WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Asos PIc v. Ceravolo Premium Wines Pty Ltd
Case No. DAU2012-0016
1. The Parties
Complainant is Asos PIc of London, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom” or “UK”), represented by Allens, Australia.
Respondent is Ceravolo Premium Wines Pty Ltd of South Australia, Australia represented by Piper Alderman, Australia.
2. The Domain Name and Registrar
The Disputed Domain Name <asos.com.au> is registered with PlanetDomain Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2012. On June 1, 2012, the Center transmitted by email to PlanetDomain Pty Ltd a request for registrar verification in connection with the Disputed Domain Name. On June 4, 2012, PlanetDomain Pty Ltd transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”) and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2012. Respondent submitted its Response by email to the Center on July 4, 2012.
The Center appointed Mary Padbury, Andrew Christie and Sam Ricketson as the panelists in this matter on August 10, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statements of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel requested and received the annexes to the Response on August 27, 2012. Complainant filed a Reply under cover of letter of July 31, 2012 on that date. Further, Respondent responded to the Reply by letter of August 3, 2012. The Panel has decided to permit this additional out of time material in accordance with paragraph 12 of the Rules. The due date for decision was extended to September 11, 2012.
4. Factual Background
The Disputed Domain Name <asos.com.au> was created on August 7, 2006. The initial registrant was Look Up Pty Ltd. The son of the directors of Respondent, Antony Ceravalo, was listed as the registrant contact of the Disputed Domain Name from July 26, 2009. Respondent became the registrant on October 14, 2010 according to the registrar verification response. The Disputed Domain Name redirects to “www.ceravolo.com.au” (“Ceravolo website”).
Complainant commenced as a start-up business based in the United Kingdom in June 2000. Since that time, it has developed into a leading global e-commerce business. Complainant was originally incorporated under the name As Seen On Screen Holdings plc in 2000 but became known under its acronym “ASOS” and formally changed its name to ASOS plc on August 8, 2003. The domain name <asos.com> was registered by Complainant on February 27, 2000 and is used as the URL for Complainant’s website (“ASOS website”). In 2002, Complainant started to use the acronym ASOS as a trademark on the website in connection with Complainant’s products and online retail services. The ASOS website is the UK’s largest online fashion and beauty store with a large number of customers worldwide, including in Australia. Complainant currently offers for retail sale over 50,000 fashion goods across womenswear, menswear, footwear, accessories, jewellery and beauty. These goods include Complainant’s own label ASOS products as well as branded fashion goods. Complainant now ships to over 190 countries including Australia.
Complainant first used the name and trademark ASOS in relation to products and services in Australia in 2003 when sales to individuals in Australia were made. Section 3 of the statutory declaration of Fergus Collins made May 3, 2012 details the value of these sales since that time. In particular, Mr. Collins declares that the value of Complainant’s goods sold in Australia between January 2003 and December 2005 totaled GBP 85,746 and GBP 102,714 between January 2006 and March 2007 (paragraph 3.2 and Exhibits G and H to Mr. Collins’ statutory declaration). There is further evidence of Australian sales from February 2008 (Exhibit I) and Australian visits to Complainant’s website from April 2008 (Annexure 20 to Complaint).
Complainant’s UK sales between January 2006 and March 2007 were GBP 56 million and worldwide sales were GBP 63 million in 2009/2010.
Complainant launched a country specific standalone website in Australia in 2011.
Complainant applied to register the trademark ASOS in Serbia and the Ukraine from July 15, 2005 and has trademark registrations in those countries and Germany, Singapore and Sweden applied for from June 20, 2011, May 25 and July 14, 2010 and April 29, 2010 respectively. On June 9, 2010, August 10, 2010 and October 28, 2011, Complainant filed Australian trademark applications in classes 3, 18, 25 and 35.
Complainant’s worldwide marketing expenditure in 2004/2005 was GBP 1.5 million rising to GBP 8.1 million in 2008/2009. Articles about Complainant appeared in the Australian press from at least March 21, 2010 (The Age).
