WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ASOS plc, ASOS Holdings Limited, and ASOS.com Limited v. 解玉宏 (XIE YU HONG), 陈晓梅 (chen xiao mei)

Case No. D2021-3297

1. The Parties

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

Respondent is 解玉宏 (XIE YU HONG), 陈晓梅 (chen xiao mei), China.

2. The Domain Name and Registrar

The disputed domain name <missselfridgestore.com> (the “Domain Name”) is registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2021. On October 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 15, 2021 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 in English on October 15, 2021.

On October 15, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On October 15, 2021, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on October 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 25, 2021.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on December 15, 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

Complainants are ASOS plc (the “First Complainant”), ASOS Holdings Limited (the “Second Complainant”), and ASOS.com Limited (the “Third Complainant”), all from United Kingdom. The First Complainant, an international online fashion retailer providing customers with curated products from in-house and third-party brands, is the parent company to the Second and Third Complainants. The Second Complainant is the owner of the MISS SELFRIDGE registered trademark rights and the Third Complainant is the owner of the MISS SELFRIDGE domain names. The First, Second and Third Complainants are collectively referred to as the “Complainants”. The United Kingdom is Complainants’ domestic market and accounts for a significant portion of sales, with other key markets being the European Union and United States of America, with products sold to over 200 countries.

The First Complainant, incorporated in the United Kingdom on June 2, 2000, acquired the Miss Selfridge brand from the Arcadia Group on February 1, 2021. The Second Complainant owns rights in the trademark MISS SELFRIDGE including:

- United Kingdom trademark registration number 00000945589 for MISS SELFRIDGE word and design mark, registered on July 15, 1969;
- United Kingdom trademark registration number 00001208915 for MISS SELFRIDGE word and design mark, registered on December 12, 1983;
- European Union trademark registration number 001598960 for MISS SELFRIDGE word mark, registered on January 22, 2002;
- International trademark registration number 1133516 for MISS SELFRIDGE word mark, registered on April 16, 2012.

Miss Selfridge started as the young fashion section of SELFRIDGE department store in London in 1966, and had concessions throughout the United Kingdom within department stores, with independent branches in the United Kingdom. The domain name <missselfridge.com> was registered by the Third Complainant on February 24, 2021, and was owned by Complainants’ predecessor in title since at least as early as February 23, 2012. The Third Complainant also owns several other domain names with the mark MISS SELFRIDGE.

The Domain Name was registered on August 24, 2021. At the time of the filing of the Complaint, the Domain Name resolved to a website that features MISS SELFRIDGE trademark and product images that are similar to the products on Complainants’ website. At the time of the Decision, the Domain Name resolved to an error page.

5. Parties’ Contentions

A. Complainants

Complainants contend that (i) the Domain Name is identical or confusingly similar to Complainants’ trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.

In particular, Complainants contend that they have trademark registrations for the MISS SELFRIDGE marks and own and operate a domain name incorporating the MISS SELFRIDGE marks. Complainants contend that Respondent registered and is using the Domain Name to confuse Internet users looking for bona fide and well-known MISS SELFRIDGE products and services.

Complainants note that they have no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainants’ marks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainants contend that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainants’ rights.

B. Respondent

Respondent did not reply to Complainants’ contentions.

6. Discussion and Findings

6.1. Preliminary Procedural Issue – Language of the Proceeding

The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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.

Complainants submitted their original Complaint in English. In their Complaint and their email communication to the Center on October 15, 2021, Complainants request that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.

Complainants contend that the Domain Name was registered in English characters and that the content on the webpage to which the Domain Name directed to, was in English; that the currency accepted on the webpage under the Domain Name was the British Pound; that Respondent was targeting an English brand, and it would cause delay and be unfairly burdensome for Complainants to translate and conduct the proceeding in Chinese.

In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.

The Panel accepts Complainants’ submissions regarding the language of the proceeding. The Panel notes that the Center notified the Parties in both Chinese and English of the language of the proceeding as well as notified Respondent in both Chinese and English of the Complaint. Respondent chose not to comment on the language of the proceeding nor did Respondent choose to file a Response. Further, the Panel notes that the Domain Name was registered using English characters.

