearly built a substantial reputation in the name “ASOS” in the field of online fashion over a period of eight years or so – including in the island of Ireland. The Registrant registered the disputed domain name in 2008 and directed it to a website selling dresses. On the face of it, that would appear to be a clear case of registration and use in bad faith.
However, the Registrant has given an explanation for its selection of the disputed domain name.
The Registrant says that, in February 1980, Mr. Downey Sr. established a wholesale fashion business called “Penthouse and Pavement” and that the business subsequently opened retail outlets in Dublin and Cork. It is not clear whether this business was operated by a company or by Mr. Downey personally.
The Registrant claims that, in 1994, the name of the business was changed to “Lipsy” and it refocused on celebrity and catwalk styles at affordable prices. The Registrant says that the business “was promoted by the name AS SEEN ON STARS (ASOS) for the first time”. The Registrant exhibits a 1996 invoice with a logo consisting of the word “Lipsy” in large stylised font and underneath in smaller font: “As Seen On Stars”.
According to the Registrant, Lipsy employed a host of Irish models to promote their stores. Reference is made to press cuttings but none were attached to the Response. It is not clear whether these alleged promotions related to the name “Lipsy” or “As Seen On Stars” or both.
In 2006, Mr. Downey Jr. – said to be the son of the founder of “the business” – allegedly took it over and renamed it “Heart and Soul”.
The Registrant exhibits a photograph – date stamped 2006 – said to show Mr. Downey's wife and an Irish celebrity at the launch of “the new outlet”. The photograph shows two woman in front of premises which does not appear to be a retail operation. There is one “Lipsy” sign and other one consisting of “Heart & Soul” in stylised font with the stylised words “As Seen On Stars” in much smaller font underneath.
The Registrant says that, in 2007, Mr. Downey Jr. launched “” which was to be the online version of Heart & Soul. The Registrant says that “[f]rom the beginning the site was called with AS SEEN ON STARS as the slogan underneath the domain name, which to this day still appears on the same”. The Registrant exhibits a screenshot of the website at which does indeed show “As Seen On Stars” beneath the “” brand name. The screenshot is undated.
The Registrant claims that, during 2007 and 2008, Mr. Downey Jr. registered “through the Registrant” both the domain name and “its abbreviated version”, the disputed domain name. The exact connection between Mr. Downey Jr. and the Registrant is not explained although the implication is that Mr. Downey controls the Registrant. The Registrant states that currently the disputed domain name is the joint property of Mr. Downey Jr. but does not explain how this came about or provide proof.
According to the Registrant, through strong advertising campaigns for “”, AS SEEN ON STARS is one of Ireland's best-known brands and one of the biggest sponsors of two well-known fashion television programmes “Ireland AM” and “Expose”. The Registrant says that during 2008 and 2009, the brand “” featured on Ireland AM's monthly fashion slot which was used exclusively to model “celebrity and AS SEEN ON STARS fashion”. No evidence is provided in support of any of these assertions.
The Registrant says that the above circumstances were entirely independent of the Complainant's business.
The Panel has to assess the likelihood that the Registrant did in fact register the disputed domain name independently of the Complainant's mark as an abbreviation for the name “As Seen On Stars” rather than because of its correspondence to the Complainant's mark.
The Panel cannot of course know what was in the mind of the Registrant. And, in this kind of proceeding, the Panel does not have the benefit of the tools available in litigation such as disclosure of documents or testimony from witnesses. The Panel can only make its best assessment based on the evidence before it.
In the Panel's view, notwithstanding the lack of clarity in the Registrant's account and the lack of supporting evidence mentioned above, it is reasonable to infer that Mr. Downey Jr. does control the Registrant and also that there may be some degree of connection between Mr. Downey and use of the name “As Seen On Stars” for celebrity inspired clothing extending back before the Complainant started trading.
However, the Panel further notes the following:
1. The evidence concerning the nature and extent of the historic use of the brand “As Seen On Stars” in connection with “Lipsy” is minimal: just a single invoice dated 1996 (i.e. some 14 years ago). And on that document, the name “As Seen On Stars” is merely a sub-brand in small font beneath the main brand “Lipsy”.
2. The only evidence concerning the nature and extent of the use of the brand “As Seen On Stars” in connection with “Heart & Soul” is a 2006 photograph. Again, the name “As Seen On Stars” is merely a sub-brand in small font beneath the main brand.
3. There is no evidence in support of the claim that “As Seen On Stars” is currently one of Ireland's best-known brands. If this assertion was correct, it should have been straightforward to supply at least some supporting documentation. The fact that “As Seen On Stars” has been displayed on the website at since 2007 (which assertion is supported only be a single undated screenshot), falls well short of evidencing such fame.
4. There is no information or evidence suggesting that any significant business has been conducted under the brand names “” and “Heart & Soul” with which “As Seen On Stars” is allegedly associated.
5. There is no evidence of any use whatever of the term “ASOS” by any of the relevant entities as an abbreviation for “As Seen On Stars”.
The Panel considers it reasonable to conclude that the Registrant was aware of the Complainant's ASOS mark when it registered the disputed domain name in 2008. The Complainant has demonstrated a significant reputation in Ireland and worldwide and so it seems highly unlikely that the Registrant, itself (or at least its controller) involved in the fashion business, was unaware of the Complainant. Further, the Registrant does not deny knowledge of the Complainant as at the date of registration.
If there had been evidence of significant and meaningful use of the name “As Seen On Stars”, and particularly the acronym “ASOS”, by the Registrant or connected entities since 2006 / 2007, the Panel might have been prepared to accept that this was the Registrant's sole motivation for registration of the disputed domain name. But, in the absence of such evidence and in light of the factors mentioned above, the Panel is driven to conclude that the Registrant's real purpose in registering the disputed domain name in 2008 was to capitalise on the high profile name of the Complainant, its direct competitor, by diverting traffic from the Complainant to the site connected with the Registrant at .
The Panel also notes that the Registrant failed to respond to the Complainant's cease and desist letter dated July 10, 2009, which the Registrant acknowledges receiving. Had the Registrant registered and used the disputed domain name genuinely, the Panel suspects that it would have been keen to explain its position in a response. But the Registrant did not reply to the letter.
Weighing all of the above-described circumstances, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 5.1 of the Policy and 14 of the Rules, the Panel orders that the disputed domain name, be transferred to the Complainant.
Adam Taylor
Sole Panelist
Dated: June 18, 2010
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