WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ASOS plc v. Liu Tao Tao / Tao Tao Liu

Case No. D2017-0048

1. The Parties

The Complainant is ASOS plc of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom.

The Respondent is Liu Tao Tao / Tao Tao Liu of Qingdao, Shandong, China.

2. The Domain Name and Registrar

The disputed domain name <asosw.top> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2017. On January 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 12, 2017, 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 January 23, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On January 26, 2017, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 both Chinese and English of the Complaint, and the proceedings commenced on February 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2017.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on March 3, 2017. 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 (collectively, the “ASOS Group”), including the subsidiary ASOS.com Ltd, under which the ASOS Group primarily trades. The ASOS Group’s business was founded in the United Kingdom in 1999 and use of the ASOS mark began almost immediately thereafter. Initially the ASOS Group sold “as seen on screen” items, but between 2000 and 2003 the business shifted to selling fashion goods. The ASOS Group is a leading global online fashion and beauty retailer and is the United Kingdom’s largest online fashion retailer. The ASOS Group operates an online fashion marketplace at “www.asos.com” together with five language-specific websites and its mobile platforms. As of September, 2016, the ASOS Group’s website has attracted over 12.7 million active customers from over 230 countries. The ASOS Group also publishes a magazine, offers content through social media channels, including Facebook, Instagram and Twitter. The Complainant has received many industry awards, including the Retail Week Awards 2008 Online Retailer of the Year award (March 2008), Cosmopolitan Fashion Awards Online Retailer of the Year award (March, 2009), the WGSN Outstanding E-Tailer of the Year award (December 2010), the High Street Style Awards (U Magazine), Best Online Store award (September, 2012), the Internet Retailing Awards 2013 International Award and Judge’s Award (July, 2013), the European E-commerce awards Gold Pure Player Award (June, 2014), and the Reveal Online Fashion Awards Online Retailer of the Year award (September 2015).

The Complainant owns many trademark registrations for the ASOS mark, including Australia Reg. Nos. 1366279 (registered June 9, 2010) and 1456491 (registered August 10, 2010), Benelux Reg. No. 0980244 (registered August 14, 2015), Turkey Reg. No. 200551695 (registered November 6, 2007), India Reg. No. 1140693 (registered December 2, 2011), Japan Reg. No. 5542517 (registered December 14, 2012), Germany Reg. No. 302011032122 (registered August 20, 2011), Singapore Reg. Nos. T1008886Z (registered July 10, 2010) and T1006591F (registered May 25, 2010), Sweden Reg. No. 412419 (registered September 2, 2010), Russian Federation Reg. No. 450468 (registered May 21, 2010), and United Kingdom Reg. No. UK00002530115 (registered October 28, 2009). Notably, the Complainant owns nearly 50 trademark registrations for its ASOS marks (including the ASOS word mark, ASOS-formative marks, and ASOS in Chinese characters) in China, including Reg. Nos. 10933780 (registered November 14, 2013), 8762210 (registered January 14, 2012), and 8762977 (registered November 21, 2011) for the mark ASOS and Nos. 12165915, 12165916, and 12165917 (registered July 28, 2014) for the mark ASOS in Chinese characters.

The Respondent registered the disputed domain name on April 23, 2016. A reverse WhoIs search reveals that the Respondent’s name and/or email address is associated with dozens of other domain names that contain English characters and words and using generic Top-Level Domains (“gTLDs”) that consist of English words, including “.top”, “.win”, “.bid”, “.club”, “site,” and “.studio”. The disputed domain name does not currently resolve to a website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the ASOS mark and that that the Complainant owns very extensive rights in the ASOS mark. The Complainant has built substantial goodwill and reputation in the ASOS mark in connection with online fashion retailing. When consumers see the ASOS mark in the context on online activity, such as in domain names or on websites, they believe that those activities relate to the Complainant’s goods and services or indicate a business economically linked to the Complainant. The ASOS mark is a coined term that has no independent linguistic meaning except as a reference to the ASOS Group and its business.

The disputed domain name is confusingly similar to the ASOS mark. The gTLD “.top” can be disregarded in the determination of confusingly similarity because it is an integral and technical part of the disputed domain name. The Panel should confine its assessment to the similarity between “asos” and “asosw”. “asosw” comprises the Complainant’s ASOS mark in full and the addition of “w”, which is diminutive and appears at the end of the disputed domain before the gTLD. The beginning of a mark has more relevance in assessing similarity because consumers pay more attention to the first part of a mark. Therefore, the ASOS mark is not only recognizable in the disputed domain name but it also forms the dominant and distinctive part of it.

