Deckers Outdoor Corporation v. Rongchun Huang and Yuan Chen
Claim Number: FA0902001248979
Complainant is Deckers
Outdoor Corporation (“Complainant”), represented by Justin R. Gaudio, of Greer, Burns & Crain, Ltd.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <aboutugg.com>, <allofugg.com>, <charmingugg.com>, <cuteugg.com>, <dandanugg.com>, <dearugg.com>, <fallinugg.com>, <gogougg.com>, <hellougg.com>, <hotugg.com>, <kicksugg.com>, <leon-ugg.com>, <moreugg.com>, <prettyugg.com>, <retailugg.com>, <showugg.com>, <superugg.com>, <touchugg.com>, <ugg100.com>, <ugg888.com>, <uggbeauty.com>, <uggboots-store.com>, <uggbuy.com>, <uggdreams.com>, <uggheaven.com>, <ugghome.com>, <ugghot.com>, <uggkingdom.com>, <uggsbeach.com>, <uggsharing.com>, <uggstory.com>, and <uggszone.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 24, 2009.
On February 23, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <aboutugg.com>, <allofugg.com>, <charmingugg.com>, <cuteugg.com>, <dandanugg.com>, <dearugg.com>, <fallinugg.com>, <gogougg.com>, <hellougg.com>, <hotugg.com>, <kicksugg.com>, <leon-ugg.com>, <moreugg.com>, <prettyugg.com>, <retailugg.com>, <showugg.com>, <superugg.com>, <touchugg.com>, <ugg100.com>, <ugg888.com>, <uggbeauty.com>, <uggboots-store.com>, <uggbuy.com>, <uggdreams.com>, <uggheaven.com>, <ugghome.com>, <ugghot.com>, <uggkingdom.com>, <uggsbeach.com>, <uggsharing.com>, <uggstory.com>, and <uggszone.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 25, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@aboutugg.com, postmaster@allofugg.com, postmaster@charmingugg.com, postmaster@cuteugg.com, postmaster@dandanugg.com, postmaster@dearugg.com, postmaster@fallinugg.com, postmaster@gogougg.com, postmaster@hellougg.com, postmaster@hotugg.com, postmaster@kicksugg.com, postmaster@leon-ugg.com, postmaster@moreugg.com, postmaster@prettyugg.com, postmaster@retailugg.com, postmaster@showugg.com, postmaster@superugg.com, postmaster@touchugg.com, postmaster@ugg100.com, postmaster@ugg888.com, postmaster@uggbeauty.com, postmaster@uggboots-store.com, postmaster@uggbuy.com, postmaster@uggdreams.com, postmaster@uggheaven.com, postmaster@ugghome.com, postmaster@ugghot.com, postmaster@uggkingdom.com, postmaster@uggsbeach.com, postmaster@uggsharing.com, postmaster@uggstory.com, and postmaster@uggszone.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aboutugg.com>, <allofugg.com>, <charmingugg.com>, <cuteugg.com>, <dandanugg.com>, <dearugg.com>, <fallinugg.com>, <gogougg.com>, <hellougg.com>, <hotugg.com>, <kicksugg.com>, <leon-ugg.com>, <moreugg.com>, <prettyugg.com>, <retailugg.com>, <showugg.com>, <superugg.com>, <touchugg.com>, <ugg100.com>, <ugg888.com>, <uggbeauty.com>, <uggboots-store.com>, <uggbuy.com>, <uggdreams.com>, <uggheaven.com>, <ugghome.com>, <ugghot.com>, <uggkingdom.com>, <uggsbeach.com>, <uggsharing.com>, <uggstory.com>, and <uggszone.com> domain names are confusingly similar to Complainant’s UGG mark.
2. Respondent does not have any rights or legitimate interests in the <aboutugg.com>, <allofugg.com>, <charmingugg.com>, <cuteugg.com>, <dandanugg.com>, <dearugg.com>, <fallinugg.com>, <gogougg.com>, <hellougg.com>, <hotugg.com>, <kicksugg.com>, <leon-ugg.com>, <moreugg.com>, <prettyugg.com>, <retailugg.com>, <showugg.com>, <superugg.com>, <touchugg.com>, <ugg100.com>, <ugg888.com>, <uggbeauty.com>, <uggboots-store.com>, <uggbuy.com>, <uggdreams.com>, <uggheaven.com>, <ugghome.com>, <ugghot.com>, <uggkingdom.com>, <uggsbeach.com>, <uggsharing.com>, <uggstory.com>, and <uggszone.com> domain names.
3. Respondent registered and used the <aboutugg.com>, <allofugg.com>, <charmingugg.com>, <cuteugg.com>, <dandanugg.com>, <dearugg.com>, <fallinugg.com>, <gogougg.com>, <hellougg.com>, <hotugg.com>, <kicksugg.com>, <leon-ugg.com>, <moreugg.com>, <prettyugg.com>, <retailugg.com>, <showugg.com>, <superugg.com>, <touchugg.com>, <ugg100.com>, <ugg888.com>, <uggbeauty.com>, <uggboots-store.com>, <uggbuy.com>, <uggdreams.com>, <uggheaven.com>, <ugghome.com>, <ugghot.com>, <uggkingdom.com>, <uggsbeach.com>, <uggsharing.com>, <uggstory.com>, and <uggszone.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Deckers Outdoor Corporation, is a footwear manufacturer. Complainant markets sheepskin boots, slippers, shoes, purses and other related products under its UGG mark, which it has registered with multiple governmental trademark authorities including the Chinese trademark authority (Reg. No. 905,813 issued October 14, 1996); the Australian trademark authority (Reg. No. 785,466 issued August 2, 2000); and the European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No 1,409,721 issued January 31, 2001).
