WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ASOS plc v. WhoisGuard Protected / Uladzislau Vasilkevich, Atlant Advisors
Case No. D2018-0390
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 WhoisGuard Protected of Panama, Panama / Uladzislau Vasilkevich, Atlant Advisors of Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <asosuk-24.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2018. On February 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name.
The original Complaint in this proceeding concerned three domain names, the Disputed Domain Name and <asosofficialuk.com> and <asos-24uk.com> but, following receipt of the registrar verification (see below), it came to the Center’s attention that the domain names <asosofficialuk.com> and <asos-24uk.com> were no longer owned by the registrants and therefore resided in the Registrar’s internal account. The Complainant chose to withdraw the domain names <asosofficialuk.com> and <asos-24uk.com> from the current proceeding.
On February 22, 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 March 7, 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 March 12, 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 March 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 5, 2018.
The Center appointed Michael D. Cover as the sole panelist in this matter on April 16, 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 the ASOS group of inline fashion companies. This group includes the subsidiary company, ASOS.com Ltd, which company conducts the bulk of the business conducted under the trademark ASOS. The Complainant owns, amongst others, the International Trademark Registration no. 1265485 ASOS, registered on June 19, 2015.
The Respondent’s details were originally hidden behind a privacy protection service provided by Namecheap Inc. Further to the Center’s request for registrar verification, the Registrar disclosed that the registrant of the Deispute Domain Name is listed as Uladzislau Vasilkevich of the organization Atlant Advisors of Scotland.
The Disputed Domain Name was registered on November 2, 2017 and does not resolve to any active website.
5. Parties’ Contentions
Identical or Confusingly Similar to a Trademark in which the Complainant has rights
The Complainant states that its group operates a unique online fashion destination website at “www.asos.com” and that this group operates as part of its offering as a retailer and content provider a print and online magazine and social media channels, details of which it sets out in the Annexes to the Complaint.
The Complainant sets out, also in the Annexes to the Complaint, what it calls its very extensive rights to the trademark ASOS. These consist of registered trademarks and applications for registered trademarks throughout the world, including International Trademark Registrations. These trademark registrations and applications for registered trademarks are in fact in the name of the Complainant or ASOS.com Ltd.
The latter company owns many domain names prefaced with the name ASOS, including <asos.com> and <asos.co.uk>. These are set out at Annex 11 to the Complaint.
In addition, the Complainant states that it has built up significant reputation and goodwill in the business conducted under the trademark ASOS in the UK and overseas.
The Complainant sets out that what is now the ASOS business was set up in 1999 and was originally known as “As Seen On Screen” and that, over the period 2000-2003, the brand of the business shifted to ASOS. The Complainant notes that this process was completed with the change of name of the Complainant to ASOS plc and the change of name of AsSeenOnScreen Ltd to ASOS.com Ltd.
The Complainant sets out that, fast forwarding to 2017, that ASOS is a leading online fashion and beauty retailer and the UK’s largest online-only fashion retailer. ASOS’ annual turnover was as at August 2017 over GBP 1,900 million, with UK total retail sales of nearly GBP 700 million, states the Complainant.
The Complainant also states that it employs a variety of different marketing channels to promote the business carried out under the ASOS trademark, which it notes is a very distinctive trademark, with no independent meaning, even if it was originally an abbreviation of the company name.
The Complainant notes that the Disputed Domain Name contains the trademark ASOS in its entirety and that the Disputed Domain Name is confusingly similar to its ASOS trademark. The Complainant then submits that the generic Top-Level Domain (“gTLD”) suffix, “.com”, should be disregarded in assessing confusing similarity with the trademark of the Complainant. This leads the Complainant to state, that in relation to the Disputed Domain Name, the assessment is between “asosuk-24” and the Complainant’s trademark ASOS.
The Complainant submits that the letters “uk” should be understood to be the country code for the United Kingdom and, in that sense, would be understood by Internet users to refer to ASOS services in the United Kingdom. Similarly, the Complainant says that the number “24” should either be disregarded as having no real relevance or could potentially relate to the launch by the Complainant of its 24 hour service.
The Complainant concludes that the addition of “uk” and “24” does not disassociate the Disputed Domain Name from the Complainant’s trademark ASOS and that the Disputed Domain Name is identical and/or confusingly similar to the Complainant’s ASOS trademark.
