WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ASOS plc v. 刘兵 (liu bing)

Case No. D2021-3299

1. The Parties

The Complainant is ASOS plc, United Kingdom, represented by Stobbs IP Ltd, United Kingdom.

The Respondent is 刘兵 (liu bing), China.

2. The Domain Name and Registrar

The disputed domain name <asosuksale.com> is registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2021. On October 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 13, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on October 15, 2021.

On October 13, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On October 14, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the 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 October 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2021.

The Center appointed Sok Ling MOI as the sole panelist in this matter on November 26, 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 Complainant is the parent company of the ASOS group of online fashion retail companies (collectively “ASOS”) which operates “www.asos.com” (since 2003) together with eight country specific websites including “www.asos.co.uk”. The Complainant owns (via its subsidiary, ASOS.com Ltd) over 300 “ASOS” domain names.

The Complainant, founded in 1999, currently boasts over 20 million active customers, offers over 85,000 products and ships to more than 239 countries. For the financial year 2020, the Complainant’s total retail sales amounted to over GBP 3,000 million and “www.asos.com” received 2.7 billion visits.

The Complainant is the proprietor of numerous trade mark registrations worldwide for ASOS, including the following:

The disputed domain name was registered on July 5, 2021. According to the evidence submitted by the Complainant, the disputed domain name resolved to a website which reproduced the Complainant’s ASOS trade mark and copyrighted images, and purports to offer for sale the Complainant’s clothing and accessory products. As at the date of this decision, the disputed domain name did not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to its ASOS trade mark.

The Complainant contends that as the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark, the Respondent’s use of the disputed domain name to publish a website purportedly offering for sale identical goods to those offered by the Complainant was for the sole purpose of commercial gain and to misleadingly divert consumers and/or to tarnish the ASOS trade mark. The Complainant claims that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Complainant contends that although the word ASOS arose from the acronym of the original name of the Complainant’s business, “As Seen On Screen”, linguistically, the word has no independent meaning and is therefore distinctive. The Complainant contends that the disputed domain name is used to create confusion and mislead Internet users into believing that the Respondent’s website is authorized by the Complainant. The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith.

For all of the above reasons, the Complainant requests for the transfer of the disputed domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.

The language of the Registration Agreements for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.

Although the Respondent appears to be a Chinese individual by the name of “刘兵 (liu bing)”, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain name is registered in Latin characters, rather than Chinese script;

(b) the disputed domain name comprises the English word “sale”; and

(c) according to the evidence submitted by the Complainant, the contents of the website to which the disputed domain name resolved are entirely in English.

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but chose not to do so; and

(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to all Parties and is not prejudicial to any of the Parties in their ability to articulate the arguments for this case. The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.

In view of all the above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.

6.2 Substantive Findings

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the domain name to be cancelled or transferred:

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in ASOS by virtue of its use and registration of the same as a trade mark.

The disputed domain name effectively incorporates the Complainant’s ASOS trade mark. The addition of terms “uk” and “sale” inserted after the trade mark does not prevent a finding of confusingly similarity between the disputed domain name and the Complainant’s trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” is generally disregarded for the purpose of the similarity assessment.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s ASOS trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

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

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.)

The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the ASOS trade mark or to seek registration of any domain name incorporating the trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “asos”.

According to the evidence submitted by the Complainant, the Respondent is using the disputed domain name to publish a website, which reproduces the Complainant’s ASOS trade mark and copyrighted images, and purports to offer for sale the Complainant’s clothing and accessory products. This suggests that the Respondent is using the disputed domain name to mislead Internet users by creating an affiliation with the Complainant where there is none.

The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied the requirements of the second element under 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 domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark 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 domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

The Complainant has used ASOS as a trade mark since at least 2003, and enjoys a strong online reputation for its clothing and accessory products. There is no doubt that the Respondent was aware of the Complainant’s trade mark when it registered the disputed domain name given that it has reproduced the Complainant’s ASOS trade mark and copyrighted images, and purports to offer for sale the Complainant’s clothing and accessory products on its website. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith.

In registering and using the disputed domain name that incorporates the Complainant’s trade mark and including terms “uk” and “sale”, the Respondent is seeking to create an impression that its website is the Complainant’s official website targeted at consumers in the United Kingdom. Irrespective of whether the goods offered on the Respondent’s website are in fact counterfeit, the reproduction of the Complainant’s trade mark and copyrighted images on the Respondent’s website without also displaying a clear disclaimer of a lack of relationship between the Respondent and the Complainant, is indicative of bad faith.

The Panel is satisfied that the Respondent’s purpose of registering the disputed domain name was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s branded products to its own website for financial gain. The Panel therefore determines that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

The Respondent has not denied the Complainant’s allegations of bad faith. Taking into account all the circumstances, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of 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 name <asosuksale.com> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: December 17, 2021