WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ASOS plc v. Dorethea Gay

Case No. D2017-0054

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 Dorethea Gay of Sacramento, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <asosshopit.com> and <poloasos.com> are registered with Jiangsu Bangning Science & 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 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 18, 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 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 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 use of the ASOS mark began almost immediately thereafter. 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 and 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), European Union Reg. No. 004524997 (registered February 21, 2015), India Reg. No. 1140693 (registered December 2, 2011), Japan Reg. No. 5542517 (registered December 14, 2012), Germany Reg. No. 302011032122 (registered August 20, 2011), Republic of Korea Reg. Nos. 450045148 (registered June 17, 2013) and 401042539 (registered June 12, 2014), 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). The Complainant also owns more than 300 “ASOS” domain names on various Top-Level Domains (“TLDs”), including <asos.com>, <asos.biz>, <asos.boutique>, <asos.fashion>, <asos.info>, and <asos.us.com>.

Both disputed domain names were registered on May 23, 2016. Currently neither disputed domain name resolves to an active website. At the time of filing the Complaint, the disputed domain name <asosshopit.com> redirected Internet users to the website “www.timberlandbootsshoes.us”, which purported to sell shoes under the ADIDAS brand. In the past, the disputed domain name <asosshopit.com> also redirected Internet users to the website “www.adidasnmd-sneakers.us”, which similarly purported to sell shoes under the ADIDAS brand. Both websites are very different in appearance from the official ADIDAS website. The disputed domain name <poloasos.com> previously resolved to a website prominently featuring the RALPH LAUREN name and logo and purporting to sell fashion products under the RALPH LAUREN brand. Like the others, the “www.poloasos.com” website was also very different in appearance from the official RALPH LAUREN website. The written content of all of the websites was largely in English.

The Respondent’s name and email address are associated with nearly 350 domain names, many of which contain English terms and many of which contain third-party brand names or imitations of them, including <birkenfootprints.com>, <macyhandbags.com>, <maxnike.com.tw>, and <yeezyboosteu.com>. Many of the Respondent’s other domain names resolve to websites that purport to sell third-party branded goods.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are 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 ASOS Group’s goods and services or indicate a business economically linked to the ASOS Group. 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 names are confusingly similar to the ASOS mark. The gTLD “.com” in both disputed domain names can be disregarded in the determination of confusingly similarity because it is an integral and technical part of the disputed domain names. The Panel should confine its assessment to the similarity between ASOS and “asosshopit” and “poloasos”, respectively. The “asosshopit” comprises the Complainant’s ASOS mark in full and the term “shopit”. The “shopit” is directly related to the ASOS Group’s activities and is therefore a descriptive term. Because the <asosshopit.com> domain name merely adds a descriptive term to the Complainant’s distinctive mark, it is confusingly similar to the ASOS mark. The inclusion of “shopit” in the disputed domain name <asosshopit.com> does not disassociate the disputed domain name from the Complainant or the ASOS brand. Similarly, “poloasos” comprises the ASOS mark in full and the term “polo”, a descriptive term referring to a particular style of shirt. Internet users are likely to consider the term “polo” to be a reference to a particular type of product sold by the ASOS Group. Therefore, the inclusion of “polo” in the disputed domain name <poloasos.com> does not sufficiently differentiate the disputed domain name from the Complainant or the ASOS brand.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. 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 names other than to take advantage of the Complainant’s rights. The disputed domain names were created in May, 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 names 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 names. The Respondent is not using the disputed domain names in connection with bona fide offerings of goods or services. Instead, the disputed domain names resolved to websites that purported to sell goods under third-party brands that are prominent within the fashion industry, and such use of those third-party marks is highly likely to be unauthorized.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. Given the prevalence of the ASOS brand, the Respondent would have been aware of the Complainant’s rights in the ASOS mark. The Respondent has registered the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant for valuable consideration in excess of out-of-pocket costs related to the disputed domain names. The Respondent expected the Complainant to learn of the Respondent’s domain name registrations and to offer to purchase the disputed domain names. Additionally, the Respondent has shown a clear pattern of registering domain names that contain well-known brand names. It is clear that the Respondent’s primary objective is to prevent the Complainant from reflecting the ASOS mark in corresponding domain names. The Respondent also registered the disputed domain names for the purpose of disrupting the business of a competitor. The Respondent purports to sell fashion goods under the disputed domain names, which will become associated with the ASOS Group and to the extent that such goods are of low quality, there is a clear risk that the Complainant’s reputation will be damaged. Finally, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark. The high potential for initial interest confusion is sufficient to establish bad faith on the part of the Respondent. Given the distinctive nature of the ASOS mark and the colossal scope of the Complainant’s business, there is no way in which the Respondent could use the disputed domain names except in bad faith.