Complainant became aware of Respondent’s registration of the Disputed Domain Name in February 2010. Complainant made an anonymous approach through an unidentified solicitor from its UK lawyers, Dechert LLP, to Antony Ceravolo on February 5, 2010. The exchange of emails is as follows:
“Nathan Smith to Antony Ceravolo dated February 5, 2010
Dear Mr. Ceravolo
I am interested in buying the domain name www.asos.com.au <http://sn107w.snt107.mail.live.com/mail/www.sos.com.au> and see that you are the owner of the domain name. I would be grateful if you could let me know if you are interested in selling the domain name.
Thanks
Nathan
Antony Ceravolo to Nathan Smith dated February 5, 2010
Nathan.
Thank you for your email. At present, I have no plans to sell this domain as I have use for it in our Group. What is your interest in the domain?
Regards
Antony
Nathan Smith to Antony Ceravolo dated February 11, 2010
Antony
Thanks for your prompt response. I have business plans for the domain name, but if it provides you with reassurance, my plans have nothing whatsoever to do with the wine industry or anything related to that, which I understand is the business you are involved in.
If you would be prepared to sell the domain, I would certainly be interested in buying it.
Kind regards
Nathan
Antony Ceravolo to Nathan Smith dated February 11, 2010
Nathan
If you wish to persue this please send to me a proposal disclosing the defined use, your best offer and your contact details and I will send to my team to look at. I have been told by my group counsel that we have been actively approached on this name. Our Group has interests in various businesses globally in addition to the wine business.
Thanks
Antony
Nathan Smith to Antony Ceravolo dated March 2, 2010
Antony
Thank you again for your email.
I am prepared to pay AU$4,000 for the domain name. In terms of the transfer I would prepare a short document for both parties to sign. I would then wire the money to your account and you would then transfer the domain name to me.
I look forward to hearing from you.
Kind regards
Nathan
Nathan Smith to Antony Ceravolo dated March 12, 2010
Antony
I refer to my email below.
I wonder whether your Group has had a chance to consider this yet?
Kind regards
Nathan
Antony Ceravolo to Nathan Smith dated March 12, 2010
Nathan
Thanks for the offer, but it is so far away from being interesting to us we did not discuss it.
Best of luck in your search.
Antony
Nathan Smith to Antony Ceravolo dated March 19, 2010
Antony
Thanks for the email. Perhaps you could give me a ballpark estimate of the kind of figure you would be interested in.
Kind regards
Nathan
Antony Ceravolo to Nathan Smith dated March 29, 2010
Nathan
Given your opening offer, I don’t really want to waste time on this please. We also have plans for the URL in our businesses and to change those plans it would have to be a very attractive offer.
Regards
Antony”
In November 2011, Complainant’s International Director spoke to Joe Ceravolo by telephone to try to resolve this matter without success.
Respondent is a company operated by directors, Joe Ceravolo and Heather Ceravolo, and the Ceravolo family (including their son, Antony Ceravolo). Respondent produces and distributes wines and olive oil for Australian and international markets. Respondent has in the past promoted and sold its wine products and also its olive oil products under the brands CERAVOLO, RED EARTH and ST. ANDREWS. Respondent formed the intention of creating an olive oil brand which is part of the Ceravolo family of products but with its own distinctive brand. That brand is ASOS. On May 31, 2010, Respondent filed Australian Trade Mark Application 1364291 for ASOS in class 29 which has since been registered. Respondent described its application to register an Australian trademark as part of its “pre-launch preparations” and refers to an email from Antony to his mother, Heather Ceravolo, dated March 29, 2010 in the following terms:
“Subject: ASOS OIL
I like the name for our oil for a supermarket brand different from Ceravolo and Red Earth – sounds Mediterranean too.
Australian Specialized Oil Supplies Limited is what I am thinking. Can you see what a mock label would look like.
