WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt
Case No. D2007-0626
1. The Parties
The Complainant is Fat Face Holdings Ltd, Hampshire, United Kingdom of Great Britain and Northern Ireland, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Belize Domain WHOIS Service Lt, City of Belmopan, Belize.
2. The Domain Name and Registrar
The disputed domain name is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2007, and the hardcopy was received on May 3, 2007.
On April 25, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue.
On May 4, 2007, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 4, 2007.
In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2007.
The Center appointed James Bridgeman as the sole panelist in this matter on June 11, 2007. 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 a limited company incorporated in the United Kingdom on August 2, 1994, and is the owner of the following registered trade marks:
United States Trade Mark registration number: 2203079 FAT FACE design plus words, letters and/or numbers, registered on November 10, 1998 in international class 25 for the provision of the following goods and services: “bathrobes, coats, dresses, skirts, vests, sweaters, cardigans, shirts, sweatshirts, waistcoats, leggings, trousers, track pants, shorts, caps, hats, T-shirts, jackets, fleece tops, fleece bottoms, gloves, socks, boots, shoes, swimwear, and underwear.”
United States Service mark registration number: 3055757 FAT FACE in stylised lettering, registered on January 31, 2006, in International Class 35 in respect of the provision of the following goods and services: “Bringing together, for the benefit of others, of a variety of goods enabling customers to conveniently view and purchase those goods from a retail clothing and fashion accessory store, a sports goods store, by mail order catalogue, or from a general merchandise Internet web site.”
CTM number 001764760 FAT FACE registered on October 16 2001, in respect of goods classes 9, 18, 25 in respect of various goods including clothing and accessories.
CTM number 004152005 FAT FACE registered on January 5, 2006, in classes 14 and 35 in respect of inter alia jewellery and retail services.
The Complainant also owns the ccTLD domain name registered before August 1996, and the gTLD domain name and carries on business via websites established at these addresses.
The domain name in dispute was registered on June 3, 2006.
5. Parties’ Contentions
A. Complainant
The Complainant requests this Administrative Panel to direct that the domain name in dispute be transferred to the Complainant.
The Complainant submits that it has been trading under the name FAT FACE since 1988. The Complainant initially primarily sold clothing, but has since branched and developed in to selling jewellery, footwear as well as hats, gloves and scarves.
The existence of the CTM and US trademark registrations establish that the Complainant has rights in this mark. The Complainant also relies on the rights that it has acquired through the use of the domain names and as the addresses for its website.
The Complainant submits that the domain name in dispute is confusingly similar to the Complainant’s FAT FACE trade mark. The domain name incorporates the whole of the Complainant’s FAT FACE trademark. It has been previously established in Oki Data America, Inc. v. A,WIPO Case No. D2001-0903 that “[t]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy. . . .”
The addition of the word “clothing” to the Complainant’s trademark does not sufficiently distinguish the domain name. The Complaint cites Sanofi-aventis v. Edith Van Der Linden, WIPO Case No. D2006-0372 in support of this submission. The Complainant further cites Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd, WIPO Case No. D2001-0110 where the panel held that if the additional term includes the complainant’s products it is likely to increase confusion. The addition of the phrase “clothing” to the “fatface” element strengthens the confusion, in this case, as the Complainant is well-known for its clothing products and items.
The Complainant submits that the Respondent does not have any rights or legitimate interests the domain name in dispute.
The Respondent is not the owner of the FAT FACE trademark. The Respondent has not been commonly known as “”. The Complainant has furnished to the Panel with copies of searches of the OAMI and TESS trademark search engines as further support of these assertions.
The Respondent has not been licensed by the Complainant or authorised in any way to use the Complainant’s trademark in the registration of the domain name in question.
The Respondent is not affiliated with the Complainant and the Respondent could not make any conceivable legitimate use of the domain name in connection with clothing, given the fame of the Complainant’s mark and the good will associated with it.
The Respondent has not made legitimate non-commercial use of the domain name, as it is currently using the Complainant’s trademark to generate revenue. Such activity does not constitute legitimate, non-commercial or fair use. The fact that revenue is generated by the use of the Respondent’s site shows that there is commercial gain, which further supports the Complainant’s assertions. The intention of the Respondent in registering the domain name in dispute is to use the reputation of the trademark FAT FACE and to illegitimately trade on its fame, for commercial gain and profit.