The Complainant requests that the disputed domain names 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. Both disputed domain names include English terms and the Respondent owns many other domain names that include English terms. Both disputed domain names resolved to websites with almost exclusively English words. 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 names if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

(i) The disputed domain names are 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 names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain names are 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 names comprise the TLD “.com” and the terms “asosshopit” and “poloasos”, respectively. In respect to both disputed domain names, the TLD “.com”, as a technical part of a domain name, is typically not relevant in determining whether the disputed domain names are confusingly similar to the Complainant’s ASOS mark and is without legal significance and should be ignored. See CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

The disputed domain name <asosshopit> comprises the Complainant’s ASOS mark in its entirety and the term “shopit”, which refers to retail sale services or the act of purchasing goods. “Shopit” is descriptive of the ASOS Group’s activities. Similarly, the disputed domain name “poloasos” comprises the Complainant’s ASOS mark in its entirety and the term “polo.” Polo refers to a particular style of shirt, and is therefore related to the activities of the ASOS Group and is descriptive of articles of clothing that may be sold by the ASOS Group. Where a domain name merely adds a descriptive word to a distinctive mark in which the Complainant has rights, then such a domain is confusingly similar to the Complainant’s mark. See Hachette Filipacchi Presse v. Vanilla Limited/Vanilla Inc/Domain Finance Ltd., WIPO Case No.D2005-0587. The addition of the descriptive words to the Complainant’s ASOS mark in the disputed domain names does not sufficiently distinguish the disputed domain names from the Complainant’s mark. Indeed, in this instance, the use of descriptive terms related to the Complainant’s business is more likely solidify the association with the Complainant. Therefore, the disputed domain names are confusingly similar to the Complainant’s mark.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, the Respondent may demonstrate rights or legitimate interests in the disputed domain names 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 names or name corresponding to the disputed domain names 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 names, 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 names, 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 names. The Complainant contends, and the Respondent does not deny, that the Complainant never authorized the Respondent to use the ASOS mark or to register domain names including the ASOS mark.

The Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names resolved to websites that sold goods that were not the Complainant’s goods and that competed directly with the Complainant’s business. This was not a bona fide offering of goods. See America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374(“[I]t would be unconscionable to find that a bona fide offering of services in a respondent’s operation of a web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business.”). The term “asos” bears no relationship to the Respondent’s activities in connection with the disputed domain names. “The inevitable conclusion is that [this] word[] [is] not one[] that the Respondent would legitimately choose in the context of provision of goods, services or information via a web site unless seeking to create an impression of an association with the Complainant.” See Harvey Norman Retailing Pty Ltd v. gghome.com Pty Ltd, WIPO Case No. D2000-0945. Such activity is not bona fide and no rights or legitimate interests can be created where the Respondent has chosen the disputed domain names seeking to create a false impression of association with the Complainant.

Finally, the Respondent is not making any noncommercial or fair use of the disputed domain names. The Respondent’s websites made apparent that the purpose of the Respondent’s use of the disputed domains name was to engage in commercial transactions.

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

C. Registered and Used in Bad Faith

The Respondent registered and used the disputed domain names 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 the disputed domain names in bad faith:

(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain names 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or

(ii) The Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or

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

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

The Respondent was undoubtedly aware of the Complainant and its ASOS mark at the time of registration of the disputed domain names. The Complainant and its ASOS mark are known widely and throughout the world. Additionally, the Complainant owns trademark registrations for its ASOS trademarks in many jurisdictions. A simple Internet search for “ASOS” would have yielded many obvious references to the ASOS Group. The Respondent must have had the Complainant’s famous trademark in mind when the Respondent registered the disputed domain names, as evidenced by the Respondent’s use of the disputed domain names in connection with the sale of competing products in the fashion industry. The Respondent’s intentional registration of domain names incorporating the Complainant’s well-known mark, being fully aware of the Complainant’s rights in the mark, without any right or legitimate interest in doing so is registration in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

The Respondent’s use of the disputed domain names to compete with the Complainant by offering similar Internet retail services, falls squarely within the use contemplated in paragraph 4(b)(iv) of the Policy. The Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites. Initially, Internet users would be likely to be drawn to the Respondent’s website because of the confusing similarity between the disputed domain name and the Complainant’s ASOS mark. See Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., WIPO Case No. D2010-2181. By creating this false impression, the Respondent could commercially benefit either by consumers’ purchases of goods through the Respondent’s websites. That the Respondent’s websites made unauthorized use of other well-known third-party brands is also indicative of a pattern of unauthorized use of others’ marks to cause consumer confusion for purposes of commercial gain.

Additionally, the Respondent’s holding of the disputed domain names prevents the Complainant from reflecting its mark in the same domain names.The Respondent is holding several other domain names that are comprised of, in part, other well-known third-party marks, which is prima facie evidence that the Respondent regularly has been engaging in a pattern of abusive registrations. See Statoil ASA v. Creative Domain Pty Ltd. / Christine K. Hoyer, WIPO Case No. DAU2013-0012.

These activities amount to bad faith registration and use of the disputed domain names.

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 names, <asosshopit.com> and <poloasos.com>, be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: March 17, 2017