Westmore · UDRP DecisionAsostshirts.com
The Panel ordered transfer of <asostshirts.com> to ASOS plc. It found the domain confusingly similar to the ASOS trademark because it incorporated ASOS in full with the descriptive term “tshirts.” Respondent lacked rights or legitimate interests, and use of the domain for a website offering t-shirts in the same field as Complainant supported bad-faith registration and use under paragraph 4(b)(iv). The record also contained an unverified third-party identity-theft claim, resulting in redaction of Respondent’s name, but the Panel stated that the outcome would be the same regardless of that claim.
The timeline behind asostshirts.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind asostshirts.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates a straightforward trademark-plus-product-term pattern in which the descriptive addition reinforced rather than reduced the connection to the trademark owner’s business. It also shows that potential identity theft may justify redaction and special transfer instructions without preventing a decision on the domain itself when the substantive use independently establishes the UDRP elements.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION ASOS plc. v. Name Redacted Case No. D2017-1520 1. The Parties Complainant is ASOS plc. of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom. Respondent is Name Redacted. 1 2. The Domain Name and Registrar The disputed domain name <asostshirts.com> is registered with Google Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2017. On August 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 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. 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 of the Complaint, and the proceedings commenced on August 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2017. On August 14 and 15, 2017, the Center received emails regarding identity theft from a third party. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 30, 2017. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on September 8, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background Complainant is a company organized under the laws of the United Kingdom which is the parent company of the ASOS group of online fashion retail companies. Complainant has provided evidence that it is the registered owner of the following trademarks relating to the designation “ASOS”: - Word mark ASOS, European Intellectual Property Office (“EUIPO”), Registration No.: 004524997, Registration Date: February 21, 2015, Status: Active; - Word mark ASOS United Kingdom Intellectual Property Office (“UK IPO”), Registration No.: UK00002530115, Registration Date: December 7, 2012, Status: Active. Also, Complainant together with the ASOS group of companies owns various domain names relating to the designation “ASOS”, inter alia, <asos.com> as well as <asos.co.uk> which both redirect to Complainant’s main website at “www.asos.com” promoting Complainant’s business and fashion products. Respondent, according to the WhoIs information for the disputed domain name, is a resident of the United States and has registered the disputed domain name on May 6, 2017. As of the time of the rendering of this decision, the disputed domain name resolves to a website at “www.asostshirts.com” which offers a large variety of t-shirts for online sale. On August 14 and 15, 2017, the Center received emails by a third party under the same name as the registered owner of the disputed domain name, claiming not to have registered the disputed domain name, but rather being the victim to an identity theft. Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that its business was set up in 1999, founded on the idea of starting an Internet enterprise for which customers could source products (such as clothing and accessories) which they had seen worn or used by stars of television or film. The business consequently was called “As Seen on Screen” and eventually internally and later externally referred to under the acronym “ASOS” only. From 2002/2003 on, the name “ASOS” began to be used on the company’s website “www.asos.com”. Complainant claims that nowadays the ASOS group of companies is a leading global online fashion and beauty retailer and the largest online-only fashion retailer in the United Kingdom, shipping to more than 240 countries and territories and selling over 85,000 branded and own label products. Complainant submits that the disputed domain name is confusingly similar to Complainant’s ASOS trademark since the disputed domain name simply comprises of this trademark in full with the addition of the descriptive word “t-shirts” (without hyphen). Moreover, Complainant asserts that Respondent has no rights or legitimate interests with respect to the disputed domain name since (1) given the massive reputation of Complainant’s ASOS trademark at the time of the registration of the disputed domain name, it is not possible for Respondent to claim to have been unaware thereof, (2) Respondent has not (either as an individual or a business) been known by the disputed domain name and (3) the disputed domain name resolves to a website purporting to sell t-shirts, thus Respondent carries out activities in the same field as Complainant’s ASOS business. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) given the prevalence of the ASOS brand, Respondent was well aware of Complainant’s existing rights in the ASOS trademark, thus clearly registered the disputed domain name with the intention of attempting to attract users for commercial gain to Respondent’s own website by creating a likelihood of confusion as to source or affiliation of the content and (2) in view of the distinctive nature of the ASOS trademark and the colossal scope of Complainant’s business, there is no way in which Respondent could use the disputed domain name in question without doing so in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) That the disputed domain name has been registered and is being used in bad faith. Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel may decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response. A. Identical or Confusingly Similar The Panel concludes that the disputed domain name <asostshirts.com> is confusingly similar to the ASOS trademark in which Complainant has rights. The disputed domain name incorporates the ASOS trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g . PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS) , WIPO Case No. D2003-0696 ). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 ), that the addition of a generic or descriptive term or geographic wording to a trademark in a domain name is normally insufficient, in and of itself, to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the generic term “t-shirts” (with the mere omission of the hyphen) which apparently even refers to Complainant’s core business, does not dispel the confusing similarity arising from the incorporation of Complainant’s ASOS trademark in the disputed domain name. Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent has not been authorized to use Complainant’s ASOS trademark, either as domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “ASOS”. Finally, Respondent has not used the disputed domain name for a bona fide offering of products or services nor for a legitimate noncommercial or fair purpose. On the contrary, Respondent redirects the disputed domain name to a website at “www.asostshirts.com” which apparently offers t-shirts for online sale, thus, is active in the same business as Complainant. Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0 section 2.1 ). Given that Respondent has not submitted a formal Response, Respondent has not met that burden. Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. Resolving the disputed domain name, which is confusingly similar to Complainant’s ASOS trademark, to a website active in the same kind of business as Complainant, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s ASOS trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. In connection with this finding, the Panel has also noted the emails by a third party under the same name as the registered owner of the disputed domain name sent to the Center on August 14 and 15, 2017, claiming that said third party did not register the disputed domain name, but rather was a victim to an identity theft. The Panel is not in a position to verify such third party’s contentions, but independent thereof, the outcome of this proceeding would still be the same. If this third party in fact is the registered owner to the disputed domain name, he or she apparently does not claim to have used the disputed domain name in good faith. Has, on the contrary, Respondent in fact undertaken an identity theft when registering the disputed domain name, this would indeed even support the Panel’s finding of a registration and making use of the disputed domain name in bad faith. Therefore, the Panel holds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 <asostshirts.com> be transferred to Complainant. Stephanie G. Hartung Sole Panelist Date: September 13, 2017 1 The Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrars regarding transfer of the disputed domain names, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrars as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted , WIPO Case No. D2009-1788 .
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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