Rights or Legitimate Interests
The Complainant states that there is no believable or realistic reason for the adoption of the Dispute Domain Name, taking into account the massive reputation attached to the Complainant’s trademark ASOS, other than to take advantage of that reputation. The Complainant also submits that the term “asos” is highly distinctive and that this reinforces this conclusion.
The Complainant notes that the Respondent is not using the Disputed Domain Name and it is inactive and does not resolve to any active or relevant content. The Complainant also notes that the Respondent (either as a business or an individual) has never been known by the Disputed Domain Name.
The Complainant sums up by saying that the Respondent is also not making 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.
Registered and Used in Bad Faith
The Complainant submits that the registration of the Disputed Domain Name is a classic example of bad faith registration and use and that the facts demonstrate this. The Complainant reiterates the points that it has made in relation to No Rights or Legitimate Interests set out above.
The Complainant goes on to submit that that there are circumstances indicating that the Respondent registered or acquired the Disputed Domain Name for the purpose of selling it or renting or otherwise transferring it to the Complainant for valuable consideration in excess of its out of pocket expenses related to the Disputed Domain Name. The Complainant goes on to say that a simple trademark search would have revealed the existence of the Complainant’s ASOS trademark and that previous Panels have held that, in the absence of a license from the owner of a well-known trademark as here, no actual or contemplated bona fide use of the Disputed Domain Name could be claimed.
The Complainant also notes that the Disputed Domain Name has been registered under a privacy service, indicating that the Respondent intended to conceal its identity from the moment that the Disputed Domain Name was registered. The Complainant adds that Annex 14 to the Amended Complaint shows that the newly-identified registrant has had previous UDRP filings against them, showing a pattern of bad faith registrations of domain names.
The Complainant also submits that the Respondent has registered the Disputed Domain Name for disrupting the business of a competitor, as the Disputed Domain Name is not and never has been in use and is currently inactive.
The Complainant concludes that the Disputed Domain Name was registered and has been used in bad faith.
The Remedy requested by the Complainant
The Complainant requests that the Panel decide that the Disputed Domain Name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Essentials to be Established
The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has established registered and common law rights in its ASOS trademark. The trademark has been in use for a considerable number of years and the Complainant has accordingly established common law rights in its ASOS trademark. It has also been a registered trademark since at least 2009 in the United Kingdom and from 2010 elsewhere.
The revenue figure submitted by the Complainant for 2017 shows a substantial business conducted under the ASOS trademark. That business has in fact been conducted by a group company of the Complainant, ASOS.com Limited but the Panel is satisfied that the rights generated ultimately would have accrued to the Complainant.
The Panel also accepts the Complainant’s submission that the Disputed Domain Name is confusingly similar to the Complainant’s trademark ASOS. It is well established that the addition of generic or descriptive material or the addition of gTLD, such as “.com” is not sufficient to avoid confusing similarity. With regard to the other non-distinctive elements, “uk” and “24”, the Panel finds that the addition of these elements is not sufficient to avoid a finding of confusing similarity. The initial and dominant element of the Disputed Domain Name is the Complainant’s distinctive trademark ASOS, which the Panel accepts is an arbitrary term, with no particular meaning.
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark ASOS, in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel accepts that the Respondent has no rights or legitimate interests in the Dispute Domain Name.
The Panel notes there is no evidence that the Complainant has permitted or licensed the Respondent to use the ASOS trademark and that the Respondent is not affiliated to the Complainant.
It is a reasonable inference that the Respondent was aware of the Complainant’s ASOS trademark when it registered the Disputed Domain Name in 2017. There has been no noncommercial or fair use of the Disputed Domain Name and no bona fide offering of goods and services; quite to the contrary, there has been passive holding of the Disputed Domain Name. The Respondent has not been commonly known by the Disputed Domain Name, so that route is not available to the Respondent.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy has been met.
C. Registered and Used in Bad Faith
The Panel accepts the submissions of the Complainant under this head and finds that the Disputed Domain Name has been registered and is being used in bad faith. It is inconceivable that the Respondent could have had any legitimate reason to adopt and register the Disputed Domain Name, which contains, as it does, the entirety of the well-known trademark of the Complainant, ASOS.
The passive holding of the Disputed Domain Name constitutes bad faith use under these circumstances and the Panel also finds that, on the balance of probabilities, the Respondent was only too well aware of what it was doing.
The Panel accordingly finds that the Disputed Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy has been 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 <asosuk-24.com> be transferred to the Complainant.
Michael D. Cover
Date: April 17, 2018