The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost‑effective manner. Complainants may be unduly disadvantaged by having to translate the Complaint into Chinese and to conduct the proceeding in Chinese.

Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.

6.2. Substantive Issues

Under paragraph 4(a) of the Policy, to succeed, Complainants must satisfy the Panel that:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name was registered and is being used in bad faith.

Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:

“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?

Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”

Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainants to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainants provided evidence of their rights in the MISS SELFRIDGE mark, as noted above. Complainants have also submitted evidence, which supports that the MISS SELFRIDGE mark is a widely known trademark and a distinctive identifier of Complainants’ products and services. Complainants have therefore proven that they have the requisite rights in the MISS SELFRIDGE mark.

With Complainants’ rights in the MISS SELFRIDGE mark established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainants’ mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.

Here, the Domain Name is confusingly similar to Complainants’ MISS SELFRIDGE mark. This mark is entirely duplicated and recognizable in the Domain Name. The incorporation of the MISS SELFRIDGE mark with the addition of the term “store”, in the Domain Name <missselfridgestore.com>, does not prevent a finding of confusing similarity between Complainants’ trademark and the Domain Name.

Thus, the Panel finds that Complainants have satisfied the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

From the record in this case, it is evident that Respondent was, and is, aware of Complainants and the MISS SELFRIDGE mark, and does not have any rights or legitimate interests in the Domain Name. Complainants have confirmed that Respondent is not affiliated with Complainants, or otherwise authorized or licensed to use the MISS SELFRIDGE trademark or to seek registration of any domain name incorporating the trademark. Respondent is also not known to be associated with or commonly known by the MISS SELFRIDGE mark.

In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. At the time of filing the Complaint, Respondent was offering for sale similar goods on a website that attempts to pass itself off as Complainants, such as prominently displaying Complainants’ MISS SELFRIDGE mark on Respondent’s website, using a layout/design that is similar to Complainants’ official website, including photographs that similar to the products displayed on Complainants’ website, all without any authorization or approval by Complainants. At the time of the Decision, the Domain Name resolved to an error page. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.

Accordingly, Complainants have provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name.

Moreover, the nature of the Domain Name carries a risk of implied affiliation with Complainants. See WIPO Overview 3.0, section 2.5.1.

Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainants have met their burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:

“(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 trademark 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 trademark 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 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 your website or location or of a product or service on your website or location.”

The Panel finds that Complainants provided ample evidence to show that registration and use of the MISS SELFRIDGE mark predates the registration of the Domain Name, more specifically, the MISS SELFRIDGE mark, has been registered since at least as early as 1969, well before the registration of the Domain Name on August 24, 2021. Complainants are also well established and known. Indeed, the record shows that Complainants’ MISS SELFRIDGE mark and related services are widely known and recognized, including in China, where Respondent operates. Therefore, Respondent knew or should have known of Complainants and their MISS SELFRIDGE mark at the time of registration of the Domain Name. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.

The Panel therefore finds that Respondent’s awareness of Complainants’ trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org. and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007. See also, Golden Goose S.P.A. v. Whoisguard Inc. / Wei Zhang, WIPO Case No. D2017-2444.

Further, Complainants have provided evidence indicating that at the time of the filing of the Complaint, Respondent is using the Domain Name to divert consumers to a website that offers for sale goods similar to those of Complainants and attempts to pass itself off as Complainants, such as prominently displaying Complainants’ MISS SELFRIDGE mark, using a layout/design that is similar to Complainants’ official website, including photographs that are similar to those displayed on Complainants’ website, all without any authorization or approval by Complainants. At the time of the Decision, the Domain Name resolved to an error page.

Therefore, Respondent, by using the Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainants’ MISS SELFRIDGE mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Such use of the Domain Name may also negatively affect Complainants’ reputation and business activities.

Here, the present circumstances, including the distinctiveness and reputation of the MISS SELFRIDGE marks, the unauthorized and deceptive use of Domain Name to divert consumers looking for Complainants’ goods and services to Respondent’s website, the failure of Respondent to submit a response, support a finding of bad faith.

Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainants succeed under the third element of paragraph 4(a) of 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 Domain Name <missselfridgestore.com> be transferred to Complainants.

Kimberley Chen Nobles
Sole Panelist
Date: December 29, 2021