WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ASOS plc v. Zhao Ke
Case No. D2017-2458
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 Zhao Ke of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <asos.asia> is registered with 1API GmbH (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 13, 2017. On December 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 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.
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 December 15, 2017. Due to an inadvertent error, the Respondent was not sent the Notification of Complaint via email, though written notice was properly sent to the Respondent. Accordingly, on January 2, 2018, the Center informed the Parties that the Respondent was granted an additional 20 calendar days to file its Response. In accordance with the Rules, paragraph 5, the due date for Response was January 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 23, 2018.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 29, 2018. 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's business was established in 1999 as an Internet company through which customers could obtain products such as clothing and accessories, examples of which had been seen on film or television. It was originally called "As Seen on Screen". Such name was later changed to "ASOS". The Complainant is the owner of trademark rights in the sign ASOS. The Complainant's ASOS trademark was registered in China since 2011.
The Complainant is the owner of the domain names <asos.com> and <asos.co.uk> through which it conducts its online business. The Complainant claims to be a leading global online fashion and beauty retailer and the UK's largest online fashion retailer. It claims to ship to more than 240 countries and territories and to sell over 85,000 branded and own label products. The ASOS trademark is heavily promoted through Internet marketing and social media including Instagram, Facebook, Google and Pinterest. It has been widely reported in the media and has received several awards and accolades including the 2015 Cosmopolitan Fashion Awards Best Online Offering.
The disputed domain name was registered on January 22, 2013. The disputed domain name is not in use.
5. Parties' Contentions
The Complainant states that:
- The disputed domain name is confusingly similar to the ASOS trademark in which the Complainant has shown that it has rights.
- The addition of the generic Top-Level Domain ("gTLD") ".asia" to ASOS does very little to alter this conclusion.
- The word "Asia" can clearly be associated with the Complainant's own ASOS trademark and business. The Complainant is a global online fashion and beauty retailer, offering various products, which are delivered to over 240 countries worldwide, of which countries in Asia are included. Asia is a territory where the Complainant has a presence.
- The Complainant's ASOS trademark is a coined term with no linguistic meaning other than a direct reference to ASOS and its business. The word ASOS arose from the acronym of the original name of the Complainant's business, "As Seen On Screen".
With respect to rights or legitimate interests, the Complainant states that:
- There is no believable or realistic reason for registration or use of the disputed domain name other than to take advantage of the Complainant's trademark rights in ASOS.
- 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.
- The Respondent is offering the disputed domain name for sale via Afternic.com for no less than USD 9,999.
- The Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services: the disputed domain name is simply inactive and states "Error- the requested URL could not be retrieved".
- The Complainant further submits that the passive holding does not preclude a finding of bad faith and requests that the Panel considers a common practice employed by previous panels by examining all the surrounding circumstances in which a domain may appear to be, or is claimed to be held, passively without any evident usage or purpose.
- 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.
With respect to bad faith registration and use, the Complainant states:
- The registration of the disputed domain name is a classic example of bad faith registration in accordance with 4(b) of the Dispute Resolution Policy, that is, that the facts illustrate evidence of registration and use in bad faith.
- The disputed domain name is currently inactive and no commercial use has been made of the disputed domain name by the Respondent.
- A bad faith registration is thus shown by the Respondent's failure to make good faith use of the disputed domain name.
- There is nothing within the Respondent's particulars to indicate any entitlement or interest in the legitimate use of the disputed domain name.
- The Respondent registered the disputed domain name with the primary purpose of selling the domain to the Complainant who is the owner of the trademark for valuable consideration in excess of the Respondent's documented out-of-pocket costs. This conduct is clearly shown by the Respondent's listings of the Disputed Domain on the aftermarket for USD 9,999. Such conduct is undoubtedly in accordance with paragraph 4(b)(i) as the Respondent's obvious primary intention is to sell the Disputed Domain to the Complainant (the Complainant being the rights holder) for a large financial sum.
- The Respondent also has a clear history of registering domain names, which have value to the rights holder of a particular brand. The complaint includes an annex with a list of all domains registered by the Respondent: the Respondent has an obvious policy of trading on the value of the marks for which the Respondent has registered that relate to famous fashion and sportswear brands.
