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#Fcuk you .com : #WIPO panelist won’t accept #domain Respondent’s argument

ZFBot

The registrant of the domain FcukYou.com desired to use it as an obvious anagram of the phrase, “fuck you.”

The problem is that a British company registered the FCUK mark in the UK two decades ago, in connection to clothing.

The case went to the WIPO via the UDRP process, and the Respondent cried foul over the use of the domain:

“Respondent argues that he did not register the disputed domain name based on Complainant’s FCUK mark. In that regard, Respondent concedes that while FCUK is an acronym that has been adopted by Complainant for “French Connection United Kingdom,”. Respondent registered the disputed domain name based on the well-known English slang expression “f*ck you”. Respondent also contends that there is no evidence that Complainant has ever objected to a use of FCUK when used as part of that well-known English slang expression.”

As it happens, the Respondent reached out to the Complainant to sell the domain, not as a generic, slang anagram of the “fuck you” expression, but as an enhancement of their brand. Indeed, the WIPO panelist was not convinced by the Respondent’s motives:

“To be sure, the disputed domain name could be seen as a play on the common English slang expression “f*ck you.” Respondent has claimed that this was his intent. However, the evidence before the Panel suggests that while Respondent claims to have registered the disputed domain name for its connection to the expression “f*uck you,” Respondent’s likely intent was to cleverly take advantage of the FCUK mark and its connection to Complainant. Less than 24 hours after the registering the disputed domain name, Respondent was already peddling the name to Complainant with brand-related statements such as “www.fcuk.com is very well suited for your industry and owning such a name will attract relevant consumers” and “[c]urrently, Google shows a monthly search volume of 1,000 for ‘fcukyou’ brand name”. In view of Respondent’s concession (a day after registering the disputed domain name) that Complainant’s FCUK brand is well-known, it strains credibility that Respondent was unaware of Complainant, registered the disputed domain name for an unspecified business, and did so solely as a scrambled version of the English slang expression “fcuk you”. Simply put, Respondent’s claims ring hollow and pretextual.”

For the record, the domain FcukYou.com was registered and dropped several times between 1999 and 2019 – the latest registration date as recorded in this UDRP.

Final decision: transfer the domain fcukyou.com to the Complainant, and a clear “fcuk you” to the Respondent. Full details on this decision follow:

French Connection Limited v. Arun Saklani, LUCKMAN BOSS GROUP
Case No. D2019-1427

1. The Parties

Complainant is French Connection Limited, United Kingdom, represented by Baker & McKenzie, United Kingdom.

Respondent is Arun Saklani, LUCKMAN BOSS GROUP, India, self-represented.

2. The Domain Name and Registrar

The disputed domain name <fcukyou.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2019. On June 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on June 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2019. The Response was filed with the Center on July 15, 2019.

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on July 26, 2019. 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

Complainant, French Connection Limited, is a wholesaler of men’s and women’s clothing and accessories. Complainant is the owner of several trademark registrations for the mark FCUK in connection with clothing and accessories in the United Kingdom (Nos. UK00002130833, registered November 21, 1997, and UK00002184549, registered on June 4, 1999), and the European Union (Nos. 000743112, registered on September 3, 1999, 3098472, registered on June 9, 2005, 1080258, registered on May 11, 2000, and 945584, registered on February 2, 2000).

Respondent is an individual in India. Respondent registered the disputed domain name on May 6, 2019. Respondent wrote to Complainant on May 7, 2019, and offered to sell the disputed domain name to Complainant. In a subsequent communication on May 12, 2019, Respondent offered to sell the disputed domain name to Complainant for USD 24,999. The disputed domain name currently resolves to a GoDaddy.com parked page with links to third-party offerings.

5. Parties’ Contentions

A. Complainant

Complainant contends that it owns rights in the mark FCUK by virtue of Complainant’s trademark registrations for the FCUK mark in the United Kingdom and the European Union.

Complainant argues that the disputed domain name is confusingly similar to Complainant’s FCUK mark because it fully incorporates the FCUK mark with the non-distinguishing pronoun “you.”

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) had no authorization from Complainant to register a domain name that consists of the FCUK mark, (ii) has not used the disputed domain name for an active website but has posted a parked page that advertises the sale of the disputed domain name and includes links to third party goods and services, (iii) is not commonly known by the disputed domain name or the FCUK name and mark, and (iii) has merely sought to exploit the FCUK name and mark for profit as Respondent registered the disputed domain name primarily for the purpose of selling such to Complainant.

Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith. Complainant argues that Respondent was clearly aware of Complainant’s rights in the FCUK mark given that Respondent approached Complainant on May 7, 2019, a day after registering the disputed domain name, to sell the disputed domain name for USD 24,999. Based on Respondent’s actions, Complainant maintains that Respondent’s intent in registering the disputed domain name was primarily for the purpose of selling such to Complainant for profit.

B. Respondent

Respondent rejects Complainant’s contentions.

Respondent argues that he did not register the disputed domain name based on Complainant’s FCUK mark. In that regard, Respondent concedes that while FCUK is an acronym that has been adopted by Complainant for “French Connection United Kingdom,”. Respondent registered the disputed domain name based on the well-known English slang expression “f*ck you”. Respondent also contends that there is no evidence that Complainant has ever objected to a use of FCUK when used as part of that well-known English slang expression.

