SURCOUF mark owner sinks cybersquatter

A panellist at the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre has ordered the transfer of the domain name 'fucksurcouf.com' to Surcouf, a large computer reseller based in France.

Surcouf filed a complaint with WIPO under the Uniform Domain Name Dispute Resolution Policy (UDRP) against Topsafelistbiz.com, the registrant of the 'fucksurcouf.com' domain name. To succeed, Surcouf had to establish the following three elements set out in Paragraph 4(a) of the UDRP:

• the domain name registered by the respondent was identical or confusingly similar to a trademark or service mark in which the complainant had rights;
  
  
• the respondent had no rights or legitimate interests in the domain name; and
  
  
• the domain name had been registered and used in bad faith.

The WIPO panellist was of the opinion that the use of the common or generic word 'fuck' in the domain name did not eliminate the confusing similarity between Surcouf's SURCOUF trademark and the domain name. Surcouf was perhaps fortunate to receive a favourable decision in this regard as certain panellists have found that the addition of a negative prefix eliminates confusion (see, for example, Wal-Mart denied transfer of 'boycottwalmart.com').

Turning to the two other requirements of the UDRP, the panellist rejected the claim that Topsafelistbiz.com had registered the domain name for use in connection with a protest site. According to Paragraph 4(c)(iii) of the UDRP, this could have indeed constituted a legitimate non-commercial use of the domain name, and thus a legitimate interest. However, the panellist found otherwise as the website at the disputed domain name was offering click-through advertisements.

According to the panellist this established bad faith in both registration and use of the domain name. She therefore ordered the transfer of the domain name.

David Taylor and Charles Simon, Lovells, Paris