Addressing the allegation that the Respondent registered and is using the domain name in bad faith, the Complainant asserts that it has used its various FAT FACE trade marks and registrations for a period that predates the registration of the domain name . The Respondent had both constructive knowledge of the Complainant’s registered rights and actual knowledge of the Complainant’s rights when registering the domain name .
The Complainant submits that the Respondent can have no legitimate reason to utilise the Complainant’s trade mark and was not authorised so to do.
The Complainant submits that the registration and use of the domain name at issue was intended to prevent the Complainant from reflecting its trade mark in the domain name. The Respondent has registered a number of domain names that reflect the trademarks of organizations, or the misspelling of organizations or famous names sometimes with the addition of generic or descriptive words. In support of this assertion the Complainant has submitted a list of registrations as an annex to the Complaint. The list includes the following domain names: ; ; ; . A copy of the WHOIS information for some of the Respondent’s known registered domain names is provided as an annex to the Complaint. The comprehensive list of registrations made by the Respondent can constitute a pattern of conduct within the scope of 4(b)(ii) of the Policy. The Complainant submits that a “pattern of conduct” as required in Paragraph 4(b)(ii) typically involves multiple domain names directed against multiple Complainants, but may involve multiple domain names directed against a single Complainant.”
The website established by the Respondent’ at the “www.” address at the time of filing of the Complaint resolved to a click through revenue website which generates revenue for the Respondent, by utilising the Complainant’s well-known trademark, and inducing users to click on sponsored links within the site. The Complainant has provided this Administrative Panel with a copy of the Respondent’s web page to which the domain name resolves in an annex to the Complaint together with copies of the pages of links within the website.
Previous decisions under the Policy have held that the utilisation of a website for the purposes of click through revenue can be demonstrative of bad faith. The Complainant cites Movado LLC v. Titan Net, WIPO Case No. D2001-0846: “The Panel accepts that it is highly likely that the Respondent is deriving click-through revenue from the website. This brings the deception within paragraph 4(b)(iv) of the Policy and constitutes evidence of both bad faith registration and bad faith use.”
The Complainant submits that the use of the domain name at issue as an address for the Respondent’s website in this way, and the use of the Complainant’s FAT FACE trademark in this way, cannot constitute a bona fide offering of goods or services, with the scope of paragraph 4(c)(i) of the Policy.
The Respondent is involved in creating “initial interest confusion” by using the Complainant’s trade mark to divert users to Respondent’s website, which further supports this argument.
The website established by the Respondent at the domain name also advertises products of a similar nature to that sold by the Complainant.
In addition to this, the Respondent’s details provided on the WHOIS are inaccurate. The email address is invalid and attempts to contact the registrant via email have resulted in the emails “bouncing back”. Copies of the rejected emails have been attached as an annex to the Complaint. The telephone contact details specified on the WHOIS are also incorrect as they neither contain a contactable telephone number or an accurate international dialling code. Under Paragraph 2 (a) of the Policy there is a requirement for the statements made in the Registration Agreement to be complete and accurate. The details submitted and provided by the Respondent are contrary to the aforementioned rules of the Policy, which further supports the Complainant’s assertions of bad faith.
The Respondent acquired the domain name from an organisation called Domain Magic, LLC. Domain Magic, LLC has been involved in a number of domain name disputes involving the registration of well-known brands and trademarks. A previous attempt at negotiations was made with Domain Magic, LLC for the transfer of the domain name to the Complainant. These attempts were unsuccessful. The Respondent must have been aware of the rights of the Complainant in the trade mark FAT FACE when the domain name was registered, making the registration of the domain name in bad faith.
The incorporation and use of the Complainant’s details on the Respondent’s website further supports Complainant’s assertions of bad faith.
