WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Asos PLC v. De Hua Zhou
Case No. D2011-2272
1. The Parties
The Complainant is Asos PLC of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Dechert LLP, UK.
The Respondent is De Hua Zhou, Neimenggu, China.
2. The Domain Name and Registrar
The disputed domain name <asosdiscountcodeuk.com> is registered with FastDomain, Inc (the “Domain Name”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2011. On December 23, 2011, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the Domain Name. On December 24, 2011, FastDomain, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 12, 2012.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on January 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2012.
The Center appointed Nicholas Smith as the sole panelist in this matter on February 15, 2012. 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 a company based in the UK that retails fashion and beauty products online. It was incorporated on June 2, 2000 and has traded under the name Asos since September 2002. Its primary website, where it retails its products, is located at “www.asos.com”. The Complainant owns the registered trade mark for the word mark ASOS in Germany, Serbia, Singapore, Sweden and Ukraine. Each of these marks was registered between May 25, 2010 (Singapore) and September 26, 2011 (Ukraine).
The Domain Name was registered on September 2, 2011.
5. Parties’ Contentions
The Complainant makes the following contentions:
The Complainant holds unregistered trade mark rights in the name ASOS (the “Trade Mark”), which are protected in the UK by common law rights enforceable by way of passing off. Over the past 10 years it has built up a substantial reputation and goodwill in the Trade Mark.
The Complainant has registered the Trade Mark in Germany (registered on August 30, 2011), Serbia (registered on October 7, 2010), Singapore (registered on May 25, 2010), Sweden (registered on September 3, 2010) and Ukraine (registered on September 26, 2011). The Trade Mark is registered in these countries for goods in classes 3, 14, 18 and 25 and services in class 35.
The Complainant was established in June 2000 under the name “As Seen on Screen”. It then changed its name to Asos in September 2002. It is the UK's largest independent online fashion and beauty retailer with customers from across the world. It attracts over 13.6 million unique visitors a month to its primary website at “www.asos.com”. As of September 30, 2011 the Complainant had 6.3 million registered users (of its website) and 3.7 million active customers from 160 countries.
The Complainant trades exclusively from its website at “www.asos.com” (although it owns other domain names that revert to “www.asos.com”). On its website, Complainant uses the Asos name to sell clothing and accessories, shoes, bags, purses, sunglasses, jewelry, watches, sportswear, swimwear, cosmetics and beauty accessories. On December 23, 2011, the website “www.alexa.com”, a site that monitors the traffic of other websites, ranked “www.asos.com” as the 827th most visited site in the world and 80th most visited site in the UK.
In the 2010/2011 financial year, the Complainant and its subsidiary Asos.com Limited generated turnover of £339,691,000, all of which was directly related to the performance of, reputation of and goodwill in the ASOS brand. The Complainant also invests heavily in marketing its brand. Its marketing expenses amounted to £8,194,000 in 2008/2009 and £11,251,000 in 2009/2010. As part of its marketing, the Complainant produces its own monthly magazine which is distributed to between approximately 400,000 and 600,000 customers per month who purchase products through its website.
The Domain Name is identical and/or confusingly similar to the Trade Mark because it consists of the Trade Mark in its entirety, with the addition of the descriptive and non-distinctive suffixes “discountcode” and “UK”. These suffixes have no trade mark significance, but instead are respectively a generic term that would be treated by the public as applicable to the Complainant and an indicator of the geographical origin that the public would expect to be used in relation to the Complainant.
The Domain Name was registered more than nine years after Complainant had started using the Trade Mark. The website at the Domain Name is a near identical copy of the Complainant’s website. It includes many images from the Complainant’s website and operates in the same manner as the Complainant’s website. The Respondent offers both Complainant’s goods and goods from competitors of the Complainant at “www.asosdiscountcodeuk.com”. For this reason the Respondent must have been aware of the Complainant and its rights in the Trade Mark at the time the Domain Name was registered. The Complainant has not licensed or otherwise permitted or authorised the Respondent to use its Trade Mark or to apply for a domain name incorporating the Trade Mark. The Respondent’s name does not include the Trade Mark or anything similar and the Respondent is not commonly known by the Trade Mark.
