WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ASOS plc v. Wang Zixuan

Case No. D2017-0813

1. The Parties

The Complainant is ASOS plc of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom.

The Respondent is Wang Zixuan of Jiangxi, China.

2. The Domain Name and Registrar

The disputed domain name <asos.mobi> (the “Disputed Domain Name”) is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2017. On April 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 26, 2017, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on April 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2017.

The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on June 1, 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

The Complainant is the parent company of the ASOS group (collectively “ASOS”) of online fashion retail companies. The Complainant runs an online shop for fashion with five language-specific websites and its mobile platforms at “www.asos.com”, shipping more than 240 countries and territories and selling over 85,000 branded and own labeled products, with 60,000 pieces of content uploaded every month.

The Complainant is owner of very extensive rights in the mark ASOS including, but not limited to, trade mark applications and registrations all over the world, including Australian Trademark Registration Nos. 1366279 (registered March 20, 2014) and 1456491 (registered August 10, 2010).

Additionally the Complainant has built up a vast amount of goodwill in the mark ASOS in the United Kingdom and various other countries with regard to a wide range of goods and services.

At the time of its incorporation in 1998 the business was called “As Seen On Screen”. The domain name <asseenonscreen.com> was registered in 1999 and the website platform “www.asseenonscreen.com” was online since March 2000. After the business began to be referred to internally as “ASOS”, which is as an acronym of As Seen On Screen the Complainant renamed its business “ASOS”. In October 2000 the domain name <asos.com> was purchased from a third party and from 2002 the name “ASOS” began to be used on stationery and on the website.

The Complainant owns approximately 300 domain names including the term “ASOS” under various country code Top-Level Domains (“ccTLDs”) as well as under various generic Top-Level Domains (“gTLDs”) comprising suffixes such as “.cloud”, “.download” or “.online”.

The Respondent registered the Disputed Domain Name “asos.mobi” on February 28, 2015. The Disputed Domain Name resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that:

a) The Disputed Domain Name is identical or confusingly similar to a trademark service mark in which the Complainant has rights

i. The suffix “.mobi”, as an integral and technical part of the Disputed Domain Name, may be disregarded in the assessment of confusing similarity under the conventions of the UDRP (Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273). This is due to the fact that the suffix does not lend itself to the overall similarity of the Disputed Domain Name when assessing it in relation to the Complainant’s rights.

ii. Accordingly, the assessment is to be carried out between “asos” and ASOS. Hence, the Disputed Domain Name is clearly identical with the Complainant’s rights pursuant to Paragraph 3(b)(ix)(1) of the Rules.

iii. In the event that the suffix “.mobi” in not disregarded in its entirety, the addition of a generic term such as “.mobi” to ASOS does very little to alter the assessment in accordance with paragraph 3(b)(ix)(1) of the Rules. The Disputed Domain Name is still identical and/or confusingly similar to the rights of the Complainant.

b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name

i. Given the reputation of the ASOS brand and the Complainant’s operations in a wide range of goods and services since as early as 2002, there is no believable or realistic reason for registration or use of the Disputed Domain Name other than to take advantage of the Complainant’s rights.

ii. The Respondent is offering the Disputed Domain Name for sale via Afternic.com for USD 9,999.00. The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Furthermore, the Disputed Domain Name is simply inactive and states “Error - the requested URL could not be retrieved”. The current servers for the Disputed Domain Name are dedicated parking servers, namely “NS1.SEDOPARKING.COM” and “NS2.SEDOPARKING.COM”. In addition the Complainant’s previous correspondence with the Respondent and associated parties demonstrates that the Disputed Domain Name has been parked for some time, and the Respondent clearly has no rights or legitimate interests in using the Disputed Domain Name.

iii. The Respondent has not (either as an individual or business), to the best of the Complainant’s knowledge, been known by the Disputed Domain Name.

iv. In Cruzeiro LicenciamentosLtda. v. David Sallen, Sallen Enterprises and J.D.Sallen Enterprises, WIPO Case No. D2000-0715, such conduct was held as a factor in determining that the Respondent had no rights or legitimate interests, specifically:

“(the) mere passive holding of a domain name can qualify as bad faith….”

v. Given the Respondent’s conduct it is also not making any genuine legitimate noncommercial or fair use of the Disputed Domain Name and is, in fact, making unfair use of the Disputed Domain Name with the sole intention of gaining financially.

