ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Fat Face Holdings Limited v. MEHLER Felix, Xiao Li (李晓), afgfrga, Jie Wang, Yuan Yan He (何远燕), Jie Lin (林杰), yan li (李彦), Zhen Sheng Dai ( 代振生), Zhao Yong Jian (赵永健), Wen Zhou Fu Jie Jin Rong Xin Xi Fu Wu You Xian Gong Si (温州富捷金融信息服务有限公司) Case No. D2023-3516 1. The Parties Complainant is Fat Face Holdings Limited, United Kingdom, represented by SafeNames Ltd., United Kingdom ("UK"). Respondents are MEHLER Felix, Germany, Xiao Li (李晓), China, afgfrga, United States of America ("US"), Jie Wang (王洁), China, Yuan Yan He (何远燕), China, Jie Lin (林杰), China, yan li (李彦), China, Zhen Sheng Dai (代振生), China, Zhao Yong Jian (赵永健), Wen Zhou Fu Jie Jin Rong Xin Xi Fu Wu You Xian Gong Si (温州富捷金融信息服务有限公司), China. 2. The Domain Name and Registrar The disputed domain names , , , , , , , , , and are registered with Jiangsu Bangning Science & technology Co. Ltd. (the "Registrar"). The disputed domain names , , , , , , , , , , , , , , , , , , , and are registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar"). The disputed domain names , , and are registered with Cloud Yuqu LLC (the "Registrar"). The disputed domain names , , , , and are registered with NameSilo, LLC (the "Registrar"). The disputed domain name is registered with NETIM SARL (the "Registrar"). page 2 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on August 18, 2023. On August 21, 2023, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On August 22, 2023, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to Complainant on August 23, 2023, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting Complainant to either file separate complaints for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity. Complainant filed an amended Complaint in English on August 28, 2023. On August 23, 2023, the Center informed the parties in Chinese and English, that the language of the registration agreement for the disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , is Chinese. On August 28, 2023, Complainant confirmed its request that English be the language of the proceeding. Respondents did not submit any comment on Complainant's submission. 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 Respondents in Chinese and English of the Complaint, and the proceedings commenced on August 30, 2023. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2023. Respondents did not submit any response. The Center received an email from a third party on August 30, 2023. On October 3, 2023, the Center informed the Parties that it would proceed to panel appointment. The Center appointed Yijun Tian as the sole panelist in this matter on October 24, 2023. 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 A. Complainant Complainant, Fat Face Holdings Limited, is a company incorporated in the UK. Founded in 1988, Complainant is a British clothing and lifestyle brand with roots in ski resort t-shirt sales. By 2012, it had expanded to over 200 stores in the UK, Ireland, and the US (Annexes 5 and 10 of the Complaint). Complainant sells a variety of products, including clothing and accessories (Annex 8 of the Complaint). The official website, "www.fatface.com", serves as both an e-commerce platform and blog. In 2022, it received over 37 million visits, with online sales contributing 38.8% to revenue. Monthly website visits averaged 1.5 to 2 million in 2021 (Annex 9 of the Complaint). page 3 Complainant has rights in the FATFACE and FAT FACE related marks. Complainant is the owner of numerous FATFACE and FAT FACE trademarks worldwide, including the UK trademark registration for FATFACE, registered on October 14, 2014 (registration number: UK00912646659); the US trademark registration for FATFACE, registered on April 12, 2016 (registration number: 4934466); the New Zealand trademark registration for FAT FACE, registered on December 21, 1998 (registration number: 294292); and the International trademark registration for FAT FACE, registered on December 15, 2004 (registration number: 848966). Complainant also operates domain names that contain the FATFACE and FAT FACE marks in their entirety, such as , which is the official website of Complainant, which was registered in April 1997 (Annex 9 to the Complaint). B. Respondents Respondents are MEHLER Felix, Germany, Xiao Li (李晓), China, afgfrga, the US, Jie Wang (王洁), China, Yuan Yan He (何远燕), China, Jie Lin (林杰), China, yan li (李彦), China, Zhen Sheng Dai (代振生), China, Zhao Yong Jian (赵永健), Wen Zhou Fu Jie Jin Rong Xin Xi Fu Wu You Xian Gong Si (温州富捷金融信息服 务有限公司), China. - The disputed domain names , , and were registered (with Cloud Yuqu LLC) by Xiao Li (李晓), China, on July 4, 2023, July 7, 2023, and July 7, 2023 respectively. - The disputed domain names , , , , , , , , and were registered (with Chengdu West Dimension Digital Technology Co., Ltd.) by Xiao Li (李晓), China, on July 4, 2023, July 6, 2023, July 4, 2023, July 6, 2023, July 7, 2023, July 7, 2023, July 6, 2023, July 7, 2023, and July 7, 2023 respectively. - The disputed domain name was registered (with Chengdu West Dimension Digital Technology Co., Ltd.) by Yuan Yan He (何远燕), China on February 23, 2023. - The disputed domain name was registered (with Chengdu West Dimension Digital Technology Co., Ltd.) by Jie Lin (林杰), China on July 5, 2023. - The disputed domain names , and were all registered (with Chengdu West Dimension Digital Technology Co., Ltd.) by yan li (李彦), China on July 11, 2023. - The disputed domain names , , , and were registered (with Chengdu West Dimension Digital Technology Co., Ltd.) by Zhen Sheng Dai (代振生), China on July 26, 2023, June 14, 2023, March 31, 2023, and June 26, 2023 respectively. - The disputed domain names and were registered (with Chengdu West Dimension Digital Technology Co., Ltd.) by Zhao Yong Jian (赵永健), Wen Zhou Fu Jie Jin Rong Xin Xi Fu Wu You Xian Gong Si (温州富捷金融信息服务有限公司), China on May 