Fat Face Holdings Limited v Christopher Kane

WIPO Case No. DNL2025-0007

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fat Face Holdings Limited v. Christopher Kane

Case No. DNL2025-0007

1. The Parties

The Complainant is Fat Face Holdings Limited, United Kingdom, represented by SafeNames Ltd., United

Kingdom.

The registrant of the disputed domain name is Christopher Kane, France, (the “Respondent”).

2. The Domain Name and Registrar

The disputed domain name <fatface.nl> (the “Domain Name”) is registered with SIDN through 1API Gmbh.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12,
2025. On February 13, 2025, the Center transmitted by email to SIDN a request for registrar verification in
connection with the Domain Name.

On February 14, 2025, SIDN transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the contact information in the Complaint.

The Center sent an email communication to the Complainant on February 14, 2025, providing the
information disclosed by SIDN, and inviting the Complainant to amend the Complaint in this light. The

Complainant filed an amended Complaint on February 14, 2025.

The Center verified that the Complaint as amended satisfies the formal requirements of the Dispute
Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint and the proceedings commenced on February 17, 2025. In accordance with the Regulations, article 7.1, the due date for Response was March 9, 2025. The Center did not receive any response.

Accordingly, the Center notified the Respondent’s default on March 13, 2025.

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The Center appointed Gregor Vos as the panelist in this matter on March 17, 2025. The Panel finds that it
was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of

Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

The Complainant is a British company active in the field of clothing, accessories and lifestyle founded in 1988. The Complainant has an international presence, with many stores in the United States of America and Canada. The Complainant’s main website “fatface.com” received 42.8 million visits in 2023 and accounted for 39.5% of revenue, demonstrating that the Complainant has a strong online presence.

The Complainant is the owner of inter alia the following trademark registrations (hereinafter referred to as the

“Trademarks”):

- European Union trademark registration No. 001764760 for FAT FACE registered on October 16, 2001;
- European Union trademark registration No. 004152005 for FAT FACE registered on January 5, 2006.

The Domain Name was registered on October 28, 2024. At the time of the filing of the Complaint, the Domain Name redirected to a website on which the Domain Name was offered for sale. Currently, the Domain Name resolves to a website on which pay-per-click (“PCC”) links are displayed directly related to the

Complainant’s services.

5. Parties’ Contentions

A. Complainant

The Complainant seeks that the Domain Name is transferred to the Complainant. The Complainant
contends that it has satisfied each of the elements required under the Regulations for a transfer of the
Domain Name.

Firstly, according to the Complainant, the Domain Name reproduces the Complainant’s Trademarks in their entirety, with no addition or alteration, which renders it identical to the Complainant’s Trademarks.

Secondly, the Respondent has no prima facie right to or legitimate interest in the Domain Name. The Respondent does not have any trademark rights to the term “FAT FACE”. Moreover, the Respondent has not received a license from the Complainant to use domain names featuring the Trademarks. Further the Respondent is not engaging in a bona fida use of the Domain Name and the Respondent is not commonly known by the term “FAT FACE”. Lastly, the Respondent’s use is inherently commercial in nature and thereby incompatible with Regulations article 3.1 (c).

Finally, the Complainant submits that the Respondent both registered and is using the Domain Name in bad faith. In light of the distinctive nature of the Trademarks, the Respondent could have easily verified the availability of the Trademarks for use in a domain name. Also, the Respondent registered multiple other domain names incorporating other distinctive third-party trademarks. Additionally, in reaction to the

Complainant’s cease and desist letter, the Respondent offered the Domain Name for sale at a price far exceeding the reasonable costs associated with the Domain Name. Furthermore, the Respondent is using the Domain Name for commercial gain by attracting Internet users to the Domain Name based on the likelihood of confusion with the Complainant’s Trademarks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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6. Discussion and Findings

For the Complainant to succeed, it must prove, within the meaning of article 2.1 of the Regulations and on the balance of probabilities that:

(a) the Domain Name is identical or confusingly similar to a trademark, trade name or geographical indication protected under Dutch law in which the Complainant has rights, or a personal name registered in the General Municipal Register (‘gemeentelijke basisadministratie’) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and

(b) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(c) the Domain Name has been registered or is being used in bad faith.