The Respondent is not affiliated with the Complainant and is intentionally attempting to attract, for commercial gain, Internet users to its website 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 Respondent is attempting to demonstrate that it is legitimately affiliated with the Complainant, when there is no such affiliation. The use of the domain name by the Respondent is intended to cause confusion, mistake or deception among the public which has been held by previous decisions to suggest opportunistic bad faith.
The Complainant further asserts that the use of a registered trademark and the reference to the Complainant’s legitimate website on the Respondent’s website constitutes constructive knowledge of the Complainant’s rights in the name and further supports Complainant’s argument of bad faith.
Due to these factors above the Complainant respectfully requests that the domain name is transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the said domain name; and
(iii) the said domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant claims to have traded using the FAT FACE trademark since 1988 and yet according to the record it was not incorporated until 1994. While this is not explained in the Complaint, the Complainant has established to the satisfaction of this Panel that it has trademark rights in the FAT FACE trademark both by the above listed trademark registrations and at common law in connection with inter alia the sale of garments.
The domain name in dispute clearly consists of the Complainant’s FAT FACE trademark and the additional element “clothing”. The addition of the word “clothing” to the Complainant’s trademark does not sufficiently distinguish the domain name. The FAT FACE element is clearly the dominant and distinctive element in the domain name. The additional generic term “clothing” is descriptive of the Complainant’s products and as such it is likely to increase the likelihood of confusion.
In the circumstances, this Panel is satisfied that the domain name is confusingly similar to the trade mark FAT FACE in which the Complainant has rights and the Complainant has satisfied the first element in the test in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has put forward a credible prima facie case that the Respondent has no rights or legitimate interest in the domain name. In such circumstances the onus shifts to the Respondent to establish that it has such rights or interest. In casu, the Respondent has not filed any Response and in the circumstances having put forward a convincing prima facie case, the Complainant is entitled to succeed on the second part of the test in paragraph 4(a) of the Policy.
The Complainant has submitted convincing evidence demonstrating that the Respondent is not commonly known by the domain name and there is no connection between the Complainant and the Respondent. Of particular note is the fact that the Respondent has not made legitimate non-commercial use of the domain name, as the evidence is that the Respondent is generating revenue from a click through site by using the Complainant’s reputation and goodwill to attract Internet traffic. This does not constitute legitimate, non-commercial or fair using within the scope of Paragraph 4(c)(iii) of the Rules.
In the absence of any explanation from the Respondent and given the convincing arguments put forward by the Complainant, this Panel is satisfied that Respondent has no rights or legitimate interest in the domain name in dispute and the Complainant has satisfied the second element in the test in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Respondent was not the first registrant of the domain name in dispute. However it appears from the record that the Respondent had both constructive knowledge of the Complainant’s registered rights and actual knowledge of the Complainant’s rights when the domain name was transferred to it.
The domain name is a combination of the Complainant’s distinctive trademark and the generic element “clothing” that describes the type of goods sold by the Complainant. This is more than a co-incidence and on the balance of probabilities the domain name was registered to take advantage of the Complainant’s goodwill and reputation and to attract, for commercial gain, Internet users to the registrant’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
It follows that the domain name was registered in bad faith.
There is not sufficient evidence to reach a conclusion on whether the Respondent engages in a pattern of registering domain names containing third party trademarks or elements similar to third party trademarks as the Complaint does not refer to previous UDRP disputes under the Policy involving the Respondent.
The website established by the Respondent at “www.” address at the time of filing of the Complaint resolves to a click through revenue website which generates revenue for the Respondent, by utilising the Complainant’s well-known trademark, and inducing users to click on sponsored links within the site. This is taking unfair and unlawful advantage of the Complainant’s trademark and the Panel finds that it amounts to an activity intending to attract, for commercial gain, Internet users to the registrant’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location and amounts to bad faith use of the domain name by the Respondent.
This conclusion is supported by the fact that the website established by the Respondent at the “www.” also advertises products of a similar nature to that sold by the Complainant.
Furthermore, the Respondent’s details provided on the Whois are inaccurate and in the circumstances outlined above, this is also indicative of bad faith registration and use.
The Panel finds that the domain name at issue was registered and is being used in bad faith.
The Complainant has therefore also satisfied the third element of the test in paragraph 4(a) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: June 25, 2007
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