29, 2023 and July 8, 2023 respectively. - The disputed domain name was registered (with NETIM SARL) by MEHLER Felix, Germany on July 24, 2023. - The disputed domain names , , , , , , , , , and were all registered (with Jiangsu Bangning Science & technology Co. Ltd.) by Jie Wang (王洁), China on July 19, 2023. - The disputed domain names , , , , and were registered (with NameSilo, LLC) by afgfrga, the US, on July 5, 2023, July 18, 2023, July 18, 2023, July 18, 2023, and July 5, 2023 respectively. The 39 disputed domain names outlined in this Complaint exhibit two distinct patterns: (i) redirection to online shops, with all but three prominently featuring Complainant's official logo and product imagery. These page 4 sites purportedly offer Complainant's products while soliciting personal information; or (ii) leading to an inactive webpage (passively held) (Annexes 12-13 of the Compliant). 5. Parties' Contentions A. Complainant Complainant contends that the disputed domain names are all confusingly similar to Complainant's FAT FACE trademark. All disputed domain names reproduce the FAT FACE mark in full, with the addition of a term relating to commerce (Annex 1 to the Complaint). One disputed domain name , contains the FAT FACE trademark with a hyphen separating the constituent words of the trademark. None of these adornments or alterations negate the similarity between disputed domain names and trademarks. Complainant contends that Respondents lack rights or legitimate interests in the disputed domain names. Complainant contends that the disputed domain names were registered and are being used in bad faith. Complainant requests that the disputed domain names be transferred to it. B. Respondents Respondents did not reply to Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding The language of the Registration Agreements for the disputed domain names , , , , , and is English. The language of the Registration Agreements for all other disputed domain names is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondents to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons: (a) Respondents have agreed to an English-language registration agreement for some of the disputed domain names; (b) All of the disputed domain names are composed solely of Latin characters, rather than Chinese script; (c) Many of the disputed domain names contain English terms, such as 'outlet fashion', 'wardrobe' and 'discount store', among others; (d) The content of disputed domain names is entirely in English; (e) Complainant's representatives are based in the UK and requiring a translation would result in the incurrence of additional expenses and unnecessary delay. Respondents did not make any specific submissions with respect to the language of the proceeding. page 5 In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.5.1). On the record, Respondent, afgfrga, appears to be located in the US and are thus presumably a native English speaker; Respondent, MEHLER Felix, appears to be located in Germany and are thus presumably not a native English speaker; and all remaining Respondents appear to be located in China and are thus presumably not a native English speaker, but considering the following aspects, the Panel has decided that the language of the proceeding shall be English: (a) the disputed domain names are registered in Latin characters, particularly in English (e.g., English words "fat face", "bargains", "clearance", "discount", "clothing" and "store"), rather than Chinese script; (b) the generic Top-Level Domain ("gTLD") of the disputed domain names are ".com", ".shop", and ".store", so the disputed domains names seem to be prepared for users worldwide, particularly English speaking countries; (c) the webpages which most of disputed domain names resolve to are in the English language; (d) the Center has notified Respondents of the language of the proceeding in both Chinese and English, and Respondents have indicated no objection to Complainant's request that English be the language of the proceeding; (e) the Center also notified Respondents in both Chinese and English of the Complaint, and informed Respondents that it would accept a response in either English or Chinese, but Respondents chose not to file any response. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2. Consolidation: Multiple Respondents The amended Complaint was filed in relation to nominally different domain name registrants. Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on Complainant's request. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In addressing Complainant's request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview 3.0, section 4.11.2. As regards common control, the Panel finds that Complainant has provided sufficient evidence to establish that the disputed domain names or corresponding websites are subject to common control, for the following reasons: (a) Respondents Xiao Li, afgfrga, Jie Wang, and Jie Lin is a common entity, as active domain names registered to their names exhibit identical content of "Fake Shop 1" (Annexes 1, 12 and 13 to the Complaint); (b) Respondents Felix MEHLER, Yuan Yan He, Zhen Sheng Dai, and Yong Jian Zhao are a common entity, as active domain names registered to their names display identical content of "Fake Shop 2" (Annexes 1, 12 and 13 to the Complaint). (c) Respondent Yan Li is considered a common entity with the "Fake Shop 1 Respondents," as Yan Li and Jie Wang share the same email address (Annex 1 to the Complaint). (d) Identifying "Fake Shop 1 Respondents"1 and "Fake Shop 2 Respondents" 2, Complainant asserts sufficient evidence of common control over their respective domain names. page 6 (e) Uniform website content is evident across all disputed domain names, constituting fake shops displaying identical images of Complainant's products, with matching website titles and favicons (Annex 16 to the