Respondent registered the disputed domain names between August 18, 2008 and December 20, 2008. The <charmingugg.com>, <dandanugg.com>, <gogougg.com>, <moreugg.com>, <prettyugg.com>, <ugg100.com>, <uggbeauty.com>, <uggsbeach.com>, and <uggsharing.com> domain names do not resolve to active websites. The remaining disputed domain names resolve to websites that use Complainant’s UGG mark, as well as Complainant’s copyrighted product photographs to offer unauthenticated versions of Complainant’s products for sale.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has provided evidence of the registration of its
UGG mark with multiple governmental authorities including the Chinese and
Australian trademark authorities, and the OHIM.
The Panel finds these registrations amply demonstrate Complainant’s
rights in its UGG mark under Policy ¶ 4(a)(i).
See Miller Brewing
Complainant contends Respondent’s disputed domain names are confusingly similar to Complainant’s UGG mark. The disputed domain names each contain Complainant’s UGG mark in its entirety with some or all of the following alterations: the pluralization of the UGG mark; the addition of descriptive and/or generic terms; the addition of a hyphen; and/or the addition of the generic top-level domain “.com.” These alterations do not detract from the dominant feature of the disputed domain names, which is Complainant’s UGG mark. Therefore, the Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s UGG mark under Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not possess rights or legitimate interests in the disputed domain names. Complainant must present a prima facie case to support these allegations before the burden shifts to Respondent to prove it does have rights or legitimate interests. The Panel finds Complainant has presented an adequate prima facie case to support its allegations and Respondent has failed to respond to these proceedings. Therefore, the Panel may conclude Respondent does not possess rights or legitimate interests in the disputed domain names. The Panel, however, will examine the record and determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Respondent’s <aboutugg.com>, <allofugg.com>, <cuteugg.com>, <dearugg.com>, <fallinugg.com>,
<hellougg.com>, <hotugg.com>, <kicksugg.com>,
<leon-ugg.com>, <retailugg.com>,
<showugg.com>, <superugg.com>, <touchugg.com>, <ugg888.com>, <uggboots-store.com>,
<uggbuy.com>, <uggdreams.com>, <uggheaven.com>,
<ugghome.com>, <ugghot.com>, <uggkingdom.com>,
<uggstory.com>, and <uggszone.com> domain
names each resolve to websites that display Complainant’s marks and copyrighted
product photographs and offer unauthentic versions of Complainant’s products
for sale. The Panel finds Respondent’s
use of these disputed domain names is not a bona
fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See
Hewlett-Packard Co. v. Inversiones HP Milenium
Respondent’s remaining disputed domain names each fail to resolve to an active website. The Panel finds Respondent’s failure to make an active use of these disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name).
Complainant asserts Respondent is not commonly known by the
disputed domain names, because Complainant has not authorized Respondent to use
its mark and nothing in the WHOIS information indicates Respondent has ever
been commonly known by the disputed domain names. The Panel agrees, and finds Respondent is not
commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The <aboutugg.com>, <allofugg.com>, <cuteugg.com>, <dearugg.com>, <fallinugg.com>, <hellougg.com>, <hotugg.com>, <kicksugg.com>, <leon-ugg.com>, <retailugg.com>, <showugg.com>, <superugg.com>, <touchugg.com>, <ugg888.com>, <uggboots-store.com>, <uggbuy.com>, <uggdreams.com>, <uggheaven.com>, <ugghome.com>, <ugghot.com>, <uggkingdom.com>, <uggstory.com>, and <uggszone.com> domain names resolve to websites where unauthenticated versions of Complainant’s products are offered and Complainant’s trademark and copyrighted product photographs are displayed. The Panel finds Respondent is attempting to disrupt Complainant’s business through its use of these disputed domain names, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Complainant also contends Respondent profits from its sale of unauthenticated versions of Complainant’s products at these confusingly similar disputed domain names. The Panel finds this is evidence Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv) by attempting to profit from the goodwill Complainant has established in its UGG mark. See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Furthermore, Respondent’s <charmingugg.com>, <dandanugg.com>, <gogougg.com>, <moreugg.com>, <prettyugg.com>, <ugg100.com>, <uggbeauty.com>, <uggsbeach.com>, and <uggsharing.com> domain names do not resolve to active websites. The Panel finds Respondent’s failure to make an active use of these disputed domain names is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to make an active use of a domain name permits an inference of registration and use in bad faith).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aboutugg.com>, <allofugg.com>, <charmingugg.com>, <cuteugg.com>, <dandanugg.com>, <dearugg.com>, <fallinugg.com>, <gogougg.com>, <hellougg.com>, <hotugg.com>, <kicksugg.com>, <leon-ugg.com>, <moreugg.com>, <prettyugg.com