ASOS plc et al. v. WhoisGuard, Inc.
Claim Number: FA1804001781372
First Complainant: ASOS plc of London, United Kingdom.
Complainant Representative: Richard Ferguson of Stobbs IP Limited of Cambridge, United Kingdom.
Second Complainant: ASOS.com Ltd of London, United Kingdom.
Complainant Representative: Richard Ferguson of Stobbs IP Limited of Cambridge, United Kingdom.
Respondent: WhoisGuard, Inc. of Panama, International, PA.
Respondent Representative: /
REGISTRIES and REGISTRARS
Registries: DotStore Inc.
Registrars: NameCheap, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Bart Van Besien, as Examiner.
Complainant submitted: April 12, 2018
Commencement: April 12, 2018
Default Date: April 27, 2018
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The First Complainant, ASOS plc, claims to be the parent company of the ASOS group of companies, which includes the Second Complainant, ASOS.com Ltd. The First Complainant, ASOS plc, claims to be the intellectual property holding company for the “ASOS” brand.
The Second Complainant, ASOS.com Ltd, claims to be the trading entity of the ASOS group of companies.
The First Complainant and the Second Complainant are hereafter jointly referred to as the Complainant(s).
Findings of fact:
The Complainants submitted evidence of two trademarks “ASOS”, owned by the Second Complainant. The Complainants also provided an overview of many more “ASOS” trademarks, registered in name of the Second Complainant, and valid in various countries all over the globe.
More in particular, Complainants submitted evidence of an EU word trademark “ASOS” registered on 15 September 2017 (registration number 016053101), owned by the Second Complainant and valid for classes 3, 4, 5, 8, 9, 14, 16, 18, 20, 21, 24, 25, 26, 28, and 35. Complainants also submitted evidence of another EU word trademark “ASOS” registered on 11 September 2016 (registration number 013593132), owned by the Second Complainant and valid for classes 36, 38, 39, 41, 42, and 45.
Complainant has submitted evidence of use of its “ASOS” marks.
Complainant claims the following:
“The Complainant owns a significant reputation and a vast amount of goodwill in the ASOS name globally when used for online retail. ASOS originated in 1999 as “AsSeenOnScreen”, with asos.com registered in 2000. From 2002, the name ASOS began to be used on the Complainant's website and in July 2003 the “store front” of the AsSeenOnScreen online retail business moved to www.asos.com. ASOS is now a leading global online fashion and beauty retailer. ASOS sells over 80,000 branded and own label products, with approximately 5,000 new lines added each week. In August 2017, ASOS’ sales exceeded £1.8 billion.”
These claims are not refuted by the Respondent.
Even though the Respondent has defaulted, URS Procedure 1.2.6 requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name is identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Determined: Finding for the Complainant
URS 1.2.6.1 (i) covers the domain name at issue in this case. The domain name consists of Complainant’s registered word mark (taken in its entirety), paired with the generic word “store” and with the generic top level domain “.store”.
Given the fact that the Complainant operates in essence an online store, and that its EU word trademark “ASOS” 016053101 is valid for various subclasses in class 35 related to retail services as well as for various other classes of goods that are sold in its stores, the Examiner finds that the addition of the word “store” and of the extension “.store” in the disputed domain name do not neutralize the confusing similarity between the word trademark owned by the Complainant and the disputed domain name, and in fact increase the confusing similarity between both.
The Complainant submitted sufficient evidence of its earlier “ASOS” word marks and submitted sufficient evidence of actual use of this mark.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for the Complainant
The Complainant claims that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant claims that it has not authorized the Respondent to register the domain. The domain directs to www.asosstore.store, which features the “asos” logo and purports to retail clothing items via an online shopping cart system. The Complainant claims that the Respondent is not known by the domain name, is not using the domain name in relation to a bona fide offering of goods or services and is not making legitimate or fair use of the domain.
The Examiner notes that the Respondent did not refute the Complainant’s claim. The Respondent did not provide evidence of legitimate rights or interests in the disputed domain name. There is no evidence of any rights or legitimate interests of the Respondent in the disputed domain name. There is no evidence of any similar or identical trademarks owned by the Respondent. There is no indication of any authorization to use the Complainant’s trademark. There is no indication that the Respondent is otherwise related to the Complainant’s business. There is no evidence of the Respondent being commonly known as “ASOS” prior to the registration of the disputed domain name. For all of the above reasons, the Examiner determines that the Respondent does not have legitimate rights or interests to the domain name.
[URS 1.2.6.3] The domain name was registered and is being used in bad faith.
Determined: Finding for the Complainant.
The Complainant argues that it owns a significant reputation and a vast amount of goodwill in the “ASOS” name globally when used for online retail.
The Complainant further refers to its Trade Mark Clearinghouse entry 0000002058315105672249731 (“ASOS”).
The Complainant argues that, because of the extent and the nature of the Complainant’s reputation in the “ASOS” mark and the nature of the Respondent’s use, it is apparent that the domain was registered for the purpose of selling it to the Complainant for valuable consideration (1.2.6.3. a).
The Complainant further argues that the Respondent has registered the domain name in order to prevent the Complainant from reflecting the “ASOS” mark in a corresponding domain name (1.2.6.3. b). The Complainant argues that its activities are synonymous with an online “store”. The Complainant emphasizes that it owns the “asos.store” new Gtld. According to the Complainant, the registration of the disputed domain name denies the Complainant from being able to further utilize its association with a “store”.
The Complainant further argues that the Respondent is aiming to disrupt the business of the Complainant (1.2.6.3. c), through registering a domain name containing the famous ASOS brand and, in using the ASOS logo on the corresponding website. The Complainant is concerned about the content of the site, which it claims to be harmful to its business and misleading for consumers and Internet users.
The Complainant finally argues that, by using the disputed domain name, the Respondent has intentionally attempted to attract traffic to its own site www.asosstore.store. (1.2.6.3 d). According to the Complainant, an Internet user would expect the domain name to take them to an official site of the Complainant.
The Respondent did not refute the Complainant’s claims. In general terms, there are no circumstances known to the Examiner that refute the claim of bad faith registration or bad faith use.
The Examiner finds that, because the “ASOS” mark is apparently on file with the Trademark Clearing House and is apparently registered in many countries throughout the world, the Respondent must have had constructive knowledge of the Complainant’s mark at the time it registered the domain name and at the time of its use. This knowledge indicates Respondent’s bad faith use and registration. The Examiner further finds that the use of the Complainant’s logo “ASOS” on the website available through the domain name, combined with the use of the domain name for selling products that compete with the products offered for sale by the Complainant, is further evidence of the Respondent’s bad faith use and registration of the domain name. The Examiner points to the fact that the Complainant has submitted a screenshot of the website of the Respondent, which proves that the Respondent is indeed selling goods that are competing with the Complainant’s goods (or that are at least covered by the Complainant’s trademark registrations, e. g. sunglasses, bags, etc.).
The Examiner determines that URS 1.2.6.3 (c) and (d) are applicable in this case:
· Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; and
· By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
Bart Van Besien, Examiner
Dated: May 2, 2018
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