vi. Prior to filing this Complaint, an approach was made to the Respondent to make it aware of their infringing behavior. In response, the Respondent demanded USD 5,000.00 for the transfer of the Disputed Domain Name. Furthermore, the Respondent subsequently altered the offer to USD 3,999.00 in an effort to arrange a quick sale. The fact that these sums are out of all reasonable proportions to cover the costs incurred by the Respondent in registering the Disputed Domain Name shows that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

c) The Disputed Domain Name was registered and is being used in bad faith.

i. The Disputed Domain Name is currently inactive and noncommercial use has been made of the Disputed Domain Name by the Respondent. A bad faith registration is thus shown by the Respondent’s failure to make good faith use of the Disputed Domain Name. There is nothing within the Respondent’s particulars to indicate any entitlement or interest in the legitimate use of the Disputed Domain Name.

ii. The Respondent registered the Disputed Domain Name with the primarily purpose of selling it to the Complainant who is the owner of the trademark for valuable consideration in excess of the Respondent’s documented out-of-pocket costs. This conduct is shown by the Respondent’s listing of the Disputed Domain Name on the aftermarket for USD 9,999.00 together with two replies to the Complainant demanding an initial USD 5,000.00 for the transfer of the Disputed Domain Name, before reducing the amount to USD 3,999.00.

iii. The Respondent also has a clear history of registering domain names, which have value to the rights holder of a particular brand. The variety of domain names registered by the Respondent shows that the Respondent has an obvious policy of trading on the value of marks for which it has registered domain names in bad faith.

iv. In accordance with paragraph 4(b)(i) of the Policy the Respondent’s intention behind its policy of trading on the value of marks is to sell the registered domain names, here the Disputed Domain Name, to the right holders.

v. The fact, that it appears to be the Respondent’s policy to register domain names which have value to the genuine rights holders shows that the Respondent has registered the Disputed Domain Name in order to prevent the Complainant, the owner of the trademark and service, from the reflecting the mark in a corresponding domain name, see paragraph 4(b)(ii) of the Policy.

vi. According to paragraph 4(b)(iii) of the Policy the Respondent has registered the Disputed Domain Name for the purpose of disrupting the business of a competitor, as the Disputed Domain Name is not in use and is currently inactive.

vii. The fact that the Respondent lacks any rights or legitimate interests in ASOS also indicates that the Disputed Domain Name was registered in bad faith, Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

viii. The suffix “.mobi” adds nothing from a brand perspective, rather it is a descriptive term that an Internet user would consider to mean “mobile”. Since the Complainant has a clear association with the term and members of the public seeing the Disputed Domain Name <asos.mobi> would immediately and undoubtedly consider that this was reference to the Complainant.

B. Respondent

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

6. Discussion and Findings

Pursuant to Paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

To comply with these requirements, the Complainant must establish that it has rights to a trademark, and that the Disputed Domain Name is identical or confusingly similar to this mark, see paragraph 4(a)(i) of the Policy.

The Complainant has sufficiently shown that it has trademark registrations consisting of or incorporating “ASOS”, the Panel notes that the Complainant is in the business of online fashion retailing, and that it is the registrant of various domain names including <asos.com> prior to the registration of the Disputed Domain Name.

The Complainant’s Trademark is incorporated in the Disputed Domain Name, but with addition of the gTLD “.mobi”. The Panel finds that the gTLD “.mobi” is not to be taken into account in assessing identity or confusing similarity of the Disputed Domain Name and the Complainants mark ASOS (see Playboy Enterprises International v. Tom Baert, WIPO Case No. D2007-0968 and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 stating that an added suffix such as “.mobi”, which is an integral and technical part of the domain name, may be disregarded in the determination of confusing similarity).

Therefore, the Panel will not consider the suffix “.mobi” in assessing whether <asos.mobi> is identical or confusingly similar to the Complainant’s mark ASOS. The Panel finds that after eliminating this suffix, the Disputed Domain Name is identical to the Complainant’s mark ASOS.

Given the foregoing, the Panel finds that the Complainant has established the first element of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Although a complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance often requires the impossible task of proving a negative because such information is frequently within the sole possession of a respondent, see Altria Group, Inc. v. Steven Company, WIPO Case No. D2010-1762.

