WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ASOS plc v. Qin Hua Kun

Case No. D2017-1230

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 Qin Hua Kun of Jinghong, Yunnan, China, self-represented.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2017. The next day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 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 July 5, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On July 7, 2017, the Complainant submitted a request that English be the language of the proceeding. On July 11, 2017, the Center received emails from the Respondent requesting that Chinese be 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 July 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2017. The Response was filed in Chinese with the Center on July 21, 2017.

The Center appointed Matthew Kennedy as the sole panelist in this matter on August 9, 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 a group of online fashion retail companies. The business was set up in 1999 and originally traded as “As Seen On Screen” which was later abbreviated to “ASOS”. The group operates an online store at “www.asos.com”, together with language-specific websites and mobile platforms. It sells over 85,000 products and ships to more than 240 countries and territories. The Complainant owns multiple trademark registrations for ASOS, including Chinese trademark registrations numbers 8762209, 8762210, 8762977, 10933780 and 13396699, registered from August 28, 2015, June 14, 2012, November 21, 2011, November 14, 2013 and January 28, 2015, respectively, specifying goods and services in classes 9, 14, 16, 25 and 35. These trademark registrations remain current. A subsidiary of the Complainant has registered multiple domain names consisting of “asos” plus various Top-Level Domain (“TLD”) suffixes.

The Respondent is an individual located in China and the registrant of the disputed domain name. According to a Reverse WhoIs search provided by the Complainant, the Respondent’s contact email address is associated with over 200 domain names, many of which consist of transliterations of Chinese words, or English words, plus a generic Top-Level Domain (“gTLD”) suffix.

The disputed domain name was registered on May 17, 2016. It redirects to a news and home information website that displayed advertising, including for fashion items, and links to other websites, including a major online shopping website.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s ASOS trademark. The gTLD suffix is an integral and technical part of the disputed domain name and may be disregarded in the determination of confusing similarity under the conventions of the Policy. The gTLD suffix “.vip” can be quite clearly associated with the Complainant and its brand because “VVIP” is the highest level in a customer reward scheme operated by the Complainant. All the top Internet search results for “ASOS” refer to the Complainant’s group of companies.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. Bearing in mind the massive reputation of the ASOS brand and the Complainant’s operations in a wide range of goods and services since as early as 2002, 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 Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services; rather, it resolves to an inactive website.

The disputed domain name was registered and is being used in bad faith. A bad faith registration is shown by the Respondent’s failure to make a good faith use of the disputed domain name. Nothing in the Respondent’s particulars indicate any entitlement or interest in the legitimate use of the disputed domain name. The Respondent has registered other domain names that incorporate famous fashion or sports trademarks, two of them with typographical errors.

B. Respondent

The Respondent is entitled to the disputed domain name because she registered it first in time. The disputed domain name and the Complainant’s trademark belong to different areas of activity and are absolutely unrelated. The disputed domain name has no association at all with the Complainant’s trademark. The Respondent is a fan of the Taiwanese singing group ASOS.

The disputed domain name has not been actively used but only redirected to the Respondent’s personal website, which is a non-profit website without any commercial brand. The Respondent did not use the disputed domain name in bad faith to imitate or harm any trademark.

In China, “asos” is a Taiwanese singing group originally known as “SOS: Sisters of Shiu” and now as “ASOS”. Many Internet resources prove that the Respondent duly registered the disputed domain name, not in bad faith or with any connection to third party trademarks. Various websites refer to this singing group, which debuted in 1993 and released its first recording in 1994.

“Asos” is composed of four letters so it is short and easy to remember. It is a transliteration of Chinese words meaning “love search”. Anyone can register a four-letter domain name. “Asos” is also the acronym of the American Society of Oral Surgeons. The Respondent has also registered the domain names <ssto.vip> and <cmep.vip>.

The above considerations demonstrate that the Respondent has rights and legitimate interests in respect of the disputed domain name, that the registration of the disputed domain name has no connection to any other person’s trademark or logo, and that the Respondent did not register the disputed domain name in bad faith.

Further, if the disputed domain name is actively used in future, the Respondent will clearly indicate that the disputed domain name has no relationship to the ASOS trademark.

