French Connection v Sutton, 2000 ETMR 341
Citation:French Connection v Sutton, 2000 ETMR 341
Rule of thumb 1: Can you purchase domains or trade marks then try to sell them to organisations? As a general rule, yes, however, if it is manipulation of goodwill an exception may be made that this is improper.
Rule of thumb 2: If a person buys a domain name or other trade mark name purely to seek to sell it to an organisation who has been using it but not yet registered it, does the organisation have to pay premium rate for this? As a general rule, no, however, if it clear that this has been a manipulation of the organisation’s goodwill by the registrant then an exception could be made.
Judgment:
Where someone has registered the name of a unique brand as a website domain then this can be challenged, although if the trading name is not unique and has other meaning then this will be refused. The facts of this case were that FCUK were doing a lot of trading in fashion goods. Mr Sutton bought the domain name FCUK.com and tried to sell it to FCUK. The Court held that FCUK was not a household brand name which everyone in society would associate with FCUK’s fashion clothing, with many people using it as an alternative to FUCK and associating it with erotic or pornographic content, meaning that Sutton was entitled to register this. If FCUK was a household brand name widely known throughout society then Sutton would not have been allowed to do this, ‘... the letters FCUK together in that order was a well-known alternative used by people on the internet as a means of circumventing various filters which were imposed by certain internet service providers to prevent the use of the expletive FUCK... He thought that it might improve the level of custom for his business if he attracted to it unsuspecting person interested in accessing a pornographic website...’
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