WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ASOS plc v. Michael Getz
Case No. D2017-0052
1. The Parties
The Complainant is ASOS plc of London House, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Stobbs IP Limited, UK.
The Respondent is Michael Getz of Bergholz, Ohio, United States of America ("US").
2. The Domain Name and Registrar
The disputed domain name <asosaustralia.top> is registered with SafeNames Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 11, 2017. On January 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2017, 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. Due to a deficiency in the Complaint, on January 23, 2017, the Center requested the Complainant to submit an amendment to the Complaint. The Complainant submitted an amended Complaint on January 26, 2017.
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 January 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 17, 2017.
The Center appointed Alfred Meijboom as the sole panelist in this matter on February 28, 2017. 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. The Complainant submitted evidence of it owning registered trademark for the term ASOS in many jurisdictions in the world as of 2009, including Australian trademark registrations 1366279 and 1456491 of June 9, 2010 and August 10, 2010, respectively, for, inter alia, cosmetics, bags, clothing, jewelry and retail services (the "ASOS Mark").
The Respondent registered the disputed domain name on May 20, 2016. The disputed domain name resolves to a website showing that it has been temporarily suspended as a result of dispute resolution proceedings pursuant to the Uniform Rapid Suspension (URS) System or .us Rapid Suspension System Procedure and Rules.
5. Parties' Contentions
Established in 1999, the Complainant's online fashion and beauty retail organization sells over 85,000 branded and own label products and ships to more than 240 countries and territories around the world, with 2,500 new lines added each week, and it had an annual turnover of GBP 1,444.9 million in August 2016. For the financial year ending August 31, 2015, the Complainant's annual turnover was GBP 1,150.8 million. According to the Complainant it is therefore clear that it had a significance commercial presence before and throughout the lifetime of the registration of the disputed domain name.
The Complainant submits that the ".top" generic Top-Level Domain ("gTLD"), released in August 2014, which is an integral and technical part of the disputed domain name, may be disregarded in the determination of confusing similarity under the conventions of the Policy. Accordingly, the assessment is confined to the similarity between "asosaustralia" and the ASOS Mark. The Complainant asserts that it is clear that the disputed domain name is confusingly similar to the ASOS Mark as the disputed domain name simply comprises of the ASOS Mark in full with the addition of the country name "Australia", which does not detract from the overall confusing similarity. Australia is one of the Complainant's key markets. In consequence, the average Internet user would likely understand the combination of the ASOS Mark and the word Australia to denote that the disputed domain name was a particular sub-branch of the larger ASOS brand operating in that region so that the addition of the descriptive term Australia does not disassociate the disputed domain name from the Complainant or the ASOS Mark in any sufficient manner. According to the Complainant the disputed domain name is therefore identical and/or confusingly similar with the ASOS Mark.
The Complainant has not given the Respondent permission to use the ASOS Mark in any manner, including in domain names and the Respondent has not (either as an individual or business), to the best of the Complaint's knowledge, been known by the disputed domain name. The disputed domain resolves to a website that has been suspended under the URS. Before that the disputed domain name resolved to a website called "Bags Shop" offering a number of bag products for sale through the website, which would stand in direct competition with the Complainant's line of bag products. According to the Complainant the Respondent used the disputed domain name, including the ASOS Mark, to lure customers to his website under the false pretense of an authorized connection to the Complainant. Further, a reverse WhoIs search showed that the Respondent is the owner of no less 55 domain names, two of these domain names containing other well-known clothing brands that the Respondent does not appear to have any legitimate interest in. The Complainant contents that the fact that the Respondent has registered such domain names containing and/or resolving to websites purporting to be associated with other well-known brands demonstrates that the Respondent has no legitimate interests or rights in any of these domains, including the disputed domain name, and has registered the disputed domain name in bad faith.
The Complainant further submits that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the ASOS Mark in a corresponding domain name and that that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor, namely the Complainant, as the Respondent is purporting to be affiliated with, authorized by and linked to the Complainant. The Complainant considers the Respondent's use of the disputed domain name to be in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Respondent did not file a response. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the consensus view of UDRP panelists is that the Respondent's default does not automatically result in a decision in favor of the Complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent's default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
- The Panel further notes that a prior URS procedure against a disputed domain name does not necessarily prevent a UDRP Panel from rendering a decision nor does it bind a UDRP Panel's findings in its assessment under the elements. See SRAM, LLC v. Li Qing, WIPO Case No. D2016-1172.
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the ASOS Mark. The disputed domain name reproduces the ASOS Mark in its entirety. It is consistently decided that adding a generic or geographic term – in this case "Australia" – to an established mark does not affect the finding that a domain name is confusingly similar to that mark (e.g., Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 and Allianz, Compañia de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942). Furthermore, the addition of the gTLD ".top" is non-distinctive because it is required for the registration of a domain name.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's ASOS Mark, and the first element is met.
B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant contends that it did not authorize the use of the ASOS Mark to the Respondent. Furthermore, the Panel is satisfied that there is no indication that the Respondent has been commonly known by the disputed domain name or that it has used the disputed domain name for a bona fide offering of goods or services.
In absence of a reply from the Respondent, the Panel finds that the Complainant has made an unrebutted prima facie case. As a result, the Panel is satisfied the Respondent has no rights or legitimate interests in the disputed domain name. Therefore, the second element of paragraph 4(a) of the Policy is met.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the ASOS Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service offered on the Respondent's website or location.
In the Panel's view, it is obvious that at the time the Respondent registered the disputed domain name he must have had the ASOS Mark in mind as it had already been registered and used for many years worldwide, and the website to which the disputed domain name originally resolved offered goods in direct competition with the Complainant.
The Panel is further satisfied that the use which the Respondent made of the disputed domain name to attract Internet users for the Respondent's commercial gain in direct competition with the Complainant constitutes use of the disputed domain name in bad faith. The fact that the disputed domain name currently redirects to a website informing that the "site is suspended" does not impact the Panel's assessment for purposes of the Policy.
Therefore, the third element of paragraph 4(a) of the Policy is met.
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 <asosaustralia.top> be transferred to the Complainant.
Date: March 14, 2017