Antony Ceravolo”
Respondent also claims it registered the Disputed Domain Name as part of its pre-launch preparations. Respondent claims that it has promoted ASOS as a brand of its olive oil product on its website and used the Disputed Domain Name to direct consumers to the Ceravolo website since that time. From around March 17, 2010, the Disputed Domain Name has redirected Internet users to the Ceravolo website.
Complainant filed an .auDA complaint on September 22, 2010. This was dismissed on October 19, 2010. .auDA found that the domain name registration complied with the Domain Name Eligibility and Allocation Policy Rules for Open 2LDs because the registrant had a current ACN and there is a close and substantial connection between the registrant and the domain name and a product they supply, being olive oil which is noted on the Ceravolo website.
On March 1, 2012 Complainant’s Authorized Representative sent a letter to Respondent by email. Respondent’s Authorized Representative sent a response on March 5, 2012. On June 1, 2012, Complainant sent a letter to Respondent and filed the Complaint with the Center.
5. Parties’ Contentions
A. Complainant – initial filing
Complainant contends that the Disputed Domain Name is substantially identical with and/or deceptively similar to its registered and unregistered trademark rights in the word ASOS. Complainant submits that it’s registered and unregistered trademark rights pre-date Respondent’s registration of the Disputed Domain Name and that it has the requisite level of rights for paragraph 4(a)(i) of the Policy.
Complainant relies on registration of the ASOS trademarks in various foreign countries and common law rights in respect of ASOS. Complainant contends that the Disputed Domain Name incorporates “ASOS” which constitutes the essential feature of the ASOS trademarks and the sole feature of the ASOS brand name. Further, Complainant submits that the addition to the suffix “.com.au” does not serve to distinguish the Disputed Domain Name from the mark.
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant contends that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name on the basis of Complainant’s extensive use of the ASOS brand name, ASOS trademarks and ASOS website which pre-date the registration of the Disputed Domain Name. Complainant disputes Respondent’s entitlement to Australian Trade Mark No. 1364291 for ASOS. Complainant submits that, for the purposes of the Policy, Respondent “registered” the Disputed Domain Name from the original registrant and domain reseller Look Up between July 26, 2009 and November 11, 2010 although it appears registration took place on October 14, 2010. Given Complainant’s extensive reputation and recognition in the United Kingdom and internationally, Complainant submits that Respondent and Respondent’s contact, Antony Ceravolo, were aware of Complainant’s reputation at the time of selection, registration or acquisition of the Disputed Domain Name. They also note that Antony Ceravolo was formerly a UK resident and entrepreneur specialising in internet and media entertainment ventures making it more likely that he knew or ought to have known of Complainant’s internet presence and success as a social media and e-commerce fashion business in the UK and internationally at the time of the acquisition of the Disputed Domain Name.
Complainant notes that the Ceravolo website, to which Internet users are redirected, displays computer generated imagery of a product called ASOS Olive Oil. There is also a statement indicating that the olive oil is “now being launched for the export market. Please contact us for details and pricing”. Complainant asserts that this statement and imagery had been placed on the website since at least in or around October 2010 and were not on the website prior to the date on which Complainant filed its administrative complaint on September 22, 2010. Complainant also notes that the launch of the product does not appear to be imminent and the product does not appear to be available for purchase.
Complainant contends that the relevant time for assessing Respondent’s bad faith is at the time the current registrant took possession of the Disputed Domain Name. Complainant submits that Respondent or Respondent’s contact knew or ought to have known of Complainant’s reputation and rights. Complainant contends that, contrary to paragraph 4(a)(iii) of the Policy, Respondent has registered the Disputed Domain Name in bad faith in order to prevent Complainant from reflecting the ASOS brand name and trademarks in a corresponding domain name. Complainant further submits that the Disputed Domain Name was registered primarily for the purpose of disrupting the business of Complainant in Australia and/or hindering Complainant’s ability to further expand its business in Australia. Complainant lastly submits it is highly likely that Internet users will enter the URL connected to the Disputed Domain Name and be redirected to the Ceravolo website in the mistaken belief that it is the address of Complainant’s corresponding domain name in Australia. Even if some of the redirected Internet users may appreciate that the site is not a site of Complainant, the mere fact that they have been diverted to the Ceravolo website when looking for Complainant’s website is sufficient to create confusion. Complainant submits that Respondent is using the Disputed Domain Name to potentially attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with Complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location. Complainant’s contends that its intention to consolidate or expand its activities internationally, including in Australia, a key English speaking target country, was widely anticipated and made public before the registration of the Disputed Domain Name in the press or online via Complainant’s annual reports available in the UK and internationally via the ASOS website.
