WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ASOS Plc, ASOS Holdings Limited, ASOS.com Limited v. 李东山 (li dongshan)

Case No. D2021-2517

1. The Parties

The Complainants are ASOS Plc, ASOS Holdings Limited, ASOS.com Limited, United Kingdom, represented by Stobbs IP Limited, United Kingdom.

The Respondent is 李东山 (li dongshan), China.

2. The Domain Names and Registrar

The disputed domain names <missselfridgesale.com>, <missselfridgesales.com>, <missselfridgeuksale.com>, <missselfridgeuksales.com> and <missselfridgeukshop.com> are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2021. On August 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 5, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on August 9, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint in English on August 10, 2021.

On August 9, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the administrative proceeding. On August 9, 2021, the Complainants confirmed their request that English be the language of the administrative proceeding. The Respondent did not comment on the language of the administrative proceeding.

The Center verified that the Complaint together with the amended 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 August 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2021.

The Center appointed Rachel Tan as the sole panelist in this matter on September 27, 2021. 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 first Complainant, ASOS Plc, is an international online fashion retailer providing customers with products from in-house and third-party brands. It acquired the brands Miss Selfridge, Topshop, Topman, and HIIT on February 1, 2021. It has been trading on the Alternative Investment Market of the London Stock Exchange since October 3, 2001.

The second Complainant, ASOS Holdings Limited owns a range of trade mark registrations incorporating the MISS SELFRIDGE mark in different jurisdictions, including the United Kingdom Registration No. 2002266 for MISS SELFRIDGE registered on February 23, 1996 in classes 3, 14, 18, 25 and 36; United Kingdom Registration No. 945589 for registered on July 15, 1969 in classes 3 and 25; European Union Registration No. 1598960 for MISS SELFRIDGE registered on January 22, 2002 in classes 3, 14, 18, 25 and 35 and; International Registration No. 864102 for MISS SELFRIDGE registered on June 22, 2005 in class 25.

The third Complainant, ASOS.com Limited is the owner of several domain names incorporating the MISS SELFRIDGE mark, such as <missselfridge.com>.

The Respondent is 李东山 (li dongshan), China.

The disputed domain names were registered on June 7, 2021. Each of the disputed domain names resolves to a website in English displaying the second Complainant’s and MISS SELFRIDGE trade marks. These websites offered for sale the same type of goods as the Complainants, including clothing, shoes, and accessories.

5. Parties’ Contentions

A. Complainant

The Complainants contend that the disputed domain names are confusingly similar to the MISS SELFRIDGE mark as they incorporate the mark in its entirety. As the Top-Level Domain (“TLD”) “.com” is merely a technical requirement used for domain name registrations, it can be omitted when making an assessment as to the disputed domain names.

The Complainants further allege that the Respondent does not have any rights or legitimate interests in the disputed domain names. There is no believable or realistic reason for registration or use of the disputed domain names other than to take advantage of the Complainants’ rights. The disputed domain names resolve to live sites and are still being used by the Respondent. The Respondent has used the disputed domain names in addition to the use of MISS SELFRIDGE trade marks and product images for the purpose of imitating the Complainants’ genuine website. There is nothing to suggest the Respondent is making a legitimate noncommercial or fair use of the disputed domain names. Further, the Respondent has never been commonly known as “Miss Selfridge” at any point in time.

The Complainants finally assert that the disputed domain names have been registered and used in bad faith. The Respondent registered the disputed domain names when the distinctive character and reputation of the second Complainants’ MISS SELFRIDGE mark was already well established. The disputed domain names operate websites which replicate the previous designs of the official domain name, prior to the acquisition of the Miss Selfridge brand by the first Complainant. The resolved websites use the MISS SELFRIDGE marks. The intention of the Respondent is to attract users for commercial gain, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website, constituting bad faith.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.

In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement as used by the registrant for the disputed domain names is Chinese. However, the Complainants have requested that English be adopted as the language of the proceeding for the reasons summarized below:

(a) the language of the Registration Agreement is not only in Chinese, and it is made available in English by the Registrar;

(b) the disputed domain names themselves include Latin characters as opposed to Chinese characters which supports the fact that the Respondent understands, or at the very least, is competent in the English language and that it would not be put at a disadvantage if the Complaint is to be conducted in English;

(c) the Complainants are unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden the Complainants and delay the proceedings. Such additional delay, considering the abusive nature of the disputed domain names pose continuing risk to the Complainants and unsuspecting consumers seeking the Complainants or their products; and

(d) translating this Complaint into Chinese will lead to undue delay and substantial expenses incurred by the Complainants, who already bear the burden for filing this administrative complaint.