Accordingly, the Complainant needs first to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. “Upon such a showing, the burden [of production] shifts to Respondent to demonstrate its rights or legitimate interests in the Disputed Domain Names”, see Valero Energy Corporation and Valero Marketing and Supply Company v. Kim A Waugh, Kim Consult, WIPO Case No. D2014-1819.

The Panel finds that the Complainant has made a sufficient prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name. As the Respondent did not respond to the Complainant’s contentions, the Complainant’s contentions are deemed undisputed, and the Complainant’s burden of proof under paragraph 4(a)(ii) of the Policy is thereby satisfied.

Therefore, the Panel concludes that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name <asos.mobi>.

This finding is based on the following, non-disputed, circumstances:

- The Complainant has no relationship or affiliation with Respondent and has never authorized the Respondent to use the trademarks in the Disputed Domain Name or any other domain name.

- There is no indication in the file that the Respondent is known under the Disputed Domain Name.

- The Respondent is not using the Disputed Domain Name, against which this Complaint is filed, in connection with a bona fide offering of goods or services. Rather the Disputed Domain Name is simply inactive and states “Error - the requested URL could not be retrieved”. The current name server(s) for this domain are dedicated parking servers, namely “NS1.SEDOPARKING.COM” and “NS2.SEDOPARKING.COM”. Furthermore, the Respondent is offering the Disputed Domain Name for sale via Afternic.com for USD 9,999.00. After initially demanding USD 5,000.00 from the Complainant for the transfer of the Disputed Domain, the Respondent subsequently altered the offer to 3,999.00 in order to arrange a quick sale.

- The Respondent is also not making any genuine legitimate noncommercial or fair use of the Disputed Domain Name.

The Respondent did not reply to the Complainant’s contentions in order to demonstrate any rights or legitimate interests in the Disputed Domain Name. Therefore the only plausible reason, in the view of the Panel, for Respondent to register the Disputed Domain Name was to take advantage of the Complainant’s right to ASOS and gain financial profit. At that point it is to be considered that in the Respondent’s attempt to sell the Disputed Domain Name to the Complainant the demanded sums are out of all reasonable proportions to cover the costs incurred by the Respondent in registering the Disputed Domain Name.

For the foregoing reasons, the Panel cannot find evidence that the Respondent could have rights or legitimate interests in the Disputed Domain Name and finds the third element of paragraph 4(a)(ii) of the Policy has been established.

C. Registered and Used in Bad Faith

The Complainant is required to prove that the Disputed Domain Name was registered and is being used in bad faith.

Paragraph 4(b)(iii) of the Policy provides four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.

The Complainant in this case relies principally on paragraph 4(b)(i)-(iii) above and also cites Telstra Corporation Limited v. Nuclear Marshmallows, supra on the “passive holding” doctrine, where bad faith may be found when a domain name is not used for an active website but where there appears to be no plausible, legitimate, non-infringing potential use of the domain name.

As for paragraph 4(b)(i) there is sufficient evidence that the Respondent registered the Disputed Domain Name primarily for the purpose of selling it to the Complainant who is the owner of the trademark. It is undisputed that the Respondent attempted to sell the Disputed Domain Name at first on the aftermarket for USD 9,999.00 and then after demanding an initial USD 5,000.00 from the Complainant for the transfer of the Disputed Domain Name, before reducing the price to USD 3,999.00, where all of the demanded purchase prices exceeded the out-of-pocket costs of the Respondent for registering the Disputed Domain Name. This intent of the Respondent is in particular shown through the history of registering domain names, which have value to the rights holder of particular brands.

With regard to paragraph 4(b)(ii) preventing the owner of the trademark from reflecting the mark in a corresponding domain name is a natural consequence of registering a domain name which has value to the actual rights holder. The variety of registered domain names of the Respondent for various brands and trademark shows that he is engaged in a pattern of such conduct.

The Panel therefore concludes that Paragraph 4(a)(iii) is fulfilled and that the Respondent has registered and used the Disputed Domain Name in bad faith.

7. Decision

For the foregoing reasons, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and that the Respondent registered and is using the Disputed Domain Name in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <asos.mobi> be transferred to the Complainant.

Maxim H. Waldbaum
Sole Panelist
Date: June 15, 2017