B. Respondent – initial filing
Respondent does not accept that the Disputed Domain Name is identical or confusingly similar to a name, trademark or service mark in which Complainant has rights. It notes that Complainant’s rights to use and register ASOS as a trademark for clothing is under challenge in Europe. It also notes that, in Australia, Complainant has no relevant registered trademark. It notes that one trademark application is under challenge by a party not associated with Respondent and that a further trademark application has received an adverse report. In particular, Respondent contends that Complainant has not established that it had sufficient reputation in “ASOS” in Australia either at present or as at the date when Respondent registered the Disputed Domain Name. Respondent does not seem to contest that the Disputed Domain Name is identical or confusingly similar to the trademark ASOS. Respondent notes that it is the registered owner of Australian registered trademark 1364291 for ASOS in relation to “extra-virgin olive oil and olive oil” in class 29 which has a priority date of May 31, 2010 being earlier than the lodgment date of Complainant’s Australian trademark applications. Respondent contends that the ASOS trademark was chosen by Respondent because the name has a Mediterranean sound which is commensurate with the olive oil product and the Ceravolo Italian family background. It is also a brand that is short, easy to remember and something that would appeal to Australian and Chinese markets. Reference is made to the email from Antony Ceravolo to his mother, Heather Ceravolo, of March 29, 2010 supporting this and suggesting that ASOS is an acronym for “Australian Specialised Oil Supplies Limited”.
Respondent contends that since the trademark became registered, Ceravolo has promoted ASOS as the brand of its olive oil product on the Ceravolo website which promotes wine and olive oil and used the Disputed Domain Name to direct consumers to that website. On this basis, Respondent contends that it has legitimate rights and interests in the trademark ASOS and is perfectly entitled to register and use the Disputed Domain Name. Respondent does not provide any evidence of actual sales of a product thus branded. Respondent contends that Complainant (at paragraph 7.7 and Annexure 26) demonstrates that Respondent’s use and promotion of ASOS as a brand for its olive oil products is genuine. Respondent notes that it responded to an enquiry by Complainant’s private investigator by email of July 19, 2011 asking whether it “had a distributor in the US for its olive oil products, plus details of the product/grades available in the US” accurately in stating “we do not have a market for our olive oil or our wine in USA”. It contends that this correspondence confirms the connection in the mind of the directors of Respondent between the ASOS trademark and the “Mediterranean/olive oil product/Ceravolo Italian family background”.
Respondent disputes that the Disputed Domain Name has been registered or is subsequently being used in bad faith. Respondent contends that it has at all times registered and used the Disputed Domain Name in good faith to promote the Ceravolo ASOS brand of olive oil product. It contends that the response to the attempted “trap purchase” indicated no interest in selling the Disputed Domain Name. Respondent notes that Mr. Ceravolo did not approach Complainant to sell the Disputed Domain Name and after receiving no reply to his email of March 29, 2010 did not follow Complainant up. This confirms that Respondent did not wish, or attempt, to sell the Disputed Domain Name.
Respondent also contends that there is no evidence that it has attempted to use the trademark ASOS in a manner to mislead or confuse or that any confusion has in fact occurred. There is no suggestion of Respondent seeking to draw any connection between itself and the ASOS clothing company or clothing. Respondent is focused on entirely unrelated goods, being the commercialization of wine and olive oil products. Respondent asserts that the use of ASOS in relation to olive oil is not at all likely to cause others to wonder if there is a connection between Respondent or its olive oil product and Complainant’s online clothing business. Further, Respondent asserts that Complainant must have been aware that Respondent has a legitimate interest in the Disputed Domain Name and that it is not a cyber-squatter, such that the Complaint is an abuse of process as attempted reverse domain name hijacking.
