The Complainant is Fat Face Holdings Limited, United Kingdom, represented by SafeNames Ltd., United Kingdom.
The Respondent is DOMAIN ADMINSTRATOR, DOMAIN IS FOR SALE AT WWW.DAN.COM, Cayman Islands, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2021. On September 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 8, 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 September 8, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on September 8, 2021.
The Center verified that the Complaint together with the amended 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 September 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2021.
The Center appointed Nick J. Gardner as the sole panelist in this matter on October 6, 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 BackgroundThe 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 filed evidence establishes the Complainant is a successful and well known manufacturer and retailer of casual clothing sold under the brand name “fatface”. The Complainant had a revenue of GBP 198.2 million in 2020.
The Complainant is the owner of multiple trademark registrations for FAT FACE, including for example United Kingdom trademark registration No. UK00901764760 for FAT FACE (word mark), filed on July 19, 2000, and registered on October 16, 2001. These trademarks are referred to collectively in this decision as the “FAT FACE trademark”.
The Complainant is also the registrant of the domain name
In September 2021, the Complainant launched a brand called MADE FOR LIFE, celebrating the adventures, memories and moments that customers have experienced while wearing FAT FACE clothing his launch was widely promoted. In anticipation of the launch of the MADE FOR LIFE brand, the Complainant applied for the trademark FAT FACE MADE FOR LIFE in the United Kingdom (June 6, 2021), the European Union (June 7, 2021) and subsequently in the United States of America (July 20, 2021)
The Disputed Domain Name was registered on June 7, 2021, and links to a third party domain aftermarket site) offering the Disputed Domain Name for sale at USD 990.
5. Parties’ Contentions A. ComplainantThe Complainant makes a number of detailed points and references previous UDRP decisions. In summary its case is as follows.
The Complainant contends that Disputed Domain Name
The Complainant says that the Respondent has no legitimate interest or rights in Disputed Domain Name.
The Complainant says that the Respondent’s registration of the Disputed Domain Name is a clear example of “opportunistic bad faith” in that the Complainant applied for the trademarks FAT FACE MADE FOR LIFE in the United Kingdom on June 6, 2021, and FATFACE MADE FOR LIFE in the European Union on June 7, 2021: the Disputed Domain Name was registered on June 7, 2021.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings Preliminary MattersThe Panel notes that no communication has been received from the Respondent. However, given that the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,
WIPO Case No. D2012-1909).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with 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 SimilarThe Complainant has rights in the FAT FACE trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. The Respondent has simply taken the Complainant’s trademark and combined it with another term for which the Complainant has also applied for trademark registrations in a manner which manifestly continues to include the Complainant’s trademark as an obvious reference within the Disputed Domain Name.
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate InterestsThe Panel finds the FAT FACE trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use FAT FACE trademark. The Complainant has prior rights in the FAT FACE trademark which precede the registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,
WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad FaithUnder paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(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 web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Panel finds it hard to find any plausible explanation for a good faith registration of the Disputed Domain Name given this occurred a day after the Complainant filed a trademark application for FAT FACE MADE FOR LIFE in the United Kingdom, and on the same day of the trademark application for FAT FACE MADE FOR LIFE in the European Union.
The obvious inference is that the Respondent is engaged in a practice of speculatively registering a domain name, which corresponds to a filed trademark application and then hopes to sell that domain name to the trademark owner, probably for valuable consideration in excess of the out-of-pocket costs. That amounts to evidence of registration and use in bad faith within paragraph 4(b)(i) of the Policy (above).
As no Response has been filed the Respondent has not rebutted this inference. Further, the fact the Respondent is offering the Disputed Domain Name for sale for USD 990 supports the inference.
Further the Panel finds it difficult to conceive of any use which the Respondent could make of the Disputed Domain Name which would be legitimate. Again the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.
As a result, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
7. DecisionFor 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
Nick J. Gardner
Sole Panelist
Date: October 20, 2021