Complaint). (f) The disputed domain names from both groups predominantly utilize Cloudflare, Inc. as their hosting provider, featuring highly similar IP ranges within the same Autonomous System Number. (g) The disputed domain names in both groups were registered within a brief window of under four months (Annex 1 to the Complaint). (h) The disputed domain names in both groups include Complainant's FAT FACE mark along with comparable generic terms like "clothing", "discount", "outlet", and "fashion", as observed in instances such as and . (i) Respondents in both groups employ email addresses unrelated to their registrant names or randomly generated (Annex 1 to the Complaint). (j) The entity controlling the disputed domain names has employed false contact details, as evidenced by (a) shared email addresses, among multiple named Respondents and (b) the use of plainly false details like "afgfrga, fgazefr aefg, aefrg, defrag" (Annex 1 to the Complaint). As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as "Respondent") in a single proceeding. 6.3 Substantive Issues: Three Elements A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. Based on the available record, the Panel finds Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the entirety of the FAT FACE mark is reproduced within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. While the addition of other terms "bargains", "clearance", "closet", ".store", "clothing", ".shop", "discount", "discounts", "fashion", "deals", "sale", "faves", "good", "ok", "online", "outlet", "-", "uk", "deal", "vibes", and "wardrobe" may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible page 7 task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Respondent has not rebutted Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. More specifically, (i) there has been no evidence adduced to show that Respondents are using the disputed domain names in connection with a bona fide offering of goods or services. Respondents have not provided evidence of reasons to justify the choice of the terms "fat face", Complainant's FAT FACE trademark, in the disputed domain names. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the FATFACE or FAT FACE marks or to apply for or use any domain name incorporating the FAT FACE marks; (ii) there has been no evidence adduced to show that Respondents have been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondents have any registered trademark rights with respect to the disputed domain names. Respondents registered the disputed domain names in 2023, after the FAT FACE marks became widely known. The disputed domain names are confusingly similar to Complainant's FAT FACE marks; and (iii) there has been no evidence adduced to show that Respondents are making a legitimate noncommercial or fair use of the disputed domain names. By contrast, all active disputed domain names resolved to websites purporting to be authorised online stores for Complainant's products, and the websites were in the English language, contain the contents copied from the original website of Complainant, and purport to offer Complainant's goods for sale at extreme discounts. It seems that Respondents are making profits through the Internet traffic attracted to the websites under the disputed domain names. (See BKS Bank AG v. Jianwei Guo, WIPO Case No. D2017-1041; and Pet Plan Ltd. v. 权中俊 and 李金梁 (Li Jin Liang), WIPO Case No. D2020-3358.) Panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that Respondents have registered and used the disputed domain names in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent's registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. page 8 Regarding inactive disputed domain names, UDRP panels have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the record, the Panel finds the non-use of the disputed domain names (such as , , , , , , , , , , , , , , and (Annex 12 to the Complaint) does not prevent a finding of bad faith in the circumstances of this proceeding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3. Having reviewed the record, the Panel notes the distinctiveness or reputation of the Complainant's trademark, and the composition of the disputed domain names, and finds that in the circumstances of this case the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy. Regarding active disputed domain names, UDRP panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds Respondents' registrations and use of the disputed domain names constitute bad faith under the Policy. Based on the information provided by Complainant, the Panel finds that Complainant has a widespread reputation in the FAT FACE marks with regard to its products and services. It is not conceivable that Respondent would not have had Complainant's trademark in mind at the time of the registration of the disputed domain names (in 2023). This has been reinforced by the fact that each disputed domain name incorporates Complainant's FAT FACE trademark. Respondent has used the websites resolved by active disputed domain names for displaying the contents copied from the original website of Complainant, and purports to offer Complainant's goods for sale at extreme discounts. Thus, the Panel concludes that Respondents are currently using confusingly similar disputed domain names with the intention to attract, for commercial gain, Internet users to Respondents' websites by creating a likelihood of confusion with Complainant. Such use constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy. Based on the available record, the Panel finds the third element of the Policy has been established. page 9 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 names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , be transferred to Complainant. /Yijun Tian/ Yijun Tian Sole Panelist Date: January 8, 2024
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