WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ASOS plc v. Domain Admin, Whois protection, this company does not own this domain name s.r.o. / POSTE RESTANTE Novak Jan
Case No. D2017-0822
1. The Parties
The Complainant is ASOS plc of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Stobbs IP Limited, United Kingdom.
The Respondent is Domain Admin, Whois protection, this company does not own this domain name s.r.o. of Prague, Czech Republic / POSTE RESTANTE Novak Jan of Bratislava, Slovakia.
2. The Domain Name and Registrar
The disputed domain name <asosasos.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2017. On April 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2017, 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 May 8, 2017 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 May 11, 2017.
On May 8, 2017, the Center sent an email communication to the parties in both Slovak and English regarding the language of the proceeding. On May 11, 2017, the Complainant requested in its amended Complaint for English to be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 May 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2017.
The Center appointed Linda Chang as the sole panelist in this matter on June 15, 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 which includes the subsidiary licensee “ASOS.com Ltd” under which the ASOS brand primarily trades.
The Complainant has extensive trade mark registrations for the mark ASOS around the world, including by way of example the following trade mark registrations which predate the first registration of the disputed domain name:
- United Kingdom Trade mark Registration No. UK00002530115 for the word mark ASOS with priority date from October 28, 2009, registered on December 7, 2012; and
- Chinese Trade mark Registration No. 8762977 for the word mark ASOS registered on November 21, 2011.
The Complainant’s business was launched in June 2000 under the name “As Seen On Screen”. In October 2000 the Complainant purchased the domain name “www.asos.com”. In July 2003, the AsSeenOnScreen online retail business was moved from “www.asseenonscreen.com” to its current website “www.asos.com”.
On August 7, 2003, “AsSeenOnScreen Holdings plc” and “AsSeenOnScreen Limited” were changed to “ASOS plc” (UK Company No. 04006623) and “ASOS.com Limited” (UK Company No. 03584121).
The Complainant currently owns (via its subsidiary, “ASOS.com Ltd”) over 300 Top-Level “ASOS” domain names.
As confirmed by the Registrar, the disputed domain name was registered on September 25, 2015. The disputed domain is currently being used to display pay-per-click (“PPC”) sponsored links.
5. Parties’ Contentions
The Complainant contends as follows:
A. (i). Language of proceeding
Pursuant to paragraph 11 of the UDRP Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise.
The Registrar confirmed that the language of registration agreement is Slovak. The Complainant provided the following reasons why the proceedings such proceed in English and not Slovak:
a. The disputed domain name is registered in simple Latin script, with no diacritics or ligatures used;
b. The address provided for the disputed domain name relates to a Slovakian post office which could be inaccurate, therefore challenging any inference that the Respondent is a native Slovak speaker and/or a Slovak national or resident;
c. The disputed domain name is for sale in English and has been listed via AfterNIC, as United States of America (“US”) based reseller operating in American English;
d. The disputed domain name itself features content in English and automatically re-directs to fashion relation content in English.
e. As the Complainant is unable to communicate in Slovak, the translation of all documents would result in it incurring substantial costs.
A. (ii). The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights
(a) The Complainant owns extensive rights in the sign ASOS including, but not limited to, the trade mark registrations. This clearly demonstrates that the Complainant has rights in the mark ASOS in accordance with the dispute policy rules (3)(b)(viii).
(b) The Complainant has a significant reputation and has built up a vast amount of goodwill in the sign ASOS in the UK and abroad in relation to a wide range of goods and services, most notably in relation to online fashion retailing.
(c) That the Complainant’s main website “www.asos.com” is a well-known and popular website, being the second most visited fashion website in the world. For the financial year ending March 31, 2012, the Complainant’s annual turnover was over GBP 494,957million.
(d) The ASOS mark is a coined term with no linguistic meaning other than a direct reference to Asos and its business.
(e) Consumers are likely to associate the disputed domain name with Asos as this is the only term used, and the repetition of the term simple services to reinforce the impression that this is the ASOS brand.
(f) The link to the Complainant is reinforced by the random content on the website, which generates links, including to the Complainant’s website “www.asos.com”.
(g) The Complainant has a body of previous decisions relating to domain names comprising of “ASOS”, which act to support that the Complainant has a significant portfolio of trade mark applications and registrations, a reputation in the ASOS brand and that a likelihood of confusion does exists in relation to domain names comprising “ASOS” and/or an additional element.
A. (iii). The Respondent has no rights or legitimate interests in respect of the disputed domain name
(a) The disputed domain name has a long history of being used in an abusive manner. When the disputed domain was first registered in November 25, 2011 by an individual called Steven Utteridge, UK, the Complainant already had a substantial reputation in the ASOS brand.
(b) From September 2015, the Registrar changed to Name Bright. Following on from correspondence with Name Bright, I.G. Hong Kong, was revealed as the owner. I.G.’s details were shown on WhoIs until April 28, 2016.
