The Complainant is Get Weird, LLC, United States of America (“United States”), represented by K&L Gates, United States.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Aamir Ali, MillionMerch, Pakistan.
The disputed domain name <asscshop.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2022. On March 7, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 8, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 11, 2022.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 14, 2022. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2022.
The Center appointed Steven A. Maier as the sole panelist in this matter on April 6, 2022. 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.
The Complainant is a limited liability company organized under the laws of California, United States. It is a supplier of “streetwear” clothing under the name and trademark ANTI SOCIAL SOCIAL CLUB.
The Complainant is the owner of various registrations for the trademark ASSC including, for example, United States trademark registration number 6441368 for the word mark ASSC, registered on August 3, 2021 with a filing date of December 15, 2017.
The Complainant is also the owner of numerous registrations for, or including, the trademark ANTI SOCIAL SOCIAL CLUB in territories throughout the world. Those registrations include, for example:
- United States trademark registration number 5046740 for the word mark ANTI SOCIAL SOCIAL CLUB, registered on September 20, 2016; and
- International trademark registration number 1488391 for the figurative mark depicted below, registered on July 1, 2019 (the “Figurative Mark”):
The disputed domain name was registered on May 20, 2021.
The Complainant has submitted evidence that, on February 28, 2022, the disputed domain name resolved to a website at “www.asscshop.com”. The website was headed “Anti Social Social Club | Official ASSC Shop | Limited Stock” and prominently displayed the Figurative Mark. The website appeared to offer a large number of items of clothing for sale online, the overwhelming majority of which included the wording ANTI SOCIAL SOCIAL CLUB as a principal element of their design.
The Complainant submits that it has used the above-mentioned trademarks in connection with its business since at least January 2015 and has operated a retail website at “www.antisocialsocialclub.com” since 2017. It contends that, as a result of its sales and promotional activities since those dates, it has become established as a leading provider of “streetwear” fashion and clothing and that all of its trademarks have gained substantial public recognition.
The Complainant submits that the disputed domain name is identical or confusingly similar to is ASSC trademark. It contends that the disputed domain name incorporates that trademark in full, with the addition only of the term “shop”, which is descriptive of a mode of purchasing the Complainant’s goods and does not serve to distinguish the disputed domain name from its trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never licensed or authorized the Respondent to use its ASSC trademark, that the Respondent has not been known by that name and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. The Complainant submits, in particular, that the Respondent is using the disputed domain name for the purpose of a website which imitates its own website and offers counterfeit goods, which cannot constitute a bona fide use of the disputed domain name.
The Complainant submits that the disputed domain name has been registered and is being used in bad faith. It exhibits screen-prints of its own website at “www.antisocialsocialclub.com” and of the Respondent’s website at “www.assc.com”. The Complainant contends that the Respondent’s website adopts its trademarks including the Figurative Mark and the same format as its own website, and pretends to be the Complainant’s website for the purpose of selling ANTI SOCIAL SOCIAL CLUB branded goods which it says are counterfeit. The Complainant also points to text included towards the end of the Respondent’s website which disparages the Complainant’s own website and its level of service and suggests that customers will obtain better service from the Respondent’s website.
The Complainant submits, in the circumstances, that the Respondent was obviously aware of the Complainant and its trademarks when it registered the disputed domain name, and that it clearly did so with the intention of diverting Internet users to its competing website for the purpose of selling counterfeit clothing to them. The Complainant submits in particular that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant has demonstrated that it has registered trademark rights for the mark ASSC (it being irrelevant for the purposes of paragraph 4(a)(i) of the Policy that such registrations may have been completed after the date upon which the disputed domain name was registered). The disputed domain name wholly incorporates that trademark together with the dictionary term “shop”, which does not prevent the Complainant’s trademark from being recognizable in the disputed domain name. The Panel therefore finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. There being no other evidence of rights or legitimate interests on the part of the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel accepts the Complainant’s evidence, which is unchallenged by the Respondent, that the Respondent has used the disputed domain name for the purpose of a website which is headed with the Complainant’s trademarks ANTI SOCIAL SOCIAL CLUB and the Figurative Mark and describes itself as the “Official ASSC Shop”. The Panel further accepts that the Respondent’s website offers clothing for sale which is branded with the wording “ANTI SOCIAL SOCIAL CLUB” and competes with the Complainant’s authorized sales channels.
While the Respondent’s website contains language towards the end of the website which suggests it is competitive with the Complainant, the Panel does not consider this language to act as a sufficient disclaimer or explanation to prevent Internet users being misled as to the ownership or operation of the website, owing not only to its content but also the choice of the disputed domain name which the Panel finds to be inherently misleading. The Panel accepts the Complainant’s contention that the language used by the Respondent towards the end of its website appears intended more to disparage the Complainant’s own website and services than to avoid public confusion.
The Panel infers in the circumstances that the Respondent was clearly aware of the Complainant’s trademarks ASSC, ANTI SOCIAL SOCIAL CLUB and the Figurative Mark and registered the disputed domain name with the intention of taking unfair advantage of the Complainant’s commercial goodwill attaching to those trademarks. The Panel finds the disputed domain name to be inherently misleading as inevitably suggesting to Internet users that it is owned, operated or authorized by the Complainant and, further, that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
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, <asscshop.com>, be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: April 20, 2022