WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ASOS plc v. Dawei Xie
Case No. D2016-1244
1. The Parties
The Complainant is ASOS plc of London, the United Kingdom of Great Britain and Northern Ireland, represented by Stobbs IP Limited, the United Kingdom of Great Britain and Northern Ireland.
The Respondent is Dawei Xie of Guangzhou, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <dressasoshop.com> is registered with Xin Net Technology Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 20, 2016. On June 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 21, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 23, 2016, the Center transmitted by email in English and Chinese to the Parties a request for submissions on the issue of the language of proceeding. On June 28, 2016, upon the Complainant's request, the Center extended the due date for 3 days for the parties to submit language requests. On July 30, 2016, the Complainant submitted by email the request for English to be the language of proceeding. The Respondent did not submit any language request.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 26, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on August 2, 2016. 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 the parent company of the ASOS group of online fashion retail companies, which includes the subsidiary licensee, ASOS.com Ltd. The ASOS Group operates a global online fashion store at "www.asos.com", amongst other language-specific websites and its mobile platforms. The Complainant sells over 80,000 branded and own label products and ships to more than 240 countries and territories around the world.
The ASOS Group's business was established in 1999 under a different name (AsSeenOnScreen). The Complainant states that its ASOS brand identity began almost immediately as the business began to be referred to internally as "ASOS" (the acronym of As Seen On Screen). The Complainant's domain name <asos.co.uk> was purchased in August 1999, followed by <asos.com> in October 2000. From 2002, the name ASOS began to be used on its stationery and on the website. In August 2003, the names of "AsSeenOnScreen Holdings plc" and "AsSeenOnScreen Limited" were changed to "ASOS plc" and "ASOS.com Limited". From that point onwards, the business was outwardly known as ASOS.
The Complainant has registered trade mark rights in the mark ASOS in, inter alia, the European Union and China dating back to 2005. It currently owns, via its subsidiary, ASOS.com Limited, over 180 domain names containing the ASOS trade mark.
The Complainant asserts it has a significant reputation and built up a vast amount of goodwill in the trade mark ASOS in the United Kingdom of Great Britain and Northern Ireland and abroad, in relation to a wide range of goods and services. As of August 2015, the Complainant's annual turnover was over GBP 1.1 billion. The Complainant's fashion website is the second most visited fashion website in the world and received 114 million visits during the month of December 2015.
The Complainant employs a variety of marketing channels to promote its ASOS brand including Internet marketing, social media, and magazines. It has 4.2 million followers on Instagram and more than 4 million likes on Facebook.
The Complainant has won many awards and accolades including before the registration of the disputed domain name.
ASOS is traded on the London Stock Exchange Alternative Investment Market, and has four offices in the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name was registered on May 8, 2016.
5. Parties' Contentions
1. The disputed domain name is confusingly similar to the Complainant's ASOS trade mark. The disputed domain name contains the ASOS trade mark in its entirety with the addition of two word elements, "dress" and "shop". Although the letter "S" of the Complainant's ASOS mark is shared with the letter "S" of the non-distinctive word, "shop" within the disputed domain name, this would not change the reading of the disputed domain name as being "dress ASOS shop". This is reinforced by the content of the Respondent's website which contains both the Complainant's images and the ASOS trade mark. It is reasonable to assume that Internet users, upon searching online for the Complainant, would type in words such as "dress" and "shop" together with the ASOS trade mark.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. Bearing in mind the substantial reputation of the ASOS brand and the ASOS Group's operations in a wide range of goods and services since as early as 2002, there is no plausible reason for the Respondent's registration or use of the disputed domain name other than to take advantage of the Complainant's rights.
The disputed domain name resolves to a website called "Monsoon Dresses" which bears no resemblance to the website name. The Respondent's website claims to sell the Complainant's ASOS products and is using, without the Complainant's authorization, the ASOS trade mark and the Complainant's model images. There is therefore copyright and trade mark infringement. This suggests that that the Respondent is using the disputed domain name, containing the Complainant's ASOS trade mark, to lure customers to its website under the false pretence of an authorized connection to the Complainant. The Respondent's website also sells fashion items under third-party trade marks which are prominent within the high street fashion industry (e.g., MONSOON and TED BAKER). These sales are likely to be unauthorized as the Respondent has no apparent connection with these third-party brands.
The Complainant's own ASOS-branded products are only available for purchase through the websites at "www.asos.com" or the Complainant's country-specific websites (e.g., "www.asos.fr", "www.asos.de"). Any sales of ASOS-branded products offered on any other third-party website is therefore not authorized and not legitimate. The Respondent is therefore using the disputed domain name with intent for commercial gain and misleadingly to divert consumers.
The Respondent's use of the Complainant's trade mark ASOS in the disputed domain name and its use of directly-reproduced images taken from the Complainant's website at "www.asos.com" without authorization incorrectly suggest to the website user that the Respondent's website is associated, affiliated with or endorsed by the Complainant when it is not.
A Reverse WhoIs in respect of the Respondent shows that the Respondent is the owner of nearly 50 domain names. Of these, over half contain other well-known fashion brands that the Respondent does not appear to have any legitimate interest in, including VIVIENNE WESTWOOD, KAREN MILLEN, ALEXANDER MCQUEEN, LOUIS VUITTON, DIESEL, MICHAEL KORS and MONSOON.
