WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ASOS PLC v. Lee Dolby
Case No. D2010-1740
1. The Parties
Complainant is ASOS PLC of London, United Kingdom of Great Britain and Northern Ireland, represented by Dechert, LLP, United Kingdom.
Respondent is Lee Dolby of Oakham, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <asos-usa.com> (“the Domain Name”) is registered with 1&1 Internet AG (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2010. On October 14, 2010, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the Domain Name. On October 14, 2010, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 18, 2010.
The Center appointed Clive L. Elliott as the sole panelist in this matter on November 29, 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. Factual Background
Complainant is an independent corporation existing under the laws of England and Wales, operating as an online fashion and beauty retailer. It was incorporated on June 2, 2000. It is the owner of numerous domain names, all of which refresh to Complainant’s website at “www.asos.com”.
According to the publicly available 1&1 Internet AG database, the Domain Name was registered on January 24, 2010.
5. Parties’ Contentions
Complainant contends that it is the owner of unregistered trade mark rights in the name ASOS (“the Trade Mark”), which are protected in, inter alia, the United Kingdom (“UK”) by common law enforceable by way of passing off, and that it has built up a substantial reputation and goodwill in the Trade Mark.
Complainant asserts that it was established in June 2000 under the name As Seen on Screen, and then changed its name to ASOS in September 2002. It contends that it is the United Kingdom's largest independent online fashion and beauty retailer with customers from across the world, and that it attracts over 6.9 million unique visitors a month to its website at “www.asos.com”. Complainant advises that it trades exclusively from its website at “www.asos.com” where it uses the ASOS name to sell women’s and men’s clothing and accessories, shoes, bags and purses, sunglasses, jewelry, watches, sportswear, swimwear, cosmetics and beauty accessories.
Complainant states that it is listed on the London Stock Exchange through AIM and that as well as having won numerous AIM awards, it is one of the largest and most traded companies listed on AIM. It also advises that, according to “www.alexa.com” (a website which monitors the traffic of other websites) Complainant’s website is ranked at position 1,325 globally and 100 in the UK.
Complainant asserts that it, and its subsidiary Asos.com Limited, have identical business and trade marks and are collectively known in the market as ASOS. It contends that all turnover generated by Complainant is directly related to the performance of, reputation of and goodwill in the ASOS brand. Complainant states that it invests heavily in marketing its brand and that as well as being the recipient of numerous awards, it has also featured heavily in articles in the press.
Complainant states that it produces its own monthly magazine which is distributed to customers purchasing products through its website “www.asos.com” and also operates within the social networking world. It says that it has a Facebook page at “www.facebook.com/ASOSOfficial”, with over 319,000 friends and that this number is increasing on a daily basis. Complainant also advises that its Facebook page is updated several times a day and features competitions as well as links to its monthly magazine. Complainant states that it also operates a Twitter page at “http://twitter.com/ASOS” and has over 55,000 followers.
Complainant argues that the Domain Name is identical and/or confusingly similar to its Trade Mark because it consists of its Trade Mark in its entirety, with the addition of a hyphen and the non-distinctive suffix “USA”. Complainant contends that this suffix has no trade mark significance, but will instead be considered as an indicator of the geographical origin which Internet users would expect to be used in relation to it.
Complainant states that the Domain Name was registered more than seven years after Complainant had started using its Trade Mark and suggests that, given the reputation and goodwill that the Trade Mark has developed over that period within the UK, and because Respondent is based in the UK, it is reasonable to assume that the Respondent must have been aware of Complainant and its rights in the Trade Mark at the time the Domain Name was registered. Complainant submits that Respondent chose the Domain Name because he knew it included the well-known Trade Mark associated with Complainant. Complainant states that it has not licensed or otherwise permitted or authorised Respondent to use its Trade Mark or to apply for a domain name incorporating the Trade Mark and that Respondent’s name does not include the Trade Mark or anything similar and it is not commonly known by the Trade Mark.
Complainant argues that Respondent has no rights or legitimate interests in respect of the Domain Name and because there is no obvious reason why the Domain Name has been selected by Respondent for the website this Complainant submits would suggest that the Domain Name was selected to trade off the reputation of Complainant’s Trade Mark.
Complainant asserts that the Domain Name has been registered and is being used in bad faith because Respondent is operating the Domain Name intentionally to attract Internet users to its website or other on-line location for commercial gain by creating a likelihood of confusion with Complainant’s Trade Mark as to the source, sponsorship, affiliation or endorsement of its website or of a product or service on its website or location. Complainant states that whilst the links that appear at the website of the Domain Name differ from time to time, links to websites offering services in competition with those of Complainant are frequently generated.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant asserts that it is owner of the common law or unregistered trade mark ASOS. This assertion is based on Complainant’s coining of the Trade Mark in or about 2000 as an informal acronym for the name “As Seen on Screen”. Complainant then formally adopted the name ASOS in or about 2002. It asserts that it is the United Kingdom’s largest independent online fashion and beauty retailer and has customers around the world, which customers make over 6.9 million unique visits a month to its website at “www.asos.com”.
The Panel is satisfied that this use of the Trade Mark in the course of trade is sufficient to vest in Complainant protectable rights pursuant to the Policy.
The Domain Name consists of the Trade Mark in its entirety, with the addition of a hyphen and the suffix “USA”. Complainant submits that the Domain Name is identical and/or confusingly similar to the Trade Mark, principally because the suffix has no trade mark significance. There is merit in this submission. The suffix “USA”, when appended to a prima facie distinctive term, is likely to be viewed by a substantial number of consumers primarily as an indicator of geographical origin. It would do little to alter the message of the Trade Mark.
It is clear that the Domain Name includes the Trade Mark and that the Trade Mark is identifiable within the Domain Name. The Panel has no difficulty in finding that the Domain Name is confusingly similar to the Trade Mark.
It is therefore found that Complainant has rights in the Trade Mark, that the Trade Mark comprises a dominant part of the Domain Name, that the Domain Name is confusingly similar to the Trade Mark and accordingly that the requirements of paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Respondent is not affiliated with Complainant in any way and has not been authorized by Complainant to use and register the Trade Mark or to seek the registration of any domain name incorporating the Trade Mark.
The use of the Trade Mark preceded the registration of the Domain Name. The Domain Name makes an obvious and direct reference to the Trade Mark and online fashion and beauty products supplied by or through Complainant.
As noted above, Complainant asserts that Respondent has used the Domain Name to provide links to websites offering products in competition with those of Complainant. In the absence of any explanation or denial this suggests that Respondent is involved in a simple monetizing operation. Whether or not this is the case, the Panel infers that Respondent has intentionally attempted to divert, for some form of commercial gain, Internet users to websites operated or controlled by competitors of Complainant. It finds that this conduct constitutes an improper commercial use of the Domain Name for the purpose of diverting customers to the offerings of third parties’ businesses and that such conduct is not consistent with any rights or legitimate interests on Respondent’s part.
It is therefore established that Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Respondent has registered and uses the Domain Name in bad faith.
The Panel is of the view that given the nature and extent of the use of the Trade Mark by Complainant and the undoubted reputation and goodwill which Complainant has acquired in the Trade Mark through its extensive online marketing activities, that it is reasonable to infer that Respondent knew or ought to have known of the Trade Mark at the time he registered the Domain Name. The contention by Complainant that Respondent is involved, directly or indirectly in diversion of business stands uncontradicted and, as the record currently stands, supports a finding of bad faith.
On this basis the Panel concludes that the Domain Name was both registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <asos-usa.com> be transferred to Complainant.
Clive L. Elliott
Date: December 13, 2010