French Connection Limited (French Connection) has just won an important victory before the World Intellectual Property Organization Arbitration and Mediation Center (WIPO) in gaining the transfer of the domain name www.fcuklifestyle.com.

French Connection had alleged that the domain name improperly incorporated French Connection's FCUK trademark and that the corresponding web site was designed intentionally to attract Internet users for commercial gain by creating a likelihood of confusion with the FCUK mark as to the sponsorship of the site. The three-member WIPO panel agreed with French Connection, found that www.fcuklifestyle.com was registered in bad faith, and ordered the transfer of domain name to French Connection.

French Connection is involved in the design and retail of clothing and grooming products, and has been using FCUK (based upon its company name and its headquarters location in the United Kingdom) as a trademark since 1997. French Connection is the holder of over sixty international trademark registrations for the FCUK mark, or marks incorporating FCUK, including registrations in every continent.

French Connection initiated an arbitration proceeding with WIPO against Daniel Bradley, the registrant of www.fcuklifestyle.com (the registrant), after informal attempts to persuade him to transfer the domain name voluntarily proved unsuccessful. Rather than acknowledge the infringing nature of the domain name, the registrant's response was to demand that French Connection pay substantial sums to him for the domain name. French Connection's response was that its trademarks easily can be found by anyone making even the most cursory search, and its policy is not to pay for domain names that are improperly registered by other parties that infringe on French Connection's trademarks.

French Connection's contentions

French Connection asserted the following contentions in the arbitration:

1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which French Connection has rights.

2. The use of www.fcuklifestyle.com is identical or at minimum confusingly similar to the use of the term "FCUK" as registered and used by French Connection. Specifically, www.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 the registrant's disputed domain name is associated with French Connection.

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

4. The registrant has no rights or legitimate interests with respect to the domain name.

5. It would be extremely difficult for the registrant to show that he has rights or legitimate interests in the disputed domain name because it is confusingly similar to French Connection's well known mark.

6. There is no evidence to show that the registrant is commonly known by the www.fcuklifestyle.com domain name. Therefore, the registrant does not have rights or legitimate interests in the disputed domain name.

7. The registrant never has requested a license, and never has acquired authorization from French Connection to use its mark.

8. There is no evidence that the registrant has been 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.

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

10. 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 the registrant has been seeking monetary sums from French Connection for transfer of the domain name at issue.

11. Use of the domain name at issue constitutes an intentional attempt to attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the French Connection'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.

The registrant's failure to respond

The registrant did not submit any opposition to the contentions submitted to WIPO by French Connection.

The WIPO decision

The three-member WIPO panel, consisting of Peter G. Nitter, David W. Quinto and Ik-Hyun Seo, ruled categorically in favor of French Connection, as follows:

• Identical or Confusingly Similar

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

2. The domain name at issue consists of French Connection's trade mark, with the addition of a generic term and the ".com" ending.

3. In previous WIPO decisions, 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 pertains 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.

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

• Rights or Legitimate Interests

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

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

3. French Connection has shown that it has used considerable resources in making its trade mark FCUK well known, and that it now is of great value to French Connection. In light of this, the WIPO panel has no reason not to believe French Connection's assertion that it has not authorized the registrant's use of the mark in any way.

4. The WIPO panel subscribes to French Connection's assertion that there is no evidence to show that the registrant is commonly known by the contested domain name, or the FCUK name or any variations thereof.

5. The WIPO panel furthermore finds that there is no evidence that the registrant 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, French Connection has documented that the web site corresponding to the domain name has been in use for commercial purposes.

6. In light of the above, the WIPO panel concludes that French Connection has made a showing that the registrant does not have any rights or legitimate interests in the disputed domain name.

• Registered and Used in Bad Faith

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

2. The content on the registrant's web site is furthermore, in the view of the WIPO panel, an indication of the registrant's intent to take advantage of French Connection's fame and goodwill.

3. The evidence brought forward by French Connection thus indicates that the registrant 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 French Connection's mark as to the source, sponsorship, affiliation, or endorsement of French Connection's web site or location, or of products on such web site, and that the registrant's conduct thus shows evidence of bad faith.

4. The fact that the registrant has offered to sell the domain name at issue to French Connection for a substantial amount is in the opinion of the WIPO not in itself decisive evidence of bad faith in the present case. In light of the fact that the registrant must have been aware of French Connection's trademark rights at the time of the registration, his seeking of monetary sums in order to transfer the domain name to French Connection may, however, be seen as a further indication of bad faith.

5. In light of the above, the WIPO panel concludes that the registrant has registered and is using the domain name at issue in bad faith.

End result

Based on all of the foregoing, the WIPO panel ordered the transfer of www.fcuklifestyle.com to French Connection.

Bolstered by this victory, French Connection likely will continue to be quite active in policing, protecting and enforcing its trademarks in Cyberspace and elsewhere. And the larger lesson learned is that those seeking to register domain names should take care not to choose names that incorporate the trademarks of others.

Eric Sinrod is a partner in the San Francisco office of Duane Morris (www.duanemorris.com), where he focuses on litigation matters of various types, including information technology disputes. His column appears Wednesdays at USATODAY.com. His Web site is www.sinrodlaw.com, and he can be reached at . To receive a weekly e-mail link to Mr. Sinrod's columns, please send an e-mail with the word Subscribe in the Subject line to .

Reprinted here with permission from USAToday.com.