C. Complainant – supplemental filing
The Panel has allowed Complainant to file an out of date reply and also taken into account a follow-up letter from Respondent.
In this reply, Complainant notes that Antony Ceravolo’s email to his mother is a private document to which Complainant did not have access at the time it filed its Complaint. It notes that “Australian Specialised Oil Supplies” was not referred to in any of the correspondence received from Respondent either directly or through Respondent’s Authorized Representative. It also notes that there is no company of that name. Complainant also notes that a mock-up of the ASOS bottle as depicted on Respondent’s website is not evidence of a right or legitimate interest in the Disputed Domain Name. It notes that a user seeking to purchase ASOS olive oil “was unable to do so through the online purchase facility”. It also notes that the only oil available for purchase via this facility is the “extra virgin estate olive oil”. Although Complainant accepts that it has the onus of establishing the element that Respondent does not have a right or legitimate interest, it asserts that it does not obviate the need for Respondent to discharge its own evidentiary burden by providing evidence of promotional activities and sales.
Complainant also notes that the dismissal of the administrative proceeding related to whether Respondent was eligible to register the Disputed Domain Name is entirely distinct from the issue of whether there has been a breach of paragraph 4 of the Policy. It notes that the Complaint raises different issues including the issue of bad faith in the registration and use of the Disputed Domain Name. In particular, Complainant notes that there is no evidence that any transactions have taken place or that product is available for sale. Assuming that it was acquired in mid-2010, the evidence is that Respondent has been in the process of launching its product for over two years and has not been able to articulate what steps it has taken to launch the product either in correspondence to its lawyers or in the Response.
D. Respondent – supplemental filing
By letter of August 3, 2012, Respondent notes that there is nothing in its Response which justifies Complainant making further submissions or filing further evidence. It notes that Respondent does not allege that it has incorporated a company by the name of Australian Specialised Oil Supplies Limited. It asserts that its Response says that it has used and uses ASOS on the website as the brand of its olive oil product. Respondent asserts that Complainant accepts that it had a legitimate reason for choosing and registering <asos.com.au>, namely, that it was intended to stand for “Australian Specialised Oil Supplies” and to be used as a trademark for olive oil products, that Complainant made anonymous attempts to offer to purchase the Disputed Domain Name but the offers were not encouraged and were rebuffed and that the Disputed Domain Name has at all material times and continues to be used in relation to a website which offers for sale olive oil products labeled “ASOS”.
6. Discussion and Findings
The Panel must decide a complaint on the basis of the Policy, Rules and Supplemental Rules. Complainant has the onus of proving three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a name, trademark or service mark in which Complainant has rights. The addition of the words “a name” is intended to provide a ground of complaint where a registrant has registered or is using in bad faith the business (or other) name of another person. A complainant would not need to have trademark rights in the name in order to bring a dispute under the .auDRP. The note in the Policy provides that .auDA has determined that a “name …. in which Complainant has rights” refers to:
(a) Complainant’s company … name, as registered with the relevant Australian Government Authority; or
(b) Complainant’s personal name.
This suggests a focus on rights in a mark or a name in Australia.
(ii) the respondent has no rights or legitimate interests in respect of the domain name. The note in the Policy provides that .auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration. It follows that the outcome of the administrative proceeding is not relevant to the outcome here.
(iii) the domain name has been registered or subsequently used in bad faith.
The Panel notes that the Policy is not temporally limited with respect to Complainant’s rights so long as they exist at the time of making the Complaint.
