World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Asos PIc v. Wu Weiguo

Case No. D2012-0131

1. The Parties

The Complainant is Asos PIc of London, United Kingdom of Great Britain and Northern Ireland, represented by Dechert, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Wu Weiguo of Putian, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <asosss.com> is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2012. On January 25, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. On January 30, 2012, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of the proceeding. On January 31, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center has verified that the Complaint satisfies 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 proceeding commenced on February 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 26, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on February 27, 2012.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on March 22, 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

A. Complainant

The Complainant is a company incorporated in the United Kingdom (“UK”) and the owner of registrations for the trade mark ASOS (the “Trade Mark”) in Germany, Serbia, Singapore, Sweden and Ukraine, the earliest dating from May 2010.

B. Respondent

The Respondent appears to be an individual based in China.

C. The Disputed Domain Name

The disputed domain name was registered on October 11, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions in the Complaint:

The Complainant was established in June 2000 under the name As Seen on Screen, and changed its name to Asos in September 2002. The Complainant is the UK’s largest independent online fashion and beauty retailer, with customers from across the world. The Complainant attracts over 13.6 million unique visitors a month to its primary website at “www.asos.com” (the “Complainant’s Website”). As at September 30, 2011 there were 6.3 million registered users of the Complainant’s Website.

In addition to its registrations for the Trade Mark, the Complainant has built up a substantial reputation and goodwill in the Trade Mark through its widespread use of the Trade Mark since 2002.

The disputed domain name is confusingly similar to the Trade Mark. It contains the Trade Mark in its entirety with the addition of the letter “s” twice.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name was registered nine years after the Complainant started using the Trade Mark. The Complainant has not licensed or otherwise permitted or authorised the Respondent to use the Trade Mark or to register the disputed domain name. The Respondent’s name does not include the Trade Mark and it is not commonly known by the Trade Mark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name is being held passively and has simply been automatically redirected to the Complainant’s Website. The Respondent ignored the cease and desist letters from the Complainant’s solicitors seeking transfer of the disputed domain name.

The disputed domain name was registered and is being used in bad faith. Given in particular the repute of the Trade Mark and the fact the Respondent has provided no evidence to show any actual or contemplated good faith use of the disputed domain name, the Respondent’s registration and passive holding of the disputed domain name amounts to bad faith registration and use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese.

Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).

The Complainant has requested that English be the language of the proceeding for the following reasons:

(1) the disputed domain name is resolved to the Complainant’s Website which is entirely an English language website. This suggests the Respondent is familiar with and fluent in English;

(2) the Complainant has expended considerable time, cost and effort in preparing and filing the Complaint and it would be disproportionate and unfair for the Complainant to have to spend further time and money in translating the Complaint into Chinese, particularly where the Complainant’s case is strong;

(3) neither the Complainant nor its representatives has any familiarity with Chinese.

The Respondent did not file any submissions with respect to the language of the proceeding.

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 (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).

The Panel notes, for the reasons specified by the Complainant in its submissions regarding the language of the proceeding, that it is likely that the Respondent is familiar with the English language and that there is nothing in the present record that indicates the contrary. (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner, and has taken into account the failure of the Respondent to file any submissions with respect to the language of the proceeding.

In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2 Decision

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name.

UDRP panels have consistently held that domain names are generally identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

The disputed domain name contains the Trade Mark in its entirety. The Panel finds that the addition of the non-distinctive letters “ss” does not serve to distinguish the disputed domain name from the Trade Mark in any way.

The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.

The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in a disputed domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the disputed domain name even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by nine years. The Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The evidence shows that the disputed domain name has been passively held and is automatically redirected to the Complainant’s Website. This does not give rise to any rights or legitimate interests in the disputed domain name. The Panel therefore concludes that the Respondent has failed to show that the disputed domain name is used in connection with a bona fide offering of goods or services.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.

There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

It is trite that, under UDRP jurisprudence, passive holding of a disputed domain name can, in certain circumstances, support a finding of bad faith registration and use. In all the circumstances of this case, in particular, given the repute of the Trade Mark, the fact the disputed domain name is simply resolved automatically to the Complainant’s Website, and the Respondent’s failure to respond to the Complainant’s solicitors or to file a Response (and consequent failure to provide any evidence of actual or intended good faith use), the Panel has no hesitation in concluding that the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For all 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 <asosss.com> be transferred to the Complainant.

Sebastian Hughes
Sole Panelist
Dated: March 26, 2012

 

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