Only if all three elements have been fulfilled, the Panel is able to grant the remedy requested by the

Complainant. The Panel will deal with each of the requirements in turn.

A. Identical or Confusingly Similar

Pursuant to article 2.1(a) of the Regulations, it is sufficient for the Complainant to show that the Domain Name is (i) identical or confusingly similar to a trademark or service mark, (ii) in which the Complainant has rights protected under Dutch law.

With respect to having rights pursuant to paragraph 2.1(a) of the Regulations, it is noted that the
Complainant is registered as the owner of the Trademarks that are valid in the EU and thus protected under
Dutch law. Consequently, the Panel finds that the Complainant has proven that it has rights in the
Trademarks.

With regard to the assessment of identity or confusing similarity of the Domain Name and the Trademarks, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between the Complainant’s Trademarks and the Domain Name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). [1] In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is

[1]Given that the Regulations is based largely on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel considers

recognizable in the domain name, the domain name will normally be considered confusingly similar to that

mark (see section 1.7 of the WIPO Overview 3.0).

In the present case, the Trademarks are incorporated in their entirety and identically in the Domain Name. satisfied.

B. Rights or Legitimate Interests

Under the second requirement, the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Name. The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that a respondent lacks rights or legitimate interests. If a complainant does establish a prima facie case, the burden of production shifts to the respondent (see, e.g. WIPO Overview 3.0, section 2.1; Sanofi v. Cimpress Schweiz GmbH, WIPO Case No. D2017-0522).

Article 3.1 of the Regulations lists three non-limitative examples of instances in which a respondent may establish rights or legitimate interests in the Domain Name.

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The Complainant has substantiated that none of these circumstances apply in this case. By defaulting, the Respondent has failed to rebut the prima facie case established by the Complainant. Furthermore, based on the record before it, the Panel does not see an indication that any of the circumstances of article 3.1 of the Regulations are present.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the

Domain Name. Article 2.1(b) of the Regulations is thereby fulfilled.

C. Registered or Used in Bad Faith

Under article 2.1(c) of the Regulations, a complainant must show that the Domain Name has been registered or is being used in bad faith. Article 3.2 of the Regulations lists four non-limitative circumstances which may be considered as evidence of registration or use in bad faith of a domain name.

In the present case, the Trademarks are registered by the Complainant and have been used for many years. The Complainant’s rights to the Trademarks predate the registration date of the Domain Name. In light of the reputation of the Trademarks, the Panel agrees with the Complainant that it is not conceivable that the Respondent chose the Domain Name without knowledge of the Complainant’s activities and its Trademarks under which the Complainant is doing business. The reputation of the Trademarks has been confirmed by earlier Panels (see e.g. 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), WIPO Case No

D2023-3516; Fat Face Holdings Limited v. Zhen Sheng Dai (代振生), WIPO Case No. D2024-0615; Fat
Face Holdings Limited v. 方智强 (fang zhi qiang), WIPO Case No. D2024-0481.

In light of the reputation of the Trademarks, the lack of any rights or legitimate interests in the Domain Name by the Respondent, and in the absence of any conceivable good faith use of the Domain Name, the Panel finds from the present circumstances that the Respondent has intentionally sought to take unfair advantage of or otherwise abuse the Trademarks. This is reinforced by the reputation of the Complainant’s

Trademarks, as referenced above. Also, the fact that the Trademarks are identically included in the Domain consumers.

Additionally, in the present case the Respondent offered the Domain Name for sale to the Complainant for an amount well in excess of its documented out-of-pocket costs related to the Domain Name (Article 3.2(a) of the Regulations).

Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith and that the third element of article 2.1 of the Regulations is fulfilled.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name <fatface.nl> be transferred to the Complainant.

/Gregor Vos/ Gregor Vos Sole Panelist Date: April 1, 2025

UDRP precedent, and thus WIPO Overview 3.0, to be relevant to the present proceeding and will refer to it where appropriate (see, e.g.,
Action Bolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050).