A. Identical or Confusingly Similar
The question is whether the Disputed Domain Name is identical or confusingly similar to a name, trademark or service mark in which Complainant has rights. Complainant does not have a name registered with the relevant Australian Government Authority. As such, it must place reliance on registered or common law trademark or service mark rights with a focus on such rights in Australia. However, there is nothing in the wording of the Policy that indicates that these rights must pre-date the registration of the Disputed Domain Name so long as they are present at the time of the filing of the Complaint. In the present case, these temporal issues do not arise, as it is clear from the recitation of facts above that Complainant did have relevant rights in a mark or name well before July 26, 2009 when Anthony. Ceravolo of Respondent was included as a contact registrant of the Disputed Domain Name and certainly before the date of entry of Respondent as registrant on October 14, 2010. These rights of Complainant arose from the following facts:
(i) its use of the domain name <asos.com>, registered from February 27, 2000, as the URL for the ASOS website;
(ii) use of the acronym ASOS as a trademark or service mark in connection with its online business including establishment of common law rights in that name in Australia from 2003. Complainant first used the name and trademark ASOS in relation to products and services in Australia in 2003 when sales to individuals in Australia were made through its website. Exhibit H to the Statutory Declaration of Fergus. Collins made May 3, 2012 evidences a not insignificant number of sales made through the website to Australians. That statutory declaration also provides significant evidence of likely reputation in Australia through sales and marketing activities in the United Kingdom and elsewhere likely to have impacted Australians abroad or Australians who accessed Complainant’s website before any rights were acquired by Respondent. Further, it is apparent that Complainant had a considerable reputation in its common law trademark in Australia at the time it filed the Complaint.
The Panel finds, on the balance of the evidence before it, that Complainant has, for the purposes of paragraph 4(a)(i) of the Policy, rights in a trademark, being unregistered trademark rights in Australia in the trademark ASOS.
The Panel also finds that the Disputed Domain Name is identical to the trademark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel must decide whether Respondent has any rights or legitimate interests in respect of the Disputed Domain Name. In doing so, regard may be had to the following circumstances, which might demonstrate such rights or legitimate interests:
(i) before any notice to Respondent of the subject matter of the dispute, Respondent’s bona fide use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with an offering of goods or services (not being the offering of domain names acquired for the purpose of selling, renting or otherwise transferring); or
(ii) Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent 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 name, trademark or service mark at issue.
It is plain that under the Policy “rights or legitimate interests in respect of the disputed domain name” are not established merely by a registrar’s determination that Respondent satisfied the relevant eligibility criteria for the domain name at the time of registration (otherwise there would be little practical need for the Policy in the first place). As such, the initial registration by Look Up and the resolution of the administrative proceeding have no bearing on this proceeding. As such, the Panel will focus on what rights or legitimate interests Respondent has in respect of the Disputed Domain Name. The Respondent points to its Australian trademark registration from May 31, 2010 and the ASOS branded olive oil advertised on the Ceravolo website to which the Disputed Domain Name redirects. While Respondent being in possession of a registered trademark may indeed be a relevant consideration in assessing rights or legitimate interests under the Policy, it is not in all cases determinative as much will depend on the particular circumstances of the case. Oddly, Antony Ceravolo became the registrant contact in July 2009, well before Respondent became the registrant of the Disputed Domain Name in October 2010 and well before Australian trademark protection was sought by Respondent in May 2010. Further, there does not appear to be evidence that any olive oil branded ASOS has been sold or is available for sale. At best, the website evidences an intention to supply ASOS branded olive oil in future. The Response refers to an email from Antony Ceravolo to his mother dated March 29, 2010 headed “ASOS Oil” and this seems to be the earliest point in time to which Respondent can point to the idea of using this acronym as a trademark, noting his earlier entry as a registrant contact of the Disputed Domain Name in July 2009. It is also perhaps surprising that this email and the explanation for adoption of the trademark was not referred to in the letter from Respondent’s Authorized Representative to Complainant’s Authorized Representative dated March 5, 2012.
