ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Fat Face Holdings Limited v. 士大夫 阿斯顿; Pranvera Grislin; Colin Derby; Tony Oconner; and an L, asdasdaasas Case No. D2024-3015 1. The Parties The Complainant is Fat Face Holdings Limited, United Kingdom, represented by SafeNames Ltd, United Kingdom. The Respondents are 士大夫 阿斯顿, United States of America (“United States”); Pranvera Grislin, China; Colin Derby, China; Tony Oconner, United States; and an L, asdasdaasas, United States. 2. The Domain Names and Registrar The disputed domain names , , , , , and are registered with Dynadot Inc (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2024. On July 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 25, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (REDACTED FOR PRIVACY, Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 31, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on August 1, 2024. 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
page 2 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 Respondents of the Complaint, and the proceedings commenced on August 7, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2024. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 28, 2024. The Center appointed John Swinson as the sole panelist in this matter on September 2, 2024. 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 British clothing, accessories, and lifestyle brand founded in 1988. The Complainant’s FAT FACE brand originates from the beginnings of the company, where founders Tim Slade and Jules Leaver sold t-shirts at ski resorts. The term “fat face” comes from the famous black mountain skiing run in Val d’Isère, named “La Face”. The Complainant owns registered trademarks for FATFACE and FAT FACE including United States Registration No. 4934466 for FATFACE that has a registration date of April 12, 2016. The Complainant’s primary website is located at “www.fatface.com”. This website received over 40 million visits in 2023. The disputed domain names were registered during the period April 7, 2024 to April 9, 2024. The disputed domain names do not resolve to an active website. For some of the disputed domain names, a security warning is displayed by the browser when trying to visit the website at the disputed domain name. The Respondents did not file a Response, so little information is known about the Respondents. The Complainant sent a cease and desist letter and notices to the Respondents on April 30, 2024. According to the Complainant, this letter was sent in order to put the Respondents on notice of the Complainant’s trademarks and rights and with a view to resolving the matter amicably. No response to this letter was received by the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainant contends that the Respondents have not used, nor prepared to use, the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names currently do not resolve to active websites or webpages. The Complainant’s trademark is a distinctive term used to represent the Complainant’s goods and services. There is no evidence that has come to light since the disputed domain names’ registrations that the Respondents have intended to use the disputed domain names in a way other than to target the Complainant.
page 3 It has been accepted in previous panel decisions that the selection of a domain name that is so obviously connected to a complainant’s trademark strongly suggests “opportunistic bad faith”, particularly where it is used by someone with no affiliation with the complainant. The Complainant relies upon “passive bad faith” pursuant to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Complainant submits that the Respondent has engaged in an abusive pattern of conduct by registering six domain names that each encompasses the Complainant’s exact highly established FAT FACE trademark. B. Respondents The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. The onus of proving these elements is on the Complainant. Consolidation: Multiple Respondents The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The 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 the 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 the 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. As regards common control, the Panel notes that the disputed domain names were registered with the same registrar over a three-day period (April 7, 2024 to April 9, 2024), all do not resolve to an active website, the disputed domain names share a highly similar lexical pattern of composition, involving the FAT FACE trademark with the addition of the terms “uk”, “outlet”, “outlets”, or “outlet-uk”, two of the disputed domain names have the same registrant details, and some of the name and address details provided in the WhoIs records appear to be false.
page 4 Moreover, three of the named Respondents have been parties in the same prior proceeding. See IIC-Intersport International v. dsadsadsad, asdawsd dsadasdsa, Geneviève DEMANGE, Name Redacted, an L, Colin Derby, Pranvera Grislin, rf fw, dgv, kuby asdf, WIPO Case No. D2024-0106, where the panelist decided to consolidate the disputes in that case in a single proceeding based on common control. See also Ludendo SAS, Joueclub Entente des Professionnels Specialistes de L’enfant v. Agim Mulakaj, Tony Oconner, Colin Derby, WIPO Case No. D2023-5367, which also appears to involve some of the named Respondents in the present case. 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 “the Respondent” in this decision) in a single proceeding. 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 names. WIPO Overview 3.0, section 1.7. The 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 mark is recognizable within the disputed domain names. Accordingly, the disputed domain names are identical (for one of the disputed domain names) or confusingly similar (for the remainder of the disputed domain names) to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. 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. Although 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 difficult 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 (although the burden of proof always remains on the complainant). 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 available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the 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. As far as the evidence shows, the disputed domain names have not been used by the Respondent. The Respondent’s failure to associate content with its disputed domain names is not indicative of any rights and legitimate interests pursuant to the Policy.
page 5 The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith 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. The Panel decides that the Respondent was aware of the Complainant when registering the disputed domain names, and registered them because of the Complainant’s trademark and associated reputation. One of the disputed domain names is identical to the Complainant’s trademark. Five of the disputed domain names comprise the FAT FACE trademark combined with additional terms that convey the impression that they would be used to offer the Complainant’s services to Internet users. It is clear to the Panel that the Respondent, when registering these disputed domain names, targeted the Complainant in a manner likely to confuse people into believing the disputed domain names are registered to, operated, or authorised by the Complainant, when this is not the case. An online user seeing these disputed domain names likely would believe they are connected to the Complainant. The Respondent did not file a Response or reply to the Complainant’s cease and desist letter. The Respondent has been involved in at least two prior decisions under the Policy as cited above. The Panel considers that the Respondent registered the disputed domain names in order to prevent the Complainant from reflecting the Complainant’s trademark in a corresponding domain name, and that the Respondent has engaged in a pattern of such conduct. See Policy, paragraph 4(b)(ii). Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available 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. The Panel finds that the Complainant has established the third element 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 names , , , , , and be transferred to the Complainant. /John Swinson/ John Swinson Sole Panelist Date: September 11, 2024
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