WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ASOS Plc, ASOS Holdings Limited, ASOS.com Limited v. 谢阿军 (xie a jun)

Case No. D2021-2613

1. The Parties

The Complainants are ASOS Plc, ASOS Holdings Limited, and ASOS.com Limited, United Kingdom, represented by Stobbs IP Limited, United Kingdom.

The Respondent is 谢阿军 (xie a jun), China.

2. The Domain Name and Registrar

The disputed domain name <missselfridge.online> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2021. On August 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 2021, 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.

On August 18, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainants confirmed the request that English be the language of the proceeding on August 19, 2021. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on September 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2021.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on October 13, 2021. 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 Complainants are connected companies within the ASOS group of companies. Particularly, ASOS Plc (the “First Complainant”) is the parent company to ASOS Holdings Limited (the “Second Complainant”) and ASOS.com Limited (the “Third Complainant”). The Second Complainant is the owner of a series of registered trademarks for MISS SELFRIDGE, including the trademarks set out below. The Third Complainant is the owner of the MISS SELFRIDGE domain names, including the domain name set out below. The Complainants are all part of a group of companies commercializing fashion retail products internationally, particularly providing customers with selected products from a number of in-house and third-party brands. The First Complainant acquired the MISS SELFRIDGE brand (along with other brands such as Topshop, Topman and HIIT) on February 1, 2021 for GBP 265 million, as reported by several media publications provided by the Complainants. The Complainants also provide evidence that for the financial year ending on December 31, 2020, the First Complainant’s profits from its business activities (including those related to the MISS SELFRIDGE brand) before tax reached GBP 142.1 million. The main consumer markets for MISS SELFRIDGE-branded clothing is the United Kingdom, the United States of America, and the European Union. The Complainants finally also provide evidence that the MISS SELFRIDGE brand won a number of fashion awards and accolades, and that the Complainants’ MISS SELFRIDGE social media accounts have a high number of online followers.

The Complainants provide evidence that the Second Complainant owns a large trademark portfolio for MISS SELFRIDGE (word and logo marks), including, but not limited to, European Union trademark registration number 1598960, registered on January 22, 2002 for the MISS SELFRIDGE word mark, and United Kingdom trademark registration number 1208915, registered on December 12, 1983 for the MISS SELFRIDGE logo mark. The Third Complainant also owns a large portfolio of official MISS SELFRIDGE domain names, including <missselfridge.com>, registered on May 24, 2002.

The disputed domain name was registered on March 21, 2020, and is therefore of a later date than the abovementioned trademarks of the Complainants. The Complainants submit evidence that the disputed domain name directed to an e-commerce website, prominently displaying the MISS SELFRIDGE word and logo marks and offering for sale MISS SELFRIDGE-branded clothing (including the following prominent message displayed at the top of such website: “Miss Selfridge On Sale Up To 70% Off. Accept PayPal (Credit Card). Free Worldwide Delivery. Free Returns – 30 Day Tght To Return”). However, the Panel notes that on the date of this decision, the disputed domain name directs to an inactive webpage.

5. Parties’ Contentions

A. Complainants

The Complainants essentially contend that the disputed domain name is confusingly similar to their trademarks for MISS SELFRIDGE, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainants claim that their trademarks are distinctive and well known, and submit company information, articles regarding their awards, and marketing materials. The Complainants particularly contend that the Respondent used the disputed domain name, including the MISS SELFRIDGE trademark and product images on the website linked to the disputed domain name (before it was taken down), for the purpose of imitating the Complainants’ previous website design when that website was hosted at their official domain name <missselfridge.com>. The Complainants state that there are no justifications for such use of their trademarks in the disputed domain name, and contend that such use does not confer any rights or legitimate interests in respect of the disputed domain name. The Complainants also contend that the Respondent attempted to attract Internet users for commercial gain to its website, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of such website, constituting bad faith under Policy, Paragraph 4(a)(iii).

The Complainants request that the disputed domain name be transferred to the Complainants.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 First Preliminary Issue: Consolidation of Complainants

The Complainants in this administrative proceeding request consolidation in regard to the Complainants. In this regard, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) states in section 4.11.1: “In assessing whether a complaint filed by multiple Complainants may be brought against a single respondent, panels look at whether (i) the Complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the Complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.”

The Panel has carefully reviewed all elements of this case, giving particular weight to the following elements: the Second Complainant is the owner of a series of registered trademarks for MISS SELFRIDGE, the Third Complainant is the owner of a series of MISS SELFRIDGE domain names and the First Complainant is the parent company to both the Second Complainant and the Third Complainant. As such, the Panel concludes that all Complainants are the target of common conduct by the Respondent and all have common grievances regarding the use of the MISS SELFRIDGE trademarks in the disputed domain name by the Respondent. The Panel accepts that permitting the consolidation would be fair and equitable to all Parties involved and would safeguard procedural efficiency. The Panel therefore grants the request for consolidation of the Complainants.

6.2. Second Preliminary Issue: Language of the administrative proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainants state that to the best of their knowledge, the Registration Agreement is in Chinese. This was confirmed by the Registrar in its verification response on August 12, 2021. Nevertheless, the Complainants filed their Complaint in English, and request that English be the language of this administrative proceeding. The Respondent did not comment on the language of the proceeding and did not submit arguments on the merits of this proceeding.