Additionally, the term “top” can refer to either the highest place or part or to an article of clothing that is worn above the waist. In that respect, a consumer could view the inclusion of the “.top” gTLD in the disputed domain name as indicating that the Complainant’s brand is associated with a “top” tier offering or as referring to articles of clothing, which serves to reinforce the potential for confusion.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Given the reputation of the ASOS brand and the ASOS Group’s operations, there is no believable or realistic reason for registration or use of the disputed domain name other than to take advantage of the Complainant’s rights. The disputed domain name was created in April, 2016, and by this time the Complainant already had extensive rights in the ASOS mark. The Respondent cannot possibly claim to have been unaware of the ASOS Group and the ASOS mark. Therefore, the Respondent cannot be said to have any right or interest in registering the disputed domain name in view of the Complainant being the proper rights holder. The Complainant has not given the Respondent permission to use the Complainant’s mark in any manner, including in a domain name. The Respondent has not been known by the disputed domain name. The disputed domain name resolves to a website containing sexually explicit and pornographic material, which is not a bona fide, legitimate noncommercial or fair use of the ASOS mark. It is clear that the Respondent’s use of the Complainant’s ASOS mark for these purposes is intended for commercial gain, to misleadingly divert Internet users to the Respondent’s own website. Further, the association of the ASOS brand with such content would undoubtedly tarnish the Complainant’s mark.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent would have been aware of the Complainant’s rights in the ASOS mark. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s well-known mark. The high potential for initial interest confusion is sufficient to establish the Respondent’s bad faith. Additionally, use of the disputed domain name to direct unsuspecting Internet users to adult content is in itself evidence of bad faith registration and use. The Complainant is clearly not in the adult industry; as such, the intentional featuring of adult content on the Respondent’s website has a real risk of tarnishing the ASOS mark. The Respondent’s intentional tarnishment of the Complainant’s mark constitutes evidence of bad faith registration and use. Finally, the fact that the Respondent lacks any rights or legitimate interests in the ASOS mark also indicates that the disputed domain was registered in bad faith.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The Complainant has provided an English version of the Registration Agreement, but the Registrar has stated that the language of the Registration Agreement as used by the Respondent is Chinese. Nonetheless, the Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment or request that the language of the proceeding be Chinese. Additionally, the Respondent’s conduct suggests that the Respondent understands English. The Respondent owns several domain names that include English terms and/or gTLDs that consist of English terms. Finally, substantial additional expense and delay likely would be incurred if the Complaint must be translated into Chinese. The Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English, in light of these circumstances.

6.2 Substantive Discussion

The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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

The disputed domain name is confusingly similar to a mark in which the Complainant has rights. The Complainant is the owner of the ASOS trademark for use with online fashion retail services and owns many trademark registrations for the mark around the world. The Panel accepts that the Complainant’s mark is well-known.

The disputed domain name comprises the term “asosw” and the gTLD “.top”. As a technical part of a domain name, the TLD is not relevant in determining whether the disputed domain name is identical or confusingly similar to the Complainant’s ASOS trademark and is without legal significance and therefore is typically ignored. See, e.g., CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. (However, in this case, the gTLD may affirmatively lead to confusion because “top” could be read as referring to clothing items and the Complainant’s mark is used with fashion retail.) The term “asosw” is nearly identical to the Complainant’s mark. It includes the Complainant’s mark ASOS in its entirety and adds only one additional letter. Moreover, a consumer encountering a mark is likely to give greater attention to the first part of the mark, and, in this case, the first part of the disputed domain name is identical to the ASOS mark, further evidencing confusing similarity. See Philip Morris USA Inc. v. Daniel Iannotte, WIPO Case No. D2015-0381.

Therefore, the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, the Respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:

(i) The Respondent’s use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute; or

(ii) The Respondent has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant contends, and the Respondent does not deny, that the Complainant never authorized the Respondent to use the ASOS mark or to register a domain name including the ASOS mark.

There is no evidence in the record to suggest that the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services. Currently, the disputed domain name is not used in connection with a website that makes any active offer of goods or services or that makes any noncommercial or fair use of the disputed domain name.

The Complainant has stated, and the Respondent has not denied, that the disputed domain name previously resolved to a website containing sexually explicit and pornographic content, and using a domain name that is confusingly similar to the Complainant’s trademarks to attract users to such site is not a bona fide offering of services.

Therefore, the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of a domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or has 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 the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) The 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 the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 such web site or location or of a product or service on such web site or location.

The Respondent must have been aware of the ASOS Group and the ASOS mark at the time of registration of the disputed domain name. The ASOS Group is well known throughout the world as is the ASOS mark. The ASOS Group has used the ASOS mark in commerce for more than a decade prior to the registration of the disputed domain name. Additionally, the Complainant owns many trademark registrations around the globe, including almost 50 registrations in China, where the Respondent is located. Although the Respondent may not be under an obligation to conduct an exhaustive trademark search before acquiring a domain name, a simple Internet search for ASOS would have yielded many obvious references to the ASOS Group and its ASOS-branded services. In the circumstances, bad faith registration can be inferred from the Respondent’s registration of a domain name incorporating a well-known mark of which the Respondent must have been aware without any evident right to do so. See Hurruyet Gazetecilik ve Maatbaacilik Anonim Sirketi v. Onuno L.L.C., WIPO Case No. D2015-1504; AXA S.A. v. P.A. van der Wees, WIPO Case No. D2009-0206; BHP Billiton Innovation v. Ravindra Bala, WIPO Case No. D2008-1059.

The Complainant contends, and the Respondent does not deny, that the disputed domain name previously resolved to a website that featured sexually explicit and pornographic material. Moreover, the Respondent’s present passive holding of the disputed domain name constitutes bad faith in this instance. Inaction by the respondent can constitute bad faith use when the respondent has registered the domain name in bad faith and the totality of the circumstances indicates that the respondent’s passive holding amounts to bad faith use. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Complainant owns multiple trademark registrations for its ASOS marks world wide; therefore, the Respondent was probably aware of the Complainant’s rights in the ASOS mark. Indeed, the Respondent likely was on actual notice of the Complainant’s rights in the ASOS mark because the Complainant’s mark is well-known throughout the world. The Respondent has provided no evidence of any actual or contemplated good faith use of the disputed domain name. The Complainant’s mark is an arbitrary term that has no independent meaning except as reference to the ASOS Group and its business and nothing in the disputed domain name or the in the Respondent’s actions suggests that the Respondent intended to use the Complainant’s mark descriptively or nominatively or otherwise to engage in fair use. It is “not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.” Telstra, supra. These factors indicate bad faith use of the disputed domain name under the circumstances. See Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483

Accordingly, the Panel finds that the Respondent’s registration and use of the disputed domain name is in bad faith.

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, <asosw.top>, be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: March 17, 2017