Complainant contends that the changes to the website to refer to “ASOS Olive Oil” were made in or around October 2010 and were not on the website prior to the date on which Complainant filed its administrative complaint on September 22, 2010. This is not contested in the Response. The absence of any evidence that ASOS Olive Oil is available for sale or has been sold (despite a further opportunity for Respondent to address this issue in its response to the Reply) makes it difficult to conclude that there has been bona fide use of the Disputed Domain Name in connection with an offering of goods such that paragraph 4(c)(i) of the Policy could apply. The Panel notes that there is very little in the correspondence with Mr. Ceravolo’s mother or the posting on the website to suggest even “demonstrable preparations to use” the Disputed Domain Name. Given that nothing else has occurred since this time, such as sales and other promotional activity, there is insufficient evidence in the Panel’s view to suggest a legitimate right or legitimate interest on the part of Respondent for the purposes of the Policy.
Further, the Panel sees no evidence of record establishing that Respondent has been commonly known by the Disputed Domain Name such that paragraph 4(c)(ii) applies. There is nothing before the Panel to establish that Respondent has ever been commonly known by the Disputed Domain Name; even though it has registered ASOS as a trademark for olive oils, that is not dispositive of the issue in itself, as the Panel further discusses before under bad faith.1It is notable that Respondent has no evidence, such as business cards or letterhead, that would support a claim to have been commonly known by the Disputed Domain Name.
Lastly, any use of the Disputed Domain Name cannot be described as noncommercial and there is the possibility that there is intent for commercial gain to misleading divert consumers. Apart from the limited evidence of the website use and the correspondence referred to above, there appears to be no use of the Disputed Domain Name to suggest, one way or other, that this is a legitimate noncommercial or fair use of the Disputed Domain Name. As such, the Panel concludes, on balance, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
C. Registered or Subsequently Used in Bad Faith
The following non-exclusive list of circumstances if found by the Panel to be present, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that Respondent has registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring the Disputed Domain Name registration to another person for valuable consideration in excess of its 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 a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with Complainant’s name or mark as to the source, sponsorship, affiliation or endorsement of that website or location or of a product or service on that website or location.
The Panel finds to be equivocal the evidence relating to whether or not Respondent had acquired the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring the Disputed Domain Name registration to another person for valuable consideration in excess of his documented out-of-pocket costs directly related to the Disputed Domain Name. Certainly an offer of AUD 4,000 was rejected but, as is pointed out in the Response, T. Ceravolo did not approach Complainant to sell the Disputed Domain Name and after receiving no reply to his email of March 29, 2010, did not follow Complainant up. This seems to confirm that Respondent did not wish, or attempt, to sell the Disputed Domain Name, at least, not for the amount offered.
There is no evidence that Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor. Complainant and Respondent are in different fields.
However, the Panel finds, on balance, that Respondent 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. The Panel notes the likelihood that Mr. Ceravolo was familiar with Complainant’s trademark from his time working in the United Kingdom. In this regard, as an investment banker with involvement in media and online companies, it is likely that Mr. Ceravolo would have been aware of the activities of a listed company such as Complainant. It is also likely that he would have been conscious of the likelihood that such a successful business might want to reflect its trademark in a corresponding Australian domain name in due course. We refer also to the delay in seeking entry of the Disputed Domain Name in the name of Respondent and in applying for Australian trademark protection following the much earlier registration of Antony Ceravolo as registrant contact, the use of ASOS on the Ceravolo website only after notice of a dispute with Complainant and the lack of evidence of any actual product bearing the trademark.
On balance, and for the same reasons, the Panel finds that by using the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 Respondent’s website or location. It does not matter that they are in different fields. Respondent cannot point to any evidence of actual sales of ASOS branded olive oil or plans aside from the reference on its website after almost two years. This is suspicious. The Panel also finds the explanations for adoption of the name to be somewhat unconvincing.
The Panel is satisfied, on balance, that the Disputed Domain Name was registered and subsequently used in bad faith under paragraph 4(b)(ii) and (iv) 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 <asos.com.au> be transferred to Complainant.
Mary Padbury
Presiding Panelist
Andrew F. Christie
Panelist
Sam Ricketson
Panelist
Dated: September 19, 2012
1 For example it would appear that the relied-upon trademark of the Respondent was registered well after the acquisition of the Disputed Domain Name