The Panel has carefully considered all elements of this case, and considers the following elements particularly relevant: the Complainants’ request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response on the merits of this proceeding by the Respondent (the Panel notes that the Respondent was invited in a timely manner by the Center to present its response and arguments in either English or Chinese, but chose not to do so); the fact that the disputed domain name contains the Complainants’ trademark in its entirety and that the disputed domain name is written in Latin letters and not in Chinese characters; the fact that the website linked to the disputed domain name was exclusively in English (before it was taken down), from which the Panel deducts that the Respondent is capable of understanding and communicating in English; and, finally, the fact that Chinese as the language of this proceeding could lead to unwarranted delays and costs for the Complainants. In view of all these elements, the Panel grants the Complainants’ request, and the language of this administrative proceeding shall be English.

6.3. Discussion and Findings on the merits

The Policy requires the Complainants to prove three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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.

Based on the evidence and arguments submitted, the Panel's findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainants have shown that they have valid rights in the mark MISS SELFRIDGE, based on their intensive use and longstanding registration of the same as trademarks.

As to confusing similarity of the disputed domain name with the Complainants’ marks, the Panel considers that the disputed domain name consists of only a single element, namely the Complainants’ MISS SELFRIDGE trademark. According to the WIPO Overview 3.0, section 1.7, “where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. The Panel concludes that the disputed domain name contains the entirety of the Complainants’ trademarks for MISS SELFRIDGE, which remains easily recognizable as its only element. The Panel also notes that the applicable generic Top-Level Domain (“gTLD”) (“.online” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview 3.0, section 1.11.1.

Accordingly, the Panel finds that the disputed domain name is identical to the Complainants’ registered trademark for MISS SELFRIDGE, and that the Complainants have satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel finds that the Complainants make out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainants, is not a bona fide provider of goods or services under the disputed domain name and is not making legitimate noncommercial use or fair use of the Complainants’ trademarks. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.

Upon review of the facts and evidence provided by the Complainants, the Panel notes that the disputed domain name directed to an e-commerce website which was passed off as being a website operated by the Complainants by prominently showing the Complainants’ MISS SELFRIDGE logo mark and word mark, by imitating the Complainants’ previous website design, by using the Complainants’ product images (thereby also likely violating their copyrights in such images) and by offering for sale MISS SELFRIDGE-branded clothing, without any disclaimer as to the Respondent’s (absence of) relationship with the Complainants. The Panel finds that these elements show that the Respondent’s intention was not to be a bona fide provider of goods or services under the disputed domain name, nor making legitimate noncommercial use or fair use of the Complainants’ trademarks. Instead, the Respondent’s intention was to obtain unlawful commercial gains from creating confusion by incorporating the Complainants’ well-known MISS SELFRIDGE trademark into the disputed domain name.

On the date of this decision, the disputed domain name directs to an inactive webpage. In this regard, the Panel finds that holding a domain name passively, without making any use of it, also does not confer any rights or legitimate interests in the disputed domain name on the Respondent (see in this regard earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691 and Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui), WIPO Case No. D2021-1685).

Moreover, the Panel finds that the disputed domain name carries a high risk of implied affiliation (see WIPO Overview 3.0, section 2.5.1).

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainants have satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainants’ well-known trademark, by using such trademark in its entirety as the only element of the disputed domain name, to mislead and divert consumers to the disputed domain name. Given the distinctiveness and fame of the Complainants’ trademark, the Panel finds that the registration of the disputed domain name clearly targeted such well-known trademark, and that the Respondent knew, or at least should have known, of the existence of the Complainants’ trademarks. Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainants owned registered trademarks in MISS SELFRIDGE and used these extensively. In the Panel’s view, the preceding elements establish the bad faith of the Respondent in registering the disputed domain name.

As to use of the disputed domain name in bad faith, the Complainants provides evidence that the disputed domain name directed to an e-commerce website which was passed off as being a website operated by the Complainants by prominently showing the Complainants’ MISS SELFRIDGE logo mark and word mark, by imitating the Complainants’ previous website design, by using the Complainants’ product images (thereby also likely violating their copyrights in such images) and by offering for sale MISS SELFRIDGE-branded clothing, without any disclaimer as to the Respondent’s (absence of) relationship with the Complainants. The Panel accepts that this shows the bad faith intention on the part of the Respondent to obtain unlawful commercial gains from using the Complainants’ famous MISS SELFRIDGE trademark in the disputed domain name.

On the date of this decision, the disputed domain name links to an inactive website. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”. The Panel has reviewed all elements of this case, and attributes particular relevance to the following elements: the fact that the disputed domain name is identical to the Complainants’ trademark, the high degree of distinctiveness and fame of the Complainants’ trademarks, the fact that the Respondent used incorrect contact details, and the unlikelihood of any good faith use to which the disputed domain name might be put by the Respondent. In these circumstances, the Panel considers that the passive holding of the disputed domain name by the Respondent constitutes use of the disputed domain name in bad faith. On the basis of the foregoing elements, the Panel finds that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.

Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore finds that the Complainants have satisfied the requirements of the third element under the Policy.

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 <missselfridge.online> be transferred to the Complainants.

Deanna Wong Wai Man
Sole Panelist
Date: October 25, 2021