WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ASOS plc (ASOS) v. Linyi Wong
Case No. D2018-2845
1. The Parties
The Complainant is ASOS plc (ASOS) of London, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Linyi Wong of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <asos-fashions.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 December 12, 2018. On December 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 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 December 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2019.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on January 16, 2019. 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 online fashion retail companies, which includes the subsidiary ASOS.com Ltd under which the ASOS brand primarily trades. The ASOS group (collectively “ASOS”), operates a unique online retail (including fashion) destination at “www.asos.com” together with eight country specific websites and its mobile platforms. As part of its aspirations as a retailer and content provider, ASOS also offers a magazine (print and online), social media channels, including Instagram, Facebook and Twitter.
The Complainant holds numerous trademarks consisting of ASOS on a worldwide basis, either as a word trademark or as a stylized logo, including in China where the Respondent is located, notably registered in class 25 through a Chinese trademark number 10933780 registered on November 14, 2013 as well as a trademark number 301847980 registered on March 3, 2011 in Hong Kong, China.
The Complainant also owns more than 300 domain names incorporating the trademark ASOS, including <asos.com> through which it primarily carries out its online activities as well as <asosfashion.com>.
As of August, 2018, ASOS’ total retail sales amounted to GBP 2,417.3 million. The United Kingdom is ASOS’ domestic market and accounts for its largest portion of sales, with total retail sales of GBP 861.3 million as of August, 2018. During 2018, the website “www.asos.com” received 1,992.8 million visits. ASOS’ Instagram account has 7.7 million followers, 5.8 million likes on Facebook, 1.04 million followers on Twitter and 675,000 followers on Pinterest.
The Respondent registered the disputed domain name <asos-fashions.com> on July 13, 2018. The website attached to the disputed domain name displays a website that features significant amounts of the Complainant’s own content, including its ASOS trademark and stylized logo.
5. Parties’ Contentions
The Complainant first argues that the disputed domain name <asos-fashions.com> is confusingly similar to its ASOS trademark, since it entirely incorporates the trademark with the addition of a descriptive term that refers to the Complainant’s activities, namely “fashion”.
The Complainant then affirms that the Respondent does not own any rights nor legitimate interests in the disputed domain name. The Complainant argues that the Respondent is not commonly known under disputed domain name, has not been authorized by the Complainant to use the ASOS trademark and does not offer any actual bone fide offering of goods and services. Rather, the Complainant argues that the disputed domain name resolves to a web e-store that features content directly taken out of its official website, including the ASOS stylized logo and images of products displayed in the exact same way as on the Complainant’s website, so as to misleadingly divert users to its website.
The Complainant finally considers that the disputed domain name was registered and is being used in bad faith. The Complainant argues that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the Complainant, that it has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark and, finally, that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant holds several trademarks in jurisdictions throughout the world consisting of ASOS.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the disputed domain name is identical or confusingly similar to a registered trademark for purposes of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629). Such happens to be the case here.
Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (see section1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”)). Such happens to be the case.
This is all the more true when the inserted trademark consists of the dominant part of the disputed domain name, and the added elements are merely descriptive.
The applicable generic Top-Level Domain (“gTLD”) suffix, in the present case “.com”, is usually disregarded under the confusing similarity test and the addition of merely descriptive term such as the term “fashions” does not avoid confusing similarity (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd, WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363).
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent WIPO UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of WIPO Overview 3.0).
In the present case, the Complainant is the owner of numerous ASOS trademarks that enjoy a strong reputation in its sector industry, including in China where the Respondent is located. The Complainant has no business or other relationship with the Respondent. The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
Absent any Response, the Respondent did not rebut this prima facie showing.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the respondent to be aware of the complainant’s trademarks. In the present case, there is no doubt that the Respondent was well aware of the Complainant’s ASOS trademarks when it registered the disputed domain name <asos-fashions.com> as the addition of the word “fashions” is descriptive of the industry in which the Complainant carries out its activities and cannot be a mere coincidence.
Furthermore, considering the content of the website attached to the disputed domain name that reproduces the Complainant’s trademarks with a graphical layout of the website similar to the Complainant’s official one, the Respondent was obviously aware of the Complainant’s trademarks at the time of registration of the disputed domain name. As a result, the Panel holds that the disputed domain name was registered in bad faith.
Based upon the overall circumstances of the case and the content of the website attached to the disputed domain name as referred to above, the Panel has no doubt that the domain name <asos-fashions.com> was registered by the Respondent to exploit the Complainant’s goodwill and attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as described under paragraph 4(b)(iv) of the Policy.
Consequently, the Panel is of the opinion that the disputed domain name <asos-fashions.com> has been registered and is being used in bad faith under the paragraph 4(a)(iii) of the Policy.
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-fashions.com> be transferred to the Complainant.
Date: January 22, 2019