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the gTLD suffix “.vip” in the disputed domain name is a common English language acronym and that the Respondent has registered other English-language domain names, other English language gTLD suffixes as well as domain names containing Western brand names, all of which indicates a level of comprehension of the English language; and, further, that translation of the Complaint into Chinese would be overly onerous and result in substantial costs.

The Respondent requests that the language of the proceeding be Chinese. Her main arguments are that her level of English is poor and that she only knows several simple English words.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding takes place with due expedition. Prior UDRP panels have noted that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint in this proceeding was filed in English and that the Response was filed in Chinese. The Respondent has clearly understood the Complaint because the Response addresses in detail the issues raised. The Panel can read both parties’ submissions as filed in their original language. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas allowing the Complaint to be filed in English creates no unfairness to the Respondent.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that it will accept the Response as filed in Chinese.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements:

(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

Based on the evidence submitted, the Panel finds that the Complainant has rights in the ASOS trademark.

The disputed domain name incorporates the Complainant’s ASOS mark in its entirety as its dominant and only distinctive element. The only additional element is the gTLD suffix “.vip”. However, a gTLD suffix generally has no capacity to distinguish a domain name from a trademark for the purposes of comparison under the Policy. See LEGO Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

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

(ii) [the respondent] (as an individual, business, or other organization) [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.

The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s ASOS trademark. There is no suggestion that the Complainant has granted the Respondent a licence or other authorization to use its trademark or to register its trademark in a domain name. The disputed domain name redirects to a news and home information website that displayed advertising, including for fashion items, and links to other websites, including a major online shopping website. That is not a use of the disputed domain name in connection with a bona fide offering of goods or services, nor evidence of some legitimate noncommercial or fair use, as envisaged by the first and third circumstances of paragraph 4(c) of the Policy.

The Complainant has also shown that the Respondent’s name is “Qin Huakun”, not “Asos”. There is no evidence that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.

Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Respondent replies that the disputed domain name redirects to a personal, non-profit website without any commercial brand. However, the Panel finds this assertion to be factually inaccurate because the website displays advertising that offers goods for sale, including fashion items. The Respondent also asserts that she is a fan of the “asos” singing group. However, this assertion is unsubstantiated and, in any case, the Panel finds no evidence that the Respondent has ever used the disputed domain name in connection with a fan website.

The Respondent points out that “asos” consists of four letters that can be an acronym with other meanings. However, the Panel sees no suggestion that the Respondent registered or has ever used the disputed domain name in connection with such a meaning. The Respondent asserts that “asos” is a transliteration of combinations of Chinese words including “爱搜索” (Pinyin: “aisousuo”) and “爱搜搜” (Pinyin: “aisousou”). The Panel not only finds this assertion to be factually inaccurate but also finds no evidence that the Respondent has ever used the disputed domain name in connection with the meaning of either phrase.

Therefore, the Panel finds no evidence of some legitimate noncommercial or fair use, as envisaged by the third circumstance of paragraph 4(c) of the Policy.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”

With respect to registration, the Panel observes that the disputed domain name, apart from the gTLD suffix, is identical to the Complainant’s ASOS trademark. The Respondent registered the disputed domain name years after the Complainant registered its trademark in China, where the Respondent is located. The Complainant’s group’s official website is the top search result for the term “asos” in the Baidu search engine. The Complainant’s group operates an online fashion retail website, meanwhile the Respondent’s own website displays fashion advertising and a link to a major online shopping website. Although the acronym “asos” has other meanings, the Panel notes that the Respondent’s email address is associated with certain other domain names composed of a brand name (possibly misspelt) plus a gTLD suffix, like the disputed domain name. In view of these circumstances, the Panel finds it more likely than not that the Respondent deliberately chose to register the disputed domain name incorporating the Complainant’s trademark in bad faith.

With respect to use, the Respondent is using the disputed domain name, which is confusingly similar to the Complainant’s trademark, to redirect traffic to her personal website which, contrary to her assertion, is operated for commercial gain, because it displays advertising for goods, including fashion items that compete with the Complainant’s goods. Given these circumstances and those set out in Section 6.2B above, the Panel finds that it is more likely than not that the disputed domain name is being used in bad faith as envisaged by paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 disputed domain name <asos.vip> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: August 14, 2017