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 order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.

The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below.

(a) the Complainants are companies based in the United Kingdom. Requiring the Complainants to submit documents in Chinese would lead to delay and cause the Complainants to incur translation expenses;

(b) the Respondent’s choice of English words for the disputed domain names, as well as the English content of the webpages under the disputed domain names, indicate some familiarity with the English language;

(c) even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainants’ request for English to be the language of the proceeding, but the Respondent did not protest against this request;

(d) the Respondent has failed to participate in the proceeding even though the Center sent the notification of the Complaint in English and Chinese and has been notified of its default; and

(e) the Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainants have adduced evidence to demonstrate their established rights in the MISS SELFRIDGE mark.

The Panel notes that the MISS SELFRIDGE mark is wholly encompassed within the disputed domain names. The positioning of the MISS SELFRIDGE mark before the words “sale”, “sales”, “uksale”, “uksales” or “ukshop” makes it instantly recognisable as the most distinctive element of the disputed domain names. In cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is accepted by previous UDRP panels that the addition to the complainant’s trade marks of words or terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not affect the finding of confusing similarity of the disputed domain name from the trade mark under the first element of the Policy. Accordingly, the additional words “sale”, “sales”, “uksale”, “uksales” or “ukshop”, which are closely related to the Complainants’ fashion business, does not affect the confusing similarity between the disputed domain names and the second Complainant’s MISS SELFRIDGE mark. See section 1.8 of the WIPO Overview 3.0.

Lastly, it is permissible for the Panel to ignore the TLD, in this case “.com”, under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.

Accordingly, the Complainants have satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

In circumstances where the second Complainant possesses exclusive rights to the MISS SELFRIDGE mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0.

The disputed domain names all resolve to a webpage displaying the second Complainant’s and MISS SELFRIDGE marks and offering for sale the same type of goods as the Complainants. The Respondent has not provided evidence of a legitimate noncommercial or fair use of the disputed domain names or reasons to justify the choice of the term “miss selfridge” in the disputed domain names. Further, there is no indication to show that the Respondent is commonly known by any of the disputed domain names or otherwise has rights or legitimate interests in them. In addition, the Complainants have not granted the Respondent any license or authorization to use the second Complainant’s MISS SELFRIDGE mark or register the disputed domain names. None of the circumstances in paragraph 4(c) of the Policy are present in this case. Moreover, the Panel finds that the disputed domain names carry a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

Accordingly, the Complainants have satisfied the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The second Complainant’s MISS SELFRIDGE mark had been registered well before the registration of the disputed domain names. Through use and advertising, the second Complainant’s MISS SELFRIDGE mark is known throughout the world for fashion wear. Search results using the key words “miss selfridge” on Internet search engines direct Internet users to the Complainants and their products, which indicate that an exclusive connection between the MISS SELFRIDGE mark and the Complainants has been established. As such, the Respondent either knew or should have known of the second Complainant’s MISS SELFRIDGE mark when registering the disputed domain names.

Section 3.1.4 of the WIPO Overview 3.0 states that the “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain names incorporate the second Complainant’s widely-known MISS SELFRIDGE mark plus the descriptive word “sale”, “sales”, “uksale”, “uksales” or “ukshop” that are closely related to the Complainants’ fashion business, thus, creating a presumption of bad faith.

The Panel notes that each of the disputed domain names resolves to a website displaying the second Complainant’s and MISS SELFRIDGE marks, and offering the Complainants’ goods, or the same type of goods as the Complainants’. The Panel is of the view that the Respondent intentionally created a likelihood of confusion with the second Complainant’s MISS SELFRIDGE mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. This demonstrates bad faith registration and use of the disputed domain names, as provided in paragraph 4(b)(iv) of the Policy.

The Respondent has kept silent in the face of the Complainants’ allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainants before registering the disputed domain names and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain names as discussed above, the Panel is led to conclude that the disputed domain names were registered and are being used in bad faith.

Accordingly, the Panel finds that the Complainants have satisfied the third element under 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 names, <missselfridgesale.com>, <missselfridgesales.com>, <missselfridgeuksale.com>, <missselfridgeuksales.com> and <missselfridgeukshop.com> be transferred to the Complainants.

Rachel Tan
Sole Panelist
Date: October 11, 2021