WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ASOS plc v. Wangsu Qing, Wang Su Qing

Case No. D2017-2461

1. The Parties

Complainant is ASOS plc of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK"), represented by Stobbs IP Limited, United Kingdom.

Respondent is Wangsu Qing, Wang Su Qing of Fuzhou, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <asosclearance.com> is registered with eName Technology Co., Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on December 13, 2017. On December 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On December 18, 2017, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant requested that English be the language of the proceeding on December 19, 2017. 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on December 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 15, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 16, 2018.

The Center appointed Yijun Tian as the sole panelist in this matter on February 5, 2018. 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

A. Complainant

Complainant, ASOS plc, is a company incorporated in London, United Kingdom. Founded in 1999, ASOS is now a leading global online fashion and beauty retailer and the UK's largest online-only fashion retailer. ASOS ships to more than 240 countries and territories and sells over 85,000 branded and own label products, with 5,000 new styles added every week. As at August 2017, ASOS' annual turnover was over GBP 1,923.6 million.

Complainant has exclusive rights in the ASOS and ASOS related marks (hereinafter "ASOS Mark"). Complainant is the exclusive owner of numerous ASOS trademarks worldwide, including the UK trademark registered since October 28, 2009 (the UK Trademark registration number UK00002530115), the Chinese trademark registered since November 14, 2013 (the Chinese Trademark registration number 10933780), and International trademark registered since June 19, 2015 (the International trademark registration number 1265485) (Annex 6 to the Complaint). Complainant also owns and operates domain names, which contain ASOS mark in its entirety, such as <asos.com>. Complainant's website "www.asos.com" had attracted over 1,669 million visits during Complainant's Financial Year (August 2016 - August 2017). It is the second most visited fashion website in the world.

B. Respondent

Respondent is Wangsu Qing of Fuzhou, Fujian, China. The disputed domain name <asosclearance.com> was registered with eName Technology Co., Ltd on June 18, 2017. The disputed domain name currently resolves to a website purporting to sell clothing, which is available on Complainant's "www.asos.com" website.

5. Parties' Contentions

A. Complainant

Complainant contends that the disputed domain name <asosclearance.com> is confusingly similar to Complainant's ASOS trademarks. The disputed domain name includes the ASOS mark in its entirety. The addition of the generic terms "clearance" at the end of the disputed domain name as well as the generic Top-Level Domain ("gTLD") ".com" is not sufficient to eliminate the confusing similarity.

Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant contends that the disputed domain name was registered and is being used in bad faith.

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

B. Respondent

Respondent did not formally reply to Complainant's contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name <asosclearance.com> is English. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

a) The disputed domain name is in the English language. The term "clearance" is a common English term, and is defined in the Cambridge Dictionary (Annex 1 to Complainant's Language Request). The selection of the term "clearance" implies that Respondent has at least a basic comprehension of the English term. This term has the potential to attract Internet users with even a basic understanding of the English language.

b) Complainant, a predominately English-language online retailer, owns a portfolio of domain names with such intelligible suffixes, e.g., <asos.shop>, <asos.boutique> and more. (Annex 2 to Complainant's Language Request).

c) The disputed domain name resolves to a website that contains brand assets available at Complainant's website, "www.asos.com" (Annex 3 to Complainant's Language Request). The website resolved by the disputed domain name is exclusively in English, and targeting and offering services to English-speaking consumers therein.

d) Respondent has registered a variety of English-language domain names, e.g., <wholesaleclothing-outlet.net> and <buywholesaleclothing.com>, amongst others. This prolific registration of domain names in English words is evidence that Respondent understands the meaning of "clearance" as an English-language term for "the process of removing waste or things you do not want from a place".

e) By registering domain names which contain western brand names (e.g., <cheapclarksshoes.com> (Clarks), <new-balanceoutlet.com> (New Balance) and <dieseljeansoutletsale.com> (Diesel), amongst others, Respondent has demonstrated the ability to understand and engage with the English language. The domain names owned by Respondent also resolve to English-language websites, e.g., "www.cheapclarkshows.com", "www.new-balance.com" and "www.dieseljeansoutletsale.com" (Annex 4 to Complainant's Language Request). Moreover, these websites are making offers in United States Dollars (currency associated with English-speaking customers) to target English-speaking customers in at least the United States of America.

f) Respondent would not be prejudiced if proceedings were in English because Respondent has demonstrated a level of familiarity with the English language. Requiring Complainant to submit its Complaint in Chinese would be overly onerous and the translation of all documents would result in it incurring substantial costs in the process.

g) Complainant requests that the language of these proceedings should be in English and that the Complaint should be accepted in the language in which it was filed. Further or in the alternative, Complainant requests that the language of proceedings be in English and Chinese.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") further states:

"Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant's mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement." (WIPO Overview 3.0, section 4.5.1; see also L'Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from the United Kingdom, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name <asosclearance.com> includes Latin characters and English word ("clearance") and is registered in the gTLD space comprising of the Latin characters ".com" (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent normally appears to be Chinese individual – Wangsu Qing and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name includes Latin characters and the English word ("clearance"), rather than Chinese script; (b) the disputed domain name <asosclearance.com> currently resolves to website which is in English; (c) the default currency for payment is United States Dollar; (d) the Center has notified Respondent of the proceeding in both Chinese and English; and (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Substantial Issues

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

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

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a) - (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the ASOS marks acquired through registration. The ASOS marks have been registered in the UK since 2009, in China since 2013, and internationally since 2015. The disputed domain name <asosclearance.com> comprises the ASOS mark in its entirety. The disputed domain name only differs from Complainant's trademarks by the suffix "clearance", and the gTLD suffix ".com" to the ASOS marks. This does not eliminate the identity or at least the confusing similarity between Complainant's registered trademarks and the disputed domain name, see WIPO Overview 3.0, section 1.8 and 1.11. In relation to the gTLD suffix, WIPO Overview 3.0 further states:

"The applicable Top Level Domain ('TLD') in a domain name (e.g., '.com', '.club', '.nyc') is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test." (WIPO Overview 3.0, section 1.11).

Thus, the Panel finds that disregarding the suffix "clearance" as well as the gTLD suffix ".com", the disputed domain name is identical to the ASOS marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii) 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 Complainant's trademarks.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant's contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).

According to the Complaint, Complainant is a leading global online fashion and beauty retailer and the UK's largest online-only fashion retailer. Founded in 1999, ASOS now ships to more than 240 countries and territories and sells over 85,000 branded and own label products, with 5,000 new styles added every week. Complainant has rights in the ASOS marks since 1999 in the UK and 2013 in China, which precede Respondent's registration of the disputed domain name (2017).

Moreover, Respondent is not an authorized dealer of ASOS-branded products or services but is rather offering what appears to be Complainant's products (under ASOS marks) or competing products (under Complanant's competitor's marks) for sale on its website. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term "asos" in the disputed domain name and in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the ASOS marks or to apply for or use any domain name incorporating the ASOS mark and Respondent has, through the use of a confusingly similar domain name and its webpage layout and contents, created a likelihood of confusion with the ASOS marks. Noting also that apparently the website resolved by the disputed dispute domain contains products available at Complainant's website "www.asos.com" (Annex 3 to Complainant's Language Request). Potential partners and end users are led to believe that the website at the disputed domain name is either Complainant's site or the site of an official authorized partner of Complainant, which it is not;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2017, after the ASOS marks became internationally known. The disputed domain name is identical or confusingly similar to Complainant's ASOS marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, the website resolved by the disputed domain name contains half a dozen of the corresponding ASOS images taken from "www.asos.com" (Annex 13 to the Compliant). Respondent is trying to suggest an association or connection with Complainant, which is in fact not the case.

The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain name; or

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

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

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on the website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the ASOS marks with regard to its products and services. Complainant, founded in 1999, is now a leading global online fashion and beauty retailer and the UK's largest online-only fashion retailer. It ships to more than 240 countries and territories and sells over 85,000 branded and own label products. As at August 2017, ASOS' annual turnover was over GBP 1,923.6 million. Complainant has rights in the ASOS marks since 1999 in the UK and 2013 in China. It is not conceivable that Respondent would not have been aware of Complainant's trademark rights at the time of the registration of the disputed domain name (in 2017) particularly given that Respondent has used the product photos retrived from Complainant's website "www.asos.com".

Thus, the Panel concludes that the disputed domain name was registered in bad faith.

b) Used in Bad Faith

Complainant also has adduced evidence to show that by using the confusingly similar disputed domain name, Respondent has "intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location". To establish an "intention for commercial gain" for the purpose of this Policy, evidence is required to indicate that it is "more likely than not" that such intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Given the widespread reputation of the ASOS marks, the confusingly similar domain name <asosclearance.com>, as well as the similar website layout and product photos, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent's website. The addition of the term "clearance" may even increase the confusion. Internet users may believe the website is an online clearance store website, which is authorized by Complainant and targeting consumers on the Internet. In other words, Respondent has, through the use of a confusingly similar domain name and webpage layout and contents, created a likelihood of confusion with the ASOS marks (e.g., the website resolved by disputed domain name <asosclearance.com> contains half a dozen of the corresponding ASOS images taken from "www.asos.com" (Annex 13 to the Complaint)). Potential partners and end users are led to believe that the website at the disputed domain name is either Complainant's site or a site of official authorized partner(s) of Complainant, which it is not. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use the disputed domain name which is confusingly similar to Complainant's trademark, intended to ride on the goodwill of Complainant's trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves are indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <asosclearance.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: February 18, 2018