3. The disputed domain name was registered and is being used in bad faith. The circumstances show that the Respondent has registered the disputed domain name (i) primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant, who is the owner of the trade mark ASOS from reflecting its mark in a corresponding domain name; and (ii) for the purpose of disrupting the business of a competitor. The Respondent's pattern of behaviour in registering domain names containing well-known fashion brand names, including ASOS, is clear evidence that the Respondent's primary objective in obtaining these registrations is to sell the disputed domain name to the brand-owner for financial gain. The Respondent's bad faith is also shown in the fact that the disputed domain name contains the identical element, ASOS, with additional elements which immediately suggest a connection to the Complainant due to their significance in the fashion space.
The products being sold through the Respondent's website have not been authorized by the Complainant and may not adhere to the standards that consumers have come to expect and rely on from the Complainant's product. Sales of low grade or low quality products are liable to damage the Complainant's reputation. This may lead to a loss of sales made through the Complainant's website at "www.asos.com". It is the Respondent's intention to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Policy requires the Complainant to prove all three elements, namely that:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 Respondent has registered and is using the disputed domain name in bad faith.
A. Language of the Proceeding
A preliminary issue to be addressed is the language of the Registration Agreement, which is Chinese, whereas the Complaint was filed in English. The Complainant requested that English be the language of the proceeding for these reasons:
(a) The disputed domain name is in English, which implies that the Respondent has, at least, a basic comprehension of English.
(b) The Respondent's website content is presented entirely in English. It is therefore reasonable to infer that the Respondent has a good grasp of English. It is also clear from the Respondent's website that it is aimed at the UK market as the prices are given in British Pounds Sterling.
(c) The evidence shows that the Respondent has registered many domain names, all of which are in English that resolve to English websites. This also suggests that the Respondent is familiar with English.
(d) If Chinese were to be the language of the proceeding, the Complainant would incur additional expense in translation costs as well as additional damage due to delays caused by the work involved in obtaining translations of all the documents.
The Respondent did not respond on the issue of the language of the proceeding.
Paragraph 11(a) of the Rules states that: "[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The Panel determines in this case that it would be appropriate for English to be the language of the proceeding. Pursuant to the Rules, the Panel has to ensure that the proceeding takes place with "due expedition" (paragraph 10(c) of the Rules). If the Panel were to require the Complainant to translate the Complaint and accompanying evidence into Chinese, this would result in an undue delay of the proceeding. The Panel is persuaded by the evidence tendered by the Complainant that the Respondent has a fairly good grasp of the English language and a level of familiarity with it that removes any concern of prejudice that may be caused to the Respondent if Chinese were not adopted as the language of the proceeding. In view of the fact that the disputed domain name and other domain names registered by the Respondent are in English and the fact that the website content is entirely in English, and the Respondent has not argued otherwise, the Panel accordingly determines that it would be appropriate for English to be the language of the proceeding in this case.
B. Identical or Confusingly Similar
The Complainant's rights in the ASOS trade mark have been established in this case, both by virtue of its trade mark registrations as well as by virtue of its long term of use and reputation.
The Panel agrees that the disputed domain name is confusingly similar to the Complainant's ASOS trade mark. The trade mark has been incorporated in its entirety and it is a well-established principle that the generic Top-Level Domain extension may be disregarded when considering the issue of whether a disputed domain name is identical or confusingly similar to a complainant's trade mark since its presence is a technical requirement.
The addition of the words "dress" and "shop" wherein the letter "s" in the latter has overlapped with the last letter "S" in the ASOS trade mark does not serve to avoid the confusing similarity with the Complainant's trade mark. Moreover, any residual doubt that one may have that the dispute domain name is confusingly similar to the Complainant's ASOS trade mark is removed in the light of the evidence tendered by the Complainant of the content of the Respondent's website. The website makes clear and explicit references to the ASOS trade mark and incorporates images taken from the Complainant's website.
The Panel therefore finds that the first element of paragraph 4(a)(i) of the Policy has been satisfied.
C. Rights or Legitimate Interests
The Complainant is required to satisfy its burden under paragraph 4(a)(ii) of the Policy by establishing a prima facie case which shows the Respondent's lack of rights or legitimate interests. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"))
The Panel finds that the evidence submitted by the Complainant has been sufficient to meet the requirements of paragraph 4(a)(ii) of the Policy. The Respondent did not file any Response and thereby forfeited the opportunity afforded to establish its rights or legitimate interests in the disputed domain name. There has been no rebuttal evidence provided by the Respondent which demonstrates it has a right or legitimate interest in the disputed domain name.
The Panel therefore finds in favour of the Complainant on this issue under paragraph 4(a)(ii).
D. Registered and Used in Bad Faith
The Panel finds that the Respondent has registered the disputed domain name for the purpose of attracting Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's ASOS mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site for commercial gain.
It appears from the evidence that the Respondent knew of the Complainant and of its ASOS mark when it registered the disputed domain name and had deliberately chosen the disputed domain name with the Complainant and its trade mark in mind.
The Panel also draws an adverse inference from the apparent behavioural pattern of the Respondent in registering domain names containing well-known fashion brand names, including ASOS.
In the circumstances, the Panel concludes that the disputed domain name was registered and has been used by the Respondent in bad faith. The Panel is of the view that the Complainant has satisfied the requirements of paragraph 4(b)(iv) 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 disputed domain name <dressasoshop.com> be transferred to the Complainant.
Date: August 8, 2016