(c) I.G. has registered more than 2000 domains, including a number of abusive domain names. These include well-known fashion brands that I.G. does not appear to have any legitimate interest in, including <adidasonline.com>, <abercrombieandfich.com>, <dailyjordans.com> and more.
(d) The Respondent is not using the domain, against which this Complaint is filed, in connection with a bone fide offering of goods or services.
(e) The Respondent has never (either as an individual or business), to the best of the Complainant’s knowledge, been known by the disputed domain name.
(f) The Respondent is also not making any legitimate, noncommercial or fair use of the disputed domain name and is, in fact, making unfair use of the disputed domain name with the sole intention of gaining financially.
A. (iv). The disputed domain name was registered and is being used in bad faith
(a) The Respondent has registered and/or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant, who is the owner of the trade mark, for valuable consideration in excess of any documented out-of-pocket costs directly related to the disputed domain name.
(b) This is evidenced by the Respondent offering the disputed domain name for sale via “Afternic.com” in the capacity of a broker for USD 4,750.
(c) Such conduct was held in Cruzeiro Licenciamentos Ltda. v. David Sallen, Sallen Enterprises and J.D.Sallen Enterprises, WIPO Case No. D2000-0715 as a factor in tilting the inference against the Respondent and assisting the Complainant in discharging the onus of proof of bad faith, specifically: “(the) mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale.”
(d) The Respondent has registered the disputed domain name in order to prevent the Complainant, the owner of the trade mark and goodwill in the ASOS brand, from the reflecting the mark in a corresponding disputed domain name.
(e) The Respondent has registered and/or acquired the disputed domain name primarily for the purpose of disrupting the business of a competitor.
(f) The Respondent will expect the Complainant to learn of his domain name registration and/or acquisition and offer to purchase the disputed domain name for a sum in excess of his out-of-pocket expenses.
(g) The Respondent has intentionally attempted 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 or location of product or service on the Respondent’s website or location. This includes redirects through to specific products on the Complainant’s www.asos.com.
(h) In view of the distinctive nature of the ASOS trade mark, and the colossal scope of the Complainant’s business, there is no way in which the Respondent could use the disputed domain name without falling foul of paragraph 4(b), such that their registration and use is in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of proceedings
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. Paragraph 11 is intended to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
Paragraph 10 of the Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.
The Complainant filed the Complaint in English and requested that the language of the proceedings be in English.
The Center sent “dual language” case-related communications to the parties (i.e., in both English and Slovak) to give the Respondent opportunity to comment on the language of proceedings. The Respondent did not respond.
The Panel notes that the disputed domain name is listed for sale on AfterNIC, as US-based website operating in English. In addition, the disputed domain name itself features sponsored content in English and automatically re-directs to content in English.
The Panel finds that the Respondent is not prejudiced by these proceedings in English and requiring the Complainant to submit its Complaint in Slovak would be overly onerous, causing undue burden in terms of translation expenses and delay. This is against the spirit of the UDRP which should provide an inexpensive and expeditious resolution of domain name disputes.
The language of these proceedings will be in English.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Complainant has established prior rights in the trade mark ASOS. The Complainant’s mark is registered throughout the world.
The disputed domain name comprises the trade mark in its entirety, repeated twice.
The panel finds that the disputed domain is confusingly similar with the Complainant’s trade mark pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 7.1, it is well established that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
There is nothing in the case file to suggest that the Respondent has been commonly known by the disputed domain name.
The Respondent has not submitted a Response, and has failed to provide any circumstances or evidence that could have demonstrated rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
The Panel holds that the Respondent has no rights or legitimate interests in the domain name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
To satisfy paragraph 4(a)(iii) of the Policy, the Complainant must show that the disputed domain name has been registered and is being used in bad faith.
The Panel finds that on the basis of the evidence provided by the Complainant that the Complainant’s marks are well-known worldwide. It is unlikely that at the time of acquisition of the disputed domain name that the Respondent was unaware of the Complainant’s prior rights.
The Panel finds that the disputed domain name has been registered and/or acquired for the purposes of profiting from the name ASOS.
In accordance with paragraph 4(b)(i), the Respondent has likely acquired the disputed domain name for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant for consideration in excess of out-of-pocket costs. This is evidenced by the Respondent is offering to sell the disputed domain name for USD 4,750 through third party website “www.afternic.com”. See Cruzeiro Licenciamentos Ltda. v. David Sallen, Sallen Enterprises and J.D.Sallen Enterprises, WIPO Case No. D2000-0715.
In accordance with 4(b)(iv), the Respondent is using the disputed domain name to attract visitors for commercial gain, creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. This is evidenced by the display of related sponsored links on the website at the disputed domain name.
The Complainant has provided satisfactory evidence that the Respondent’s conduct falls within paragraph 4(b) of the Policy and accordingly, the Panel concludes that the Respondent registered/acquired and uses the disputed domain name 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 <asosasos.com> be transferred to the Complainant.
Date: July 5, 2017