WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ASOS plc v. Sarah Bullock

Case No. D2018-0507

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 Sarah Bullock of Stockton-On-Tees, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <asosjacketsale.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 6, 2018. On March 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2018, 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 March 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 12, 2018.

The Center appointed Jane Lambert as the sole panelist in this matter on April 25, 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 companies ("the group"). The group operates an online fashion site at "www.asos.com" in 5 languages and mobile platforms. It also publishes an on online and print magazine and operates Instagram, Facebook, Twitter and other social media accounts. It is a leading global online fashion and beauty retailer and the UK's largest online-only fashion retailer. It supplies more than 240 countries and territories and sells over 85,000 branded and own label products, with 5,000 new styles added every week. Its consolidated group turnover is GBP 1,900 million per year.

The Complainant has registered the sign ASOS simpliciter and in combination with other words and devices as trade marks for a wide range of goods and services in many countries around the world including the United Kingdom. One of the trade marks that it has registered is the word ASOS for goods and services (in Classes 3, 8, 9, 11, 14, 18, 21, 26, 35 and 36) in the United Kingdom under registration number UK00002530115 with effect from October 28, 2009.

The Panel entered the Disputed Domain Name into her browser on May 4, 2018 and was taken to a website at "www.asosjacketsale.com". That website appeared to reproduce material from the group's site at "www.asos.com", including the word "ASOS". There were also photographs of merchandise similar to the garments displayed on the Complainant's site.

5. Parties' Contentions

A. Complainant

The Complainant claims the transfer of the Disputed Domain Name on the grounds that:

(1) It is confusingly similar to a trade mark in which the Complainant has rights;

(2) The Respondent has no rights or legitimate interests in the Disputed Domain Name; and

(3) The Respondent has registered and used the Disputed Domain Name in bad faith.

As to the first ground, the Complainant says that the Disputed Domain contains the word ASOS in its entirety and that the only additional elements are descriptive or does not bear any trade mark significance.

On the second, the Complainant points out that the Respondent has never (whether as an individual or as a business) been known by the Disputed Domain Name and she is not using it in connection with a bona fide

offering of goods and services.

In respect of the third ground, the Complainant contends that:

(i) The Respondent has registered the Disputed Domain name primarily for the purpose of disrupting the Complainant's business;

(ii) By using the Disputed Domain, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to their website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of their web site or location or of a product or service on their web site or location; and

(iii) The Respondent has registered the Disputed Domain in order to prevent the Complainant, the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

The agreement by which the Respondent registered the Disputed Domain Name incorporated by reference the following provision of the Policy:

"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present."

A. Identical or Confusingly Similar

The Panel is satisfied that the first element is present.

The Complainant is the registered proprietor of the above-mentioned UK trade mark ASOS which is registered for the previously mentioned goods and services under registration number UK00002530115. That is a trade mark in which the Complainant has rights.

The Disputed Domain Name incorporated the aforementioned trade mark in its entirety and combines it with the words "Jacket" and "Sale". Jackets are goods that are similar to those for which the mark is specified. The word "Sale" suggests that goods will be offered for sale at a discount.

In any case, the addition of the dictionary terms to the Complainant's mark in the Disputed Domain Name does not prevent a finding of confusing similarity under the first element. The Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel finds the second element to be present.

Paragraph 4(c) of the Policy provides:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."

None of those circumstances applies to this case. The Respondent may have been using the Disputed Domain Name in connection with an offering of goods and services, but such use is likely to infringe the Complainant's trade mark and copyrights and cannot therefore be bona fide. Any use by the Respondent of the Disputed Domain Name would be actionable. The Respondent's use of the Disputed Domain Name is obviously for commercial gain and is likely to tarnish the Complainant's trade mark.

C. Registered and Used in Bad Faith

The Panel concludes that the third element is present.

Paragraph 4(b) of the Policy provides:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

The Panel finds that the fourth circumstance to be present.

The Disputed Domain Name is likely to lead members of the public to believe that it is the URL of a site maintained or licensed by or otherwise connected with the Complainant, from which the Complainant's products will be supplied at discounted prices, when it is nothing of the kind. Such use of the disputed domain name is at the very least confusing within the meaning of sub-paragraph 4(b)(iv).

The Disputed Domain Name is used as an URL for a website through which goods are to be marketed to the public from which the Respondent would derive commercial gain.

In the absence of any evidence or explanation to the contrary, paragraph 4(b) requires the Panel to conclude that the Disputed Domain Name has been registered and is used in bad faith.

That is enough to dispose of the dispute but the Panel observes that there the registration of the Disputed Domain Name was likely to disrupt the business of the Complainant and that it would have been reasonable to infer that such was the primary purpose of the Respondent.

7. Decision

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 <asosjacketsale.com> be transferred to the Complainant.

Jane Lambert
Sole Panelist
Date: May 4, 2018