Nominet UK Dispute Resolution Service

DRS Number 03940

Decision of Independent Expert

1.	Parties

Complainant:		YesAsia.com (Hong Kong) Ltd.
Country:		HK

Respondent:		TheOne Multimedia
Country:		GB

2.	Domain Name

<yesasia.co.uk> (the “Domain Name”)

3.	Procedural Background

The complaint of the Complainant was entered in the Nominet system on 21 August 2006.  Nominet validated the complaint on 22 August 2006 and dispatched a copy of the complaint to the Respondent.  No response was received from Respondent by the due date of 14 September 2006.  On 15 September 2006 Nominet wrote to both parties indicating that no response had been received.  The Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy (the “Policy”), and on 27 September 2006 Nominet invited Christopher Gibson to act as Expert in the case.  

The undersigned (the “Expert”) has confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and has further confirmed that I know of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality.  The undersigned was appointed as Expert in this case on 4 October 2006.

4.	Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a Response to Nominet in compliance with paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (the “Procedure”).  Paragraph 15b of the Procedure provides, inter alia, that “[i]f, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or the Procedure, the Expert will proceed to a Decision on the complaint.”

There is no evidence before the Expert to indicate the presence of exceptional circumstances.  Nominet has attempted to communicate the complaint to the Respondent by email and post.  The efforts made by Nominet are in accordance with the Procedure and accordingly, the Expert will now proceed to a Decision on the Complaint notwithstanding the absence of a Response.

Paragraph 15c of the Procedure provides that “i]f, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure . . ., the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate.”  I am not aware of any exceptional circumstances in this case and so will draw inferences as appropriate.

5.	The Facts

The Complainant, YesAsia.com (Hong Kong) Ltd., is an e-commerce website with its primary site located at <www.yesasia.com>.  The Complainant holds registered trade marks for YESASIA.COM (with logo) in the United States and Hong Kong.

From the WHOIS records, the Domain Name <yesasia.co.uk> was registered for The One Multimedia on 23 May 2000.  The Complainant submitted documentary evidence to show that, at the time of the Complaint, the URL www.yesasia.co.uk resolved to a web page which presents the name of EasySpace Ltd., a web hosting and domain name registration service, along with an error message (the Expert visited this web site to confirm this point).  The WHOIS record indicates that EasySpace served as the registrant’s agent for purposes of registering the Domain Name.

6.	The Parties’ Contentions

Complainant

The substance of the Complainant’s contentions are stated in its Complaint:  The Complainant has rights in respect of a name which is identical to the Domain Name, and the Domain Name in the hands of the Respondent is an Abusive Registration because: 

(i)	YESASIA is a highly distinctive, fanciful term conceived by the Complainant to designate the Complainant’s offering of Asian entertainment products to customers throughout the world;

(ii)	the Complainant has “rights” in the YESASIA name because it has developed substantial goodwill and reputation in the YESASIA name in various countries throughout the world, including the United Kingdom.  Launched in March 2000, the Complainant is a popular e-commerce website offering Asian-related entertainment products and gifts.  Complainant alleges that YesAsia is the most popular Internet source for Asian entertainment products to customers located in Europe and North America, with over 2.5 million visitors to the web site each month.  The United Kingdom is one of the Complainant’s most significant national markets.  The Complainant has invested in print and Internet-based advertising directed at the United Kingdom since 2003.  The Complainant has fulfilled nearly 80,000 orders for United Kingdom residents in 2005 and 2006 to-date.  Web site traffic statistics indicate the <www.yesasia.com> was visited by over 1.6 million United Kingdom residents during 2005.  As noted above, the Complainant holds registered trade marks for YESASIA (and logo) in the United States and Hong Kong;

(iii)	the Respondent registered the Domain Name within a few weeks of the Complainant’s launch of the YesAsia website and publication of its United States registration of the YESASIA trade mark.  Complainant alleges that it is unlikely the Respondent, immediately following these events, would have conceived of the YESASIA term on its own;

(iv)	the Complainant is aware of no evidence that the Respondent has ever released any products or services, or had any legitimate rights in the YESASIA name.  The web site associated with the Domain Name has never displayed any substantive content;

(v)	the Complainant believes that existing and potential customers in the United Kingdom have been and continue to be misled by the fact that the Domain Name does not display the Complainant’s e-commerce web site (although the Complainant does not offer evidence in support of this point);

(vi)	the Complainant alleges that the Domain Name was registered primarily (i) for the purpose of selling, renting or otherwise transferring it to the Complainant or a competitor at a price greater than its costs, or (ii) to unfairly disrupt the business of the Complainant.  The Complainant indicates that it sent air mail letters to the Respondent, offering to purchase the Domain Name for $500, but no response to these letters was received (although the Respondent apparently renewed the Domain Name on 17 May 2006); and

(vii)	the Complainant asserts that, having shown that the Respondent has adopted an inherently distinctive domain name which is primarily referable to the Complainant, the burden of proof has shifted to the Respondent to show that its registration of the Domain Name is not abusive.

