Fat Face Holdings Limited v Sven Ebersbach, Andreas Boehm, Markus

WIPO Case No. D2025-1134

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fat Face Holdings Limited v. Sven Ebersbach, Andreas Boehm, Markus
Muller, Christin Dresdner, Franziska Frueh

Case No. D2025-1134

1. The Parties

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

Kingdom.

The Respondents are Sven Ebersbach, Germany; Andreas Boehm, Germany; Markus Muller, Germany;

Christin Dresdner, Germany; and Franziska Frueh, Germany.

2. The Domain Names and Registrars

The disputed domain names <fatfaceireland.com>, <fatfaceunitedkingdom.com>, and <fatface-usa.com> are registered with Dynadot Inc. (the “First Registrar”).

The disputed domain names <fatface-ireland.com> and <fatfacepolska.com> are registered with

Metaregistrar BV (the “Second Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2025. On March 19, 2025, the Center transmitted by email to the First Registrar a request for registrar verification in connection with the disputed domain names. On April 21, 2025, the First Registrar transmitted by email to

the Center its verification response disclosing registrant and contact information for the disputed domain registrants revealed by the First 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 March 31, 2025.

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
On March 31, 2025, the Complainant sent a request to the Center to suspend the current proceedings. On
April 1, 2025, the Center notified the suspension of the proceedings until May 1, 2025. On April 3, 2025, the
Center received a request from the Complainant to reinstitute the proceeding and to consolidate the present

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proceeding with another concurrent proceeding. On April 8, 2025, the Center reinstituted the current contact information for the newly identified disputed domain names in the Complaint.

proceeding and requested for the Complainant to submit a single consolidated Complaint identifying all
applicable disputed domain names including a consolidation request. On April 10, 2025, the Complainant
submitted a further amended Complaint including the consolidation request. On March 15, 2025, the Center
transmitted by email to the Second Registrar a request for registrar verification in connection with the newly
identified disputed domain names added to the single consolidated Complaint. On April 16, 2025, the

The Center sent an email communication to the Complainant on April 25, 2025, with the registrant and contact information of nominally multiple underlying registrants revealed by the First Registrar and the Second Registrar, inviting the Complainant to provide further arguments in support of the previous

consolidation request. The Complainant confirmed all arguments made previously on April 28, 2025.

The Center verified that the Complaint together with the amended Complaints 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 Respondents of the Complaint, and the proceedings commenced on May 5, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2025. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 26, 2025.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on June 2, 2025. 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 brand founded in 1988 and owns many trademark registrations for the trademark FAT FACE such as:

- New Zealand Trademark Registration No. 294292, registered on December 21, 1998;

- European Union Trademark Registration No. 001764760, registered on October 16, 2001; and

- European Union Trademark Registration No. 004152005, registered on January 5, 2006.

The disputed domain names <fatfaceireland.com>, <fatface-usa.com>, <fatface-ireland.com>, and
<fatfacepolska.com> were registered on December 3, 2024. The disputed domain name
<fatfaceunitedkingdom.com> was registered on November 30, 2024. All disputed domain names resolve to

websites purporting to sell clothing items and displaying the Complainant’s trademark.

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 disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The reputation and goodwill of the Complainant’s trademark has been recognized by prior UDRP panels. The disputed domain names incorporate the Complainant’s trademark in its entirety together with geographical terms, which does not prevent a finding of confusing similarity. In fact,

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these terms reinforce connection with the Complainant as it operates in these countries. The generic Top-
Level Domain (“gTLD”) “.com” should be ignored when assessing confusing similarity.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has no rights in the FAT FACE trademark. The Complainant did not license the Respondent to use its trademark in the disputed domain names. The Respondent has not used or prepared to use the disputed domain names in relation to a bona fide offering of goods or services. The disputed domain names host websites intended to impersonate the Complainant and to obtain personal details of Internet users. The Respondent is not commonly known by the term FAT FACE. There is no evidence of a legitimate noncommercial or fair use of the disputed domain names.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. The registration of the trademark by the Complainant predates the registration of the disputed domain names by approximately 26 years. The Complainant has accrued substantial goodwill in the trademark FAT FACE. The Respondent knew of the Complainant’s trademark given the composition of the disputed domain names, which include the Complainant’s trademark in its entirety followed by geographical terms that reflect the

territories of the Complainant’s operations. The use of the disputed domain names to host impersonation sites is bad faith use. Creating fake shops and soliciting personal details of users is bad faith. There is no disclaimer that the sites are not associated with the Complainant. There has been no answer to the cease- and-desist letters sent by the Complainant.

B. Respondent

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

6. Discussion and Findings

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 names’ 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: (i) All the disputed domain names resolve to identical websites, impersonating the Complainant. The websites all display the FAT FACE trademark and use the same website layout and graphics. (ii) The disputed domain names share a similar composition, involving the FAT FACE trademark followed by a geographical identifier: “usa”, “unitedkingdom”, “ireland” or “polska”. (iii) Three of the disputed domain names were registered with the same registrar and two with another registrar. (iv) The disputed domain names were all registered within a short timeframe between November 30, 2024, and December 3, 2024, with four of them registered on the same day. (v) Each of the registrant’s information disclosed by the Registrars contains physical address details based in Germany and email addresses using Russian email providers. (vi) The same name server provider and hosting provider is used for all of the disputed domain names.

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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 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 name. 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 confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “ireland”, “usa”, “unitedkingdom” and “polska” (some of which are preceded by a hyphen), 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.

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.

Panels have held that the use of a domain name for illegitimate activity, here, claimed impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

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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 the Respondent was aware of the Complainant’s trademark as the websites to which the disputed domain names resolve display the Complainant’s trademark and purport to sell clothing items, which is the Complainant’s line of business. Additionally, the Complainant’s trademark is reproduced in the disputed domain names along with names of countries, which represent the Complainant’s geographical presence. Another indication of knowledge is that the registration of the Complainant’s trademark long predates the creation of the disputed domain names.

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.

Panels have held that the use of a domain name for illegitimate activity, here, claimed impersonation/passing
off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the

Respondent’s registration and use of the disputed domain names constitutes 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 <fatface-ireland.com>, <fatfaceireland.com>, <fatfacepolska.com>, <fatfaceunitedkingdom.com>, and <fatface-usa.com> be transferred to the Complainant.

/Nayiri Boghossian/
Nayiri Boghossian
Sole Panelist
Date: June 16, 2025