WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ASOS plc v. WhoisGuard Protected, WhoisGuard Inc. / Charlotte Meilleur
Case No. D2018-0071
1. The Parties
The Complainant is ASOS plc of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Stobbs, IP Limited, UK.
The Respondent is WhoisGuard Protected, WhoisGuard Inc. of Panama / Charlotte Meilleur of Paris, France.
2. The Domain Name and Registrar
The disputed domain name <asos-de.com> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 12, 2018. On January 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2018, 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 January 17, 2018 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 January 19, 2018.
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 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 12, 2018.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on February 15, 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 is the parent company of a group of companies operating online in the field of fashion retail (the "ASOS Group"). The ASOS business was established in 1999 as an Internet enterprise through which customers could source products that they had seen worn or used by television or movie stars. The business was originally named "As Seen On Screen", which after a few years became ASOS. The ASOS Group has now become a leading global fashion and beauty retailer and is, according to the Complainant, the UK's largest online-only fashion retailer. The ASOS group ships in more than 240 countries and territories and sells over 85,000 branded and own label products.
The ASOS Group operates through several websites, in five different languages, and through dedicated mobile platforms. The ASOS Group offers a printed and online magazine and has an established presence on social media, including Instagram (with 6.4 million followers), Facebook (with 5 million "likes"), Twitter (with 1.04 million followers), Google+ (with 2.4 million followers), etc.
In August 2017, the ASOS Group's annual turnover exceeded GBP 1,900 million, while the total retail sales generated in the UK as of August 2017 amounted to GBP 698.2 million.
The Complainant has an extensive worldwide trademark and domain name portfolio referring to the sign ASOS. The Complainant is the owner of the European Union trade mark ("EUTM") ASOS (word mark), No. 016053101, filed on November 16, 2016 and registered on September 15, 2017, in respect of goods and services in classes 3, 4, 5, 8, 9, 14, 16, 18, 20, 21, 24, 25, 26, 28 and 35; and of the UK trademark ASOS (word mark) No. UK00002530115, filed on October 28, 2009 and registered on December 7, 2012, in respect of goods and services in classes 3, 8, 9, 11, 14, 18, 21, 26, 35 and 36. Previous UDRP decisions have found that the ASOS trademark enjoys extensive reputation.
The disputed domain name was registered on October 8, 2017, well after the beginning of the Complainant's activities and the registration of the ASOS trademarks. The disputed domain name does not resolve to an active website.
5. Parties' Contentions
The Complainant's contentions are the following.
The disputed domain name is identical or confusingly similar to the ASOS trademark since it fully includes this trademark with the sole addition of the letters "de", which refer to Germany. Germany is a core market for the ASOS Group and the Complainant has a significant presence in this country, through its German website "www.asos.de". Therefore, the addition of the letters "de" to the ASOS trademark do not diminish the confusing similarity between the disputed domain name and the Complainant's trademark.
The Respondent lacks rights or legitimate interests in the disputed domain name since:
- at the time of registration of the disputed domain name, the ASOS trademark already enjoyed wide reputation in a vast variety of goods and services, and the only possible reason for registering the disputed domain name was to take advantage of the ASOS trademark;
- the disputed domain name is inactive and therefore the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, nor is making a legitimate noncommercial or fair use of the disputed domain name;
- the Respondent is not known by the disputed domain name;
- the Complainant did not license nor authorize the Respondent to reproduce the ASOS trademark in the disputed domain name.
The registration of the disputed domain name is a clear case of bad faith registration under paragraph 4(b) of the Policy. The reproduction of the ASOS trademark proves that the Respondent was aware of the existence of the Complainant's trademark at the time of registration of the disputed domain name.
The unauthorized use of a third party's well-known trademark cannot amount to an actual or contemplated bona fide or legitimate use of the disputed domain name. According to the Complainant, the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name, to divert Internet traffic from the Complainant's website, and to disrupt the business of a competitor.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
According to paragraph 4(a)(i) of the Policy, in order to succeed in a UDRP proceeding, the Complainant must first prove that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights.
The Complainant has submitted a list of all its ASOS trademarks with all relevant details. Preliminarily, the Panel points out that a mere list of trademarks originating from the Complainant's representatives, even if completed with all relevant details, is insufficient to prove that the Complainant holds registered rights in a given trademark. To do so, it is necessary to either submit a certificate of registration of the relevant Trademark Office or, at least, an excerpt from an official Trademark Office's database.