Respondent also asserts that because the meaning of Complainant’s acronym FCUK is different from the meaning of the disputed domain name, the two can coexist in the same way that many brands do with a similar name in different areas of interest.

Respondent rejects Complainant’s contention that he bought the disputed domain name for profit. Respondent maintains that he is an app developer and website designer managing several websites and mobile applications and that he registered the disputed domain name for a project he was planning to develop. That project, however, was postponed as Respondent was too busy on other projects. Respondent asserts that he was unaware of Complainant and the FCUK brand when he registered the disputed domain name and only learned of the use of FCUK by Complainant from domain name suggestions provided by the Registrar at some point long after Respondent had registered the disputed domain name. Respondent also contends that the parked page at the disputed domain name was provided by the Registrar and was not created or controlled by Respondent.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns trademark registrations for the FCUK mark in connection with its clothing, accessories, and related products and services that issued well before Respondent registered the disputed domain name.

With Complainant’s rights in the FCUK mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) such as “.com”) is identical or confusingly similar with Complainant’s mark. See, B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is reasonably low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.

In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s FCUK mark as it fully incorporates the FCUK mark at the head of the disputed domain name. The use of the common pronoun “you” at the tail of the disputed domain name does not distinguish the disputed domain name for purposes of the first element, as FCUK is fully incorporated in and recognizable in the disputed domain name. See section 1.8 of the WIPO Overview 3.0. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s FCUK mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. See section 2.1 of the WIPO Overview 3.0.

In this proceeding, Respondent maintains that he was unaware of Complainant or the FCUK mark at the time he registered the disputed domain name. According to Respondent he learned of Complainant as follows: “According to Godaddy’s website suggestion, they showed me some other domain names, as the name of my domain, so I got the French Connection brand information from there (But I want to clarify that this happened after a long time of buying my domain name). Then I mailed them (French Connection United Kingdom) for buying my domain name (Only if they are interested).”

Respondent also maintains that he registered the disputed domain name as essentially a typo version of the common English slang expression “f*ck you,” and that he did so for a project he wanted to develop but ultimately postponed. In that regard, the Panel notes that Respondent has provided no details regarding the nature his planned project or any evidence showing that Respondent was planning to develop a project with the disputed domain name.

To be sure, the timing of Respondent’s attempt to sell the disputed domain name to Complainant makes Respondent’s claims suspicious. Respondent registered the disputed domain name on May 6, 2019, and then on May 7, 2019, contacted Complainant to offer the disputed domain name for sale. This does not appear to be a “long time” as Respondent claims and suggests that Respondent more likely than not registered the disputed domain name for purposes of selling it and not for some unspecified project. Further undermining Respondent’s claims are the communications sent from Respondent to Complainant. On May 7, 2019, Respondent wrote to Complainant and in the very first paragraph of his email advised that “[w]e have this registered ‘www.fcukyou.com’ for sale. We thought it is most suitable for your company brand since 1970s French Connection Group can be applied for your company and business activities. Since you are in the fashion clothing business, I thought that you might like to know that I am selling the domain name.” The rest of Respondent’s email espouses the value of the disputed domain name and how it could benefit Complainant. In subsequent communications, Respondent concedes that the “fcuk brand is famous all over the world, that’s why I mailed you first, regarding transferring domain to your company.”

To be sure, the disputed domain name could be seen as a play on the common English slang expression “f*ck you.” Respondent has claimed that this was his intent. However, the evidence before the Panel suggests that while Respondent claims to have registered the disputed domain name for its connection to the expression “f*uck you,” Respondent’s likely intent was to cleverly take advantage of the FCUK mark and its connection to Complainant. Less than 24 hours after the registering the disputed domain name, Respondent was already peddling the name to Complainant with brand-related statements such as “www.fcuk.com is very well suited for your industry and owning such a name will attract relevant consumers” and “[c]urrently, Google shows a monthly search volume of 1,000 for ‘fcukyou’ brand name”. In view of Respondent’s concession (a day after registering the disputed domain name) that Complainant’s FCUK brand is well-known, it strains credibility that Respondent was unaware of Complainant, registered the disputed domain name for an unspecified business, and did so solely as a scrambled version of the English slang expression “fcuk you”. Simply put, Respondent’s claims ring hollow and pretextual.

Given that Complainant has established with sufficient evidence that it owns rights in the FCUK mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith

Given that Respondent has registered the disputed domain name that fully incorporates Complainant’s FCUK mark, and then contacted Complainant less than 24 hours later to sell the disputed domain name, it is easy to infer that Respondent was likely aware of Complainant’s mark when Respondent registered the disputed domain name. In view of (i) Respondent’s failure to provide any evidence regarding the claimed project for which he allegedly planned to use the disputed domain name, (ii) the timing and content of Respondent’s communications offering the disputed to name for sale to Complainant, and (iii) Respondent’s concession that Complainant’s FCUK mark is well known, it is more likely than not that Respondent opportunistically and in bad faith registered and used the disputed domain name which is based on Complainant’s FCUK mark for purposes of reselling it to Complainant for profit. Accordingly, the Panel finds that Complainant succeeds under this 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 name <fcukyou.com> be transferred to Complainant.

Georges Nahitchevansky
Sole Panelist
Date: August 12, 2019


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