The 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 the Respondent other than its connection with the Complainant. This would suggest that the Domain Name was selected to trade off the reputation of the Trade Mark. Such use is not bona fide.
The Domain Name has been registered and is being used in bad faith because the Respondent is operating the Domain Name intentionally to attract for commercial gain Internet users to its website 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. This is particularly clear because the Respondent’s website is a near copy of the Complainant’s website and offers the Complainant’s products. The Respondent has deliberately designed its website in such a way as to create further confusion on the part of Internet users who will think that they have reached the Complainant’s website or a website endorsed/authorised by or affiliated to the Complainant. This also amounts to the Respondent registering and is using the Domain Name primarily for the purpose of interfering with or disrupting the business of the Complainant contrary to Rule 4(b)(iii) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights, and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant submits that it has common law or unregistered trade mark rights in ASOS. This submission is based on the Complainant using the trade mark since 2000 on its “www.asos.com” website and since formally adopting the name Asos in or about 2002. The Complainant is one of the UK’s largest independent online fashion and beauty retailer with 13.6 million unique visitors to “www.asos.com” a month, 6.3 million registered users (of its website) and 3.7 million active customers.
The Complainant holds registrations for the Trade Mark in Germany, Serbia, Singapore, Sweden and Ukraine.
The Panel finds that the Complainant has registered trade mark rights in the Trade Mark through its international registrations. It also finds that the Complainant’s use of the Trade Mark since 2000 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 the descriptive and non-distinctive suffixes “discountcode” and “UK”. The suffix “UK”, when appended to a prima facie distinctive term, is likely to be seen as a geographical term, short for the United Kingdom of Great Britain and Northern Ireland, where the Complainant is based. The suffix “discountcode” is a generic term which refers to codes that enable consumers to acquire reductions in price from retailers. These discount codes are commonly used by online retailers. As the Complainant is an online retailer the inclusion of the suffix “discountcode” does not eliminate the confusing similarity between the Domain Name and the Complainant’s Trade Mark. See J. Choo Limited v. Lai Ruipao, WIPO Case No. D2011-1074.
The Domain Name consists of the Trade Mark and two suffixes that fail to distinguish the Trade Mark. The Panel finds that the Domain Name is confusingly similar to the Complainant’s Trade Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the Domain Name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”.
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interest in the Domain Name.
The Respondent is not affiliated with Complainant in any way and has not been authorized by Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the Trade Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
The Respondent has not attempted to make any bona fide use of the Domain Name. The Panel finds that the Respondent, at the time of registration of the Domain Name, most likely knew of the existence of the Complainant’s Trade Mark. The Respondent then created a website for the Domain Name that consists of a near identical copy of the Complainant’s website, includes many images from the Complainant’s website and offers for sale products that compete with the Complainant’s products. This form of use, aside from potential copyright infringement, amounts to a deliberate attempt to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s Trade Mark. Such use is not bona fide.
The Panel finds that the 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(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Subparagraph (iv) includes circumstances where the Respondent, by using the Domain Name, intentionally attempts to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Panel finds that the Respondent at the time of registration of the Domain Name, most likely knew of the existence of the Trade Mark. After registration of the Domain Name, the Respondent created a website that was a near copy of the Complainant’s website which sells products that compete with the Complainant’s products. It appears that the Respondent deliberately designed its website in such a way as to create confusion on the part of Internet users who will think that they have reached the Complainant’s website or a website endorsed/authorised by or affiliated to the Complainant.
In all likelihood, the Respondent receives a “commercial gain” via the revenue it receives for the products advertised and sold on the website at “www.asosdiscountcodeuk.com”. Given the Respondent’s actions since registration, the Panel finds that the Respondent’s conduct is an example of registration and use of the Domain Name in bad faith under 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
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 <asosdiscountcodeuk.com> be transferred to the Complainant.
Dated: February 17, 2012