- The Respondent's policy of trading on the value of marks can be seen in the current instance, and is in accordance with paragraph 4(b)(i) of the Policy, as the clear intention behind this policy is to sell the disputed domain name (and other domain names) to the rights holder (in this case being the Complainant)
- In accordance with 4(b)(ii) of the Policy, the Complainant submits that the Respondent has registered the disputed domain name in order to prevent the Complainant, the owner of the trademark and service, from registering the mark is a corresponding domain name.
- The Respondent's unaltered reproduction of the ASOS trademark clearly proves that the Respondent was aware of the existence of the Complainant's trademark.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The 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 Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
To comply with this requirement, the Complainant must establish that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this mark, see paragraph 4(a)(i) of the Policy.
The Complainant has sufficiently shown that it has trademark registrations consisting of or incorporating "ASOS".
The Complainant's trademark is incorporated in the disputed domain name, but with addition of the gTLD ".asia". The Panel finds that the gTLD ".asia" is not to be taken into account in assessing identity or confusing similarity of the disputed domain name and the Complainant trademark. Therefore, the Panel will not consider the suffix ".asia" in assessing whether <asos.asia> is identical or confusingly similar to the Complainant's trademark ASOS. The Panel finds that after eliminating this suffix, the disputed domain name is identical to the Complainant's trademark ASOS.
Given the foregoing, the Panel finds that the Complainant has established the first element of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.
The Panel finds that the Complainant has made a sufficient prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. As the Respondent did not respond to the Complainant's contentions, the Complainant's contentions are deemed undisputed, and the Complainant's burden of proof under paragraph 4(a)(ii) of the Policy is thereby satisfied.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name <asos.asia>.
This finding is based on the following, non-disputed, circumstances:
- The Complainant has no relationship or affiliation with the Respondent and has never authorized the Respondent to use the trademarks in the disputed domain name or any other domain name.
- There is no indication in the file that the Respondent is known under the disputed domain name.
- The Respondent is not using the disputed domain name, against which this Complaint is filed, in connection with a bona fide offering of goods or services. Rather the disputed domain name is simply inactive and states the following error message: "This site can't be reached".
- The Respondent is also not making any genuine legitimate noncommercial or fair use of the disputed domain name.
The Respondent did not reply to the Complainant's contentions in order to demonstrate any rights or legitimate interests in the disputed domain name. Therefore the only plausible reason, in the view of the Panel, for the Respondent to register the disputed domain name was to take advantage of the Complainant's right to ASOS and gain financial profit.
For the foregoing reasons, the Panel cannot find evidence that the Respondent could have rights or legitimate interests in the Disputed Domain Name and finds the third element of paragraph 4(a)(ii) of the Policy has been established.
C. Registered and Used in Bad Faith
The disputed domain name comprises two parts. First, the Complainant's trademark, which is an invented word formed from the acronym from the Complainant's previous name "As Seen on Screen". The second part comprises the gTLD ".asia".
With respect to registration, the Panel observes that the Complainant is a United Kingdom company that also operates in Asia. It is not conceivable that the Respondent could have chosen to include the Complainant's well-known trademark in the disputed domain name without having the Complainant in mind.
The disputed domain name is not in use. A non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details, and (iv) the implausibility of any good faith use to which the domain name may be put (see WIPO Overview 3.0, section 3.3).
The Panel takes into account the following circumstances:
- the disputed domain name, apart from the gTLD suffix, is identical to the Complainant's ASOS trademark.
- the Respondent registered the disputed domain name long after the Complainant started using the trademark ASOS, and also after the registration of the ASOS trademark.
- the failure of the Respondent to submit a response.
- the lack of actual or contemplated good-faith use of the disputed domain name.
- In addition the Panel has verified that the Respondent "Zhao Ke" has also been a respondent in twenty two (22) previous UDRP cases, where it was decided that the registrations were in bad faith.
The Panel therefore finds that the disputed domain name has been registered and has been used in bad faith. The third element of the Policy is thereby satisfied.
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 <asos.asia> be transferred to the Complainant.
Pablo A. Palazzi
Date: February 19, 2018