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French Connection Limited v. Daniel Bradley [2004] GENDND 1472 (22 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

French Connection Limited v. Daniel Bradley

Case No. D2004-0763

1. The Parties

The Complainant is French Connection Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Duane Morris LLP, United States of America.

The Respondent is Daniel Bradley, Roselle, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <fcuklifestyle.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2004. On September 14, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On September 14, 2004, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 21, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2004.

The Center appointed Peter G. Nitter, David, W. Quinto and Ik-Hyun Seo as panelists in this matter on November 8, 2004. The Panel finds that it was properly constituted. Each member of 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 is involved in the design and retail of clothing and grooming products. Complainant has been using FCUK as a trade mark since 1997. Complainant is the holder of over sixty international trademark registrations for the FCUK mark, or marks incorporating FCUK, including registrations on every continent and in Respondent’s country of residence.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The use of <fcuklifestyle.com> is identical or at minimum confusingly similar to the use of the term “FCUK” as registered and used by French Connection. Specifically, <fcuklifestyle.com> fully incorporates the trademarked term FCUK, and adds the generic term “lifestyle” and the generic top level domain “com.” Internet users are likely to mistakenly assume that Respondent’s disputed domain name is associated with Complainant.

It is well established that the addition of a single, generic term to an otherwise strong trademark does not necessarily eliminate or even reduce the risk of confusion between a trademark and a domain name.” Buy Owner International, Inc. v. John Frank, WIPO Case No. D2002-0407 (July 23, 2002).

The Respondent has no rights or legitimate interests in respect of the domain name.

It would be extremely difficult for Respondent to show that it has rights or legitimate interests in the disputed domain name because it is confusingly similar to Complainant’s well known mark.

There is no evidence to show that Respondent is commonly known by the www.fcuklifestyle.com domain name. Therefore, Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy 4(c)(ii).

Respondent has never requested a license, and has never acquired authorization from Complainant to use Complainant’s mark.

There is no evidence that prior to the current dispute Respondent was using the domain name at issue in connection with a bona fide offering of goods or services, or making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain.

The domain name was registered and is being used in bad faith.

At least one of the reasons the domain name at issue was registered was to profit from subsequent sale or transfer of the domain name to its rightful owner, as Respondent has been seeking monetary sums for transfer of the domain name at issue.

Use of the domain name at issue constitutes an intentional attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that web site or location, or of a product or service on that web site or location.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has documented that it has registered rights in the trademark FCUK. Complainant’s mark is not identical to the disputed domain name, and the question is therefore whether there is confusing similarity.

The domain name at issue consists of Complainant’s trade mark, with the addition of a generic term and the “.com” gTLD.

In previous Panel decisions under the Policy, two different views have been expressed as to what shall constitute “confusing similarity.” Some panels have used what could be referred to as a “subjective test”, seeking to determine whether an Internet user confronted with the domain name at issue is likely to be confused with the complainant as to the source or sponsorship of the web site to which the domain name resolves or to the goods or services offered at that web site. Other panels have followed an “objective test”, which holds that a domain name which includes the mark is to be regarded confusingly similar, regardless of the other terms in the domain name. This test is perhaps best enunciated in the case of Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

This Panel has found that the better view is the application of the objective test, and as the domain name at issue includes Complainant’s trade mark FCUK in its entirety, the Panel finds that the domain name at issue is confusingly similar to Complainant’s mark.

B. Rights or Legitimate Interests

Respondent is in default in the present case, and has therefore not asserted any rights or legitimate interest in the contested domain name.

As a result of the fact that it is generally difficult for complainant to prove the negative that respondent does not have any rights or legitimate interests, and that it would be correspondingly easy for respondent to provide evidence of any such rights, it has been established through previous panel decisions under the Policy that it is sufficient for complainant to make a prima facie showing that respondent lacks rights or legitimate interests in the domain name, in the event that Respondent does not give a Response under the proceedings.

Complainant has shown that it has used considerable resources on making its trade mark FCUK well known, and that it now is of great value to Complainant. In light of this the Panel has no reason not to believe Complainant’s assertion that it has not authorized Respondent’s use of the mark in any way.

The Panel subscribes to Complainant’s assertion that there is no evidence to show that Respondent is commonly known by the contested domain name, or the FCUK name or any variations thereof.

The Panel furthermore finds that there is no evidence that that Respondent has been using the domain name at issue in connection with a bona fide offering of goods or services prior to the dispute. On the contrary, Complainant has documented that the web site corresponding to the domain name has been in use for commercial purposes.

In light of the above, the Panel concludes that Respondent has made a prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain name, and that he therefore has satisfied the condition set out in the Policy, paragraph 4(c).

C. Registered and Used in Bad Faith

There are several circumstances indicating that Respondent must have been aware of Complainant’s trade mark at the time of his registration of the domain name at issue. Complainant’s trademark consists of a series of arbitrarily arranged letters, and is not a known word. Complainant has also shown that his trademark is well used in many countries, including Respondent’s country of residence. Furthermore, the content on Respondent’s web site corresponding to the domain name at issue resembles the content on Complainant’s main web site. The combination of the above factors makes it inconceivable to the Panel that Respondent should not have been aware of Complainant’s trade mark when he chose to register the contested domain name.

The content on the Respondent’s web site is furthermore, in the view of the Panel, an indication of Respondent’s intent to take advantage of Complainant’s fame and goodwill.

The evidence brought forward by Complainant thus indicates that Respondent has registered and used the domain name in an intentional attempt to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Complainant’s web site or location, or of products on such web site, and that Respondent’s conduct thus falls under one of the exemplifications of evidence of bad faith set out in the Policy, paragraph 4(b)(iv).

The fact that Respondent has offered to sell the domain name at issue to Complainant for a substantial amount is in the opinion of the Panel not in itself decisive evidence of bad faith in the present case. In light of the fact that Respondent must have been aware of Complainant’s trade mark rights at the time of the registration, his seeking of monetary sums in order to transfer the domain name to Complainant may, however, be seen as a further indication of bad faith, pursuant to the Policy, paragraph 4(b)(i).

In light of the above, the Panel concludes that Respondent has registered and is using the domain name at issue in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <fcuklifestyle.com> be transferred to the Complainant.

Peter G. Nitter
Presiding Panelist

David W. Quinto
Panelist

Ik-Hyun Seo
Panelist

Date: November 22, 2004