The Complainant is Fat Face Holdings Limited, United Kingdom, represented by Lewis Silkin LLP, United Kingdom.
The Respondent is Yixian Wen, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2021. On May 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 31, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 1, 2021. The Center verified that the Complaint together with the amendment to 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 June 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2021. The Center appointed Luca Barbero as the sole panelist in this matter on July 14, 2021. 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 Fat Face Holdings Limited, a clothing and fashion accessories brand established in 1988 and owner of over 240 stores in the United Kingdom and the United States of America. The Complainant over the years has won several awards, including Retail Week’s EPOS Initiative of the Year Award 2013 and Brand Licensing Award’s Best Brand Licensed Children’s Product Range 2019. The Complainant also features routinely in press articles with international reach, including online articles on websites such as Mail Online, Telegraph Online, The Guardian Online, Independent, MSN, The Sun, OK Online and GQ Magazine, attracting over 580 million unique Internet users. The Complainant is the owner of multiple trademark registrations for FAT FACE, including the following: - United Kingdom trademark registration No. UK00901764760 for FAT FACE (word mark), filed on July 19, 2000 and registered on October 16, 2001, in international classes 9, 18 and 25; - United Kingdom trademark registration No. UK00904152005 for FAT FACE (word mark), filed on November 29, 2004 and registered on January 5, 2006, in international classes 14 and 35; - International trademark registration no. 1164649 for FAT FACE (word mark), registered on December 5, 2012 and designating China, where it is protected for goods in international classes 14, 18 and 25. The Complainant is also the owner of the domain name The disputed domain name The Complainant contends that disputed domain name With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent does not own rights in any trademark comprising the word “fatfaced” included in the disputed domain name. The Complainant further contends that the Respondent is not commonly known by the disputed domain name and has in no way received any consent by the Complainant to use a virtually identical variation of its registered trademarks in a domain name registration. Moreover, the Complainant underlines that the Respondent has registered the disputed domain name with the intent of using it for commercial purposes as it has pointed it to a pornographic website and, in doing so, it has also been increasing the value and urgency of a potential sale of the disputed domain name to the Complainant. With reference to the circumstances evidencing bad faith, the Complainant indicates that, considering its prior registered rights, including in China where the Respondent is located, the Respondent was undoubtedly aware of the Complainant and its trademark at the time of registering the disputed domain name, especially since the only difference between the two is the addition of one single letter “d”. Moreover, the Complainant emphasizes that, shortly after registering the disputed domain name, not only did the Respondent point it to a website containing pornographic content, which causes harm and disrupts the Complainant’s business, but it also included pay-per-click links and listed the disputed domain name for sale, thus demonstrating its intention to use the threat of reputational harm to negotiate a quick sale for an amount that exceeds the Respondent’s documented out-of-pocket costs. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; The Panel finds that the Complainant has established rights over the trademark FAT FACE based on the trademark registrations cited under section 4 above. As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In the case at hand, the Complainant’s trademark FAT FACE is entirely reproduced in the disputed domain name, with the mere addition of the letter “d” which does not prevent a finding of confusing similarity and of the gTLD “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0). Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy. Moreover, it has been repeatedly stated that when a respondent does not avail itself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name. The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name. The Panel also finds that, in light of the Respondent’s redirection of the disputed domain name to a website displaying pornographic content and sponsored links and offering the disputed domain name for sale, the Respondent has not demonstrated that it used the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate, noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith: (i) circumstances indicating that the Respondent has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or (ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or (iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent inter alia Manheim Auctions Inc’s 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 the holder’s website or location or of a product or service on the holder’s website or location. In the case at hand, in view of the prior registration and use of the trademark FAT FACE by the Complainant and of the well-known character of the trademark, also recognized in the prior UDRP decision Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt,WIPO Case No. D2007-0626, the Panel finds that the Respondent’s registration of the disputed domain name, which differs from the Complainant’s trademark FAT FACE and its domain name The Panel also notes that, by using the disputed domain name, confusingly similar to the Complainant’s trademark, in order to offer pornographic content and likely also derive pay-per-click revenue, the Respondent has intentionally attempted to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark according to paragraph 4(b)(iv) of the Policy. The Panel also finds that, in view of the above-described use of the disputed domain name, the Respondent has registered the disputed domain name for the purpose of disrupting the Complainant’s business. Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy. 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 Luca Barbero
(ii) that the 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. A. Identical or Confusingly Similar
Moreover, where the relevant trademark is recognizable within a disputed domain name, the addition of generic or descriptive terms or even letters or numbers does not prevent a finding of confusing similarity under the first element (section 1.8 of the WIPO Overview 3.0).
Sole Panelist
Date: July 28, 2021
Full & Egal Universal Law Academy