Respondent

The Respondent has not responded, and therefore has raised no challenge to any of the facts and statements submitted by the Complainant.

7.	Discussion and Findings:

General

In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present:

i. the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii. the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant’s Rights

The Complainant has established that it has rights in its distinctive name, “YesAsia.com” or “YesAsia”.  These rights arise from widespread use of the name in commerce in the United Kingdom (and elsewhere) for up to six years.  The number of visitors to the Complainant’s web site, including visitors and orders fulfilled from the United Kingdom, confirm the establishment of these rights.  The trade mark registrations in the United States and Hong Kong confirm the Complainant’s rights in other jurisdictions.  Under the DRS Policy definition, the term Rights “includes, but is not limited to, rights enforceable under English law.”  In addition, with the exception of the extension “.com”, the substantive part of the Domain Name contains letters identical to the Complainant’s name.  In these circumstances, and without any challenge by the Respondent, the Complainant’s submissions are sufficient to establish a basic claim to rights in its name.  See Nextag, Inc. v. Zurna Networks (DRS 03509).  The Domain Name is therefore similar or identical to a name in which the Complainant has Rights.  The Complainant has established the first element of the test in paragraph 2(a) of the DRS Policy.

Abusive Registration
As to whether the Domain Name registration is abusive in the hands of the Respondent, paragraph 1 of the DRS Policy defines “Abusive Registration” as:-
“a Domain Name which either:
i.	was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; or
ii. 	has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.”
The DRS Policy, in paragraph 3(a), includes a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration.  Those most relevant to the Complainant’s contentions are included below:

“i.	Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A.	for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

*     *     *     *

C.	for the purpose of unfairly disrupting the business of the Complainant;”

This dispute relates to the name, YESASIA, which the Expert agrees is a distinctive and fanciful term in which the Complainant has established goodwill through its use on the Internet and in relation to users in the United Kingdom and elsewhere.  The Complainant claims that (i) it is very unlikely that the Respondent would have conceived of this unique name on its own and registered it as a domain name very shortly after the launch of the Complainant’s business, and (ii) there appears to be no valid reason in support of the Respondent’s registration.  In this respect, the Expert has seen no evidence to indicate that the Respondent would have any rights in, or legitimate connection with, the Domain Name to justify its registration in May 2000 (shortly after the Complainant publicly launched its YesAsia on-line service) or use since that time.   

On the other hand, the Complainant provides no direct evidence as to Respondent’s motive for registering the Domain Name or of any actual disruption to its business.  While the Complainant has sought to contact the Respondent, there has simply been no reply.  In this case also, the Respondent has elected not to come forward with any explanation for its registration of the Domain Name.  However, “the consequence of not doing so is that I am not inclined to accept the suggestion that the registration was legitimate because firstly there is no substance or explanation behind that assertion, and secondly because the assertion is not backed up by a declaration that the information is true (as contained in a formal response – see paragraph 5(iv) of the procedure).”  Netezza v. Airpaid Ltd., at p.6 (DRS 02475).

The Expert is of the view that the Complainant’s trading under such a distinctive name, when combined with (i) the very low probability of the Respondent having coincidentally conceived of and chosen the identical Domain Name at a time in close proximity the Complainant’s public business launch, (ii) the lack of the Domain Name’s use for any valid purpose since that time, and (iii) the lack of any obvious justification for the Respondent having adopted the name for the Domain Name, is sufficient to establish a prima facie case that, on the balance of the probabilities, the registration of the Domain Name is abusive.  See Netezza v. Airpaid Ltd. (DRS 02475); Harry Corry Ltd. Robert Morrison (DRS 03028); Chivas Brothers Ltd. V. David William Plenderleith (DRS 00658).  Under these circumstances, the Expert agrees with the Complainant that the burden of proof has shifted to the Respondent to show that its registration of the Domain Name is not abusive.  In the absence of any answer to that case, the Complainant prevails.

8.	Decision

The Expert finds that the Complainant has Rights in respect of a name or mark which is similar or identical to the Domain Name and that the disputed Domain Name, in the hands of the Respondent, is an Abusive Registration.  The Expert therefore directs that the disputed Domain Name <yesasia.co.uk> be transferred to the Complainant. 

Christopher Gibson

16 October 2006