The company French Connection Limited from the United Kingdom (FCUK) has successfully filed a complaint with WIPO (World Intellectual Property Organization). The defendant domain fcukyou.com is now to be transferred to FCUK's portfolio following a decision by WIPO.
The complainant sells clothing and accessories for women and men. She is the owner of several trademarks with the name "FCUK" in the United Kingdom and the European Union. In her complaint, she claims that she has registered such trademarks. She also observes that the disputed domain fcukyou.com is confusingly similar to the registered trademarks and is merely supplemented by the non-distinctive pronoun "you". She claims that the domain owner has neither rights nor a legitimate interest in the disputed domain, that he is not known by this name, that the domain name is not used for an active website and that, finally, a purchase offer of USD 24,999 is merely an attempt to generate profit from the registration. The complainant alleges that the disputed domain name is registered and used in bad faith. She argues that the domain owner must have been aware of the FCUK trademark: one day after registration had taken place, he offered the domain to the complainant for sale.
The respondent, a private individual from India, states in his response that he registered the domain on the basis of the well-known English insult "F*ck you". Furthermore, the disputed domain differs from the respondent's registered trademarks and could therefore coexist due to the different areas of interest. He also claims that he did not know the registered trademark FCUK at the time of registration and that he was only made aware of it much later on the basis of information provided by the registrar.
WIPO is examining in appeal proceedings whether
- the disputed domain is identical or confusingly similar,
- there are rights or a legitimate interest, and
- the domain has been maliciously registered and used.
In this case, WIPO came to the following conclusion:
WIPO states that No. 1 applies: the domain is identical or confusingly similar to the protected trademark. In this case, the use of the pronoun after naming the trademark does not lead to a distinction.
WIPO also regards No. 2 as proven. Above all, the fact that the respondent does not provide a plausible explanation for a legitimate interest leads to this assessment. He states that he has registered the domain for a project, but does not provide any further details. He also mentions in his statement a long period in which he did not even know the trademark. The facts prove that this period is less than 24 hours. The WIPO also has extracts from the letter on the purchase offer in which the respondent certifies that the trademark is known throughout the world.
WIPO considers it more likely that No. 3 applies than that it does not. The lack of evidence for the defendant's stated project, the period between registration of the domain and notification of purchase to the complainant as well as the defendant's concession to know the trademark and the FCUK company lead to this assessment.
As WIPO agrees with all three points of examination, it decides to transfer the domain fcukyou.com to the complainant. The detailed decision D2019-1427 can be viewed and read on the WIPO website.
The last point in particular is often difficult to prove in appeal proceedings. It may therefore be worthwhile initiating an appeal procedure with WIPO if the period between registering a domain and contacting it - as in this example with an offer to buy - appears to be relatively short. It would have been more advantageous to register such domains as a precaution, especially with this brand name.