Nonetheless, in the instant case, the Panel notes that other panelists in previous and recent UDRP decisions have ascertained that the Complainant effectively owns registered rights in the ASOS trademark. Moreover, in accordance with the limited powers conferred to the Panel under paragraph 10 of the Rules, the Panel has ascertained that the Complainant is at least the owner of the EUTM ASOS (word mark), No. 16053101, filed on November 16, 2016 and registered on September 15, 2017, in respect of goods and services of classes 3, 4, 5, 8, 9, 14, 16, 18, 20, 21, 24, 25, 26, 28 and 35; and of the UK trademark ASOS (word mark) No. UK00002530115, filed on October 28, 2009 and registered on December 7, 2012, in respect of goods and services in classes 3, 8, 9, 11, 14, 18, 21, 26, 35 and 36.
The Panel will therefore evaluate the first requirement under paragraph 4(a)(i) of the Policy, with respect to those trademark registrations.
The disputed domain name incorporates the Complainant's ASOS trademark in its entirety, together with the suffix "-de". The Complainant's ASOS trademark is clearly recognizable in the disputed domain name, and the addition of "-de" does not serve to avoid a finding of confusing similarity. The generic Top-Level Domain ".com" may be disregarded for the purposes of comparison under this element.
In consideration of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the ASOS trademark in which the Complainant has rights.
Therefore, the Panel is satisfied that the first condition under the Policy is met.
B. Rights or Legitimate Interests
The second condition to prove in order to succeed in a UDRP proceeding, is that the Respondent lacks rights or legitimate interests in the disputed domain name (paragraph 4(a)(ii) of the Policy).
While the overall burden of proof rests with the complainant, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (see section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")).
In the instant case, the Complainant stated that it never licensed the ASOS trademark to the Respondent, and that it never authorized the Respondent to reflect its trademark in the disputed domain name.
Furthermore, the disputed domain name does not lead to an active website. As such, there is no evidence of prior use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, nor evidence of a legitimate noncommercial or fair use of the disputed domain name. Lastly, nothing in the Complaint, or elsewhere, suggests that the Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights in the disputed domain name.
According to paragraph 14(b) of the Rules, "if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules (…), the Panel shall draw such inferences therefrom as it considers appropriate". The Respondent had the possibility to rebut the Complainant's arguments on the lack of rights or legitimate interests in the disputed domain name by filing a Response, but failed to do so. Therefore, the Panel concludes that the Complainant has at least established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted.
In view of the foregoing, the Panel finds that the second condition under the Policy is also met.
C. Registered and Used in Bad Faith
The third and last condition under the Policy to succeed in a UDRP proceeding is that the Respondent registered and used the disputed domain name in bad faith.
Given the extensive reputation of the ASOS trademark – as already established in other UDRP decisions – and considering that the term "ASOS" is an invented word, with no meaning whatsoever, aside of being an acronym of the original name of the Complainant, it is inconceivable that the Respondent registered the disputed domain name by chance. On the contrary, it is highly likely that at the time of registration of the disputed domain name, the Respondent had well in mind the well-known ASOS trademark. The Respondent incorporated the ASOS trademark in the disputed domain name despite the lack of any relevant authorization from the trademark owner, probably with the intention to unduly exploit its reputation.
The disputed domain name fully includes the Complainant's trademark, followed by the suffix "-de". The word ASOS is a distinctive term, while the suffix "-de" is the country code for Germany. Therefore, Internet users, when facing the disputed domain name, will likely believe that it originates from the Complainant and refers to the Complainant's activities in Germany (see also Vogel Germany GmbH & Co. KG v. Daniel Havoger, Ha Wo Qi Guo Ji Mao Yi Shang Hai You Xian Gong Si, WIPO Case No. D2017-1669).
Therefore, the Panel concludes that the disputed domain name <asos-de.com> was registered in bad faith.
The disputed domain name does not lead to an active website. The non-use of a domain name does not preclude a finding of bad faith. According to section 3.3 the WIPO Overview 3.0, "[W]hile 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 (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put."
In the instant case, all conditions mentioned in section 3.3 of the WIPO Overview 3.0. exist: (i) the trademark ASOS is highly distinctive and enjoys extensive reputation; (ii) the Respondent failed to submit a response or to provide evidence of actual or contemplated good-faith use; (iii) the Respondent concealed its identity behind a privacy service; and (iv) there is no plausible good faith use by the Respondent of the disputed domain name.
Therefore the Panel finds that the disputed domain name has been used in bad faith.
In view of the above, the Panel concludes that the third and last condition provided for by paragraph 4(a)(iii) 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 <asos-de.com> be transferred to the Complainant.
Date: February 20, 2018