WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ASOS plc v. WhoisGuard Protected, WhoisGuard, Inc. / Jack Trotter
Case No. D2018-1133
1. The Parties
Complainant is ASOS plc of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Stobbs IP Limited, United Kingdom.
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Jack Trotter of Tokushima, Japan.
2. The Domain Names and Registrar
The disputed domain names <asosukpromocode.info>, <asos-2018-promotions.info>, <newasoscode.info> and <theasoscode.info> (the "Domain Names") are registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 21, 2018. On May 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 22, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 30, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 4, 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 Respondent of the Complaint, and the proceedings commenced on June 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 28, 2018.
The Center appointed Robert A. Badgley as the sole panelist in this matter on July 6, 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
Complainant, through its subsidiaries, operates an online fashion retail business. Founded in 1998, the business was originally known as "As Seen On Screen" and, from 2003 forward, operated through a website located at "www.asos.com". According to Complainant, the business in its early days became known as "ASOS", an acronym for "As Seen On Screen".
According to Complainant, it has become "a leading global online fashion and beauty retailer and the UK's largest online-only fashion retailer". In 2017, Complainant's annual global turnover attained GBP 1.9 billion.
Complainant holds many registered trademarks for the mark ASOS in dozens of jurisdictions around the world, the earliest of which being ASOS, United Kingdom trademark number UK00002530115, registered on December 7, 2012.
The Domain Names were registered at various points between January 12, 2018 and March 24, 2018 (<asosukpromocode.info> registered on March 24, 2018, <asos-2018-promotions.info> registered on January 12, 2018, <newasoscode.info> registered on February 21, 2018, and <theasoscode.info> registered on February 20, 2018). The Domain Name <theasoscode.info> resolves to a website purporting to sell ASOS clothing and fashion items and offering various promotions under the name ASOS. It does not appear that the other three Domain Names resolve to active websites.
5. Parties' Contentions
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Names.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant clearly has rights in the trademark ASOS, through registration and use in numerous jurisdictions. The Panel concludes further that each of the Domain Names is confusingly similar to the ASOS mark. The distinctive mark ASOS is incorporated into each Domain Name, and the additional content ("2018-promotions", "new code", "the code", "UK promo code") is descriptive in nature, and does not avoid a finding of confusing similarity. The fact that retailers, and in particular online retailers, often make use of promotional codes makes the additional content in the Domain Names likely to aggravate, not reduce, consumer confusion.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] 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 trademark or service mark at issue.
The Panel concludes that Respondent has no rights or legitimate interests in respect of any of the Domain Names. The Panel first observes that Respondent has not come forward to explain his purported bona fides vis-à-vis these Domain Names.
Further, it is plausibly alleged, and not disputed, that Respondent has no relationship with Complainant and has not been authorized in any manner to use Complainant's distinctive ASOS mark in a domain name or in any other manner. It is further clear from this undisputed record that Respondent is attempting to create a website (which he has done with one of the four Domain Names to date) that mimics Complainant's own commercial website and seeks to pass itself off as a site operated or approved by Complainant.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel finds Respondent to have registered and used each of the Domain Names in bad faith. First, on the record presented here, it is more likely than not that Respondent was aware of Complainant's ASOS mark at the time he registered the Domain Names earlier this year. Complainant's marks are registered throughout the world and Complainant's online retail business under the mark ASOS has reached a considerable size in terms of turnover. Moreover, the fact that Respondent's website (at the Domain Name <theasoscode.info>) features the ASOS mark and features fashion items reinforces the conclusion that Respondent was targeting Complainant and its mark.
With respect to bad faith use, the content provided at the Domain Name <theasoscode.info> clearly constitutes bad faith under Policy paragraph 4(b)(iv), quoted above. Respondent is trying to pass himself off as Complainant for commercial gain.
With respect to the three Domain Names which do not currently resolve to an active website, the Panel finds bad faith on the basis that Respondent has engaged in a bad faith pattern of registration by registering four domain names all targeting Complainant's trademarks. Noting that Respondent sought to conceal its identity through a privacy service to mask WhoIs information that is ostensibly fictitious, the Panel concludes the remaining three Domain Names were registered and are being held in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <asosukpromocode.info>, <asos-2018-promotions.info>, <newasoscode.info>, and <theasoscode.info> be transferred to Complainant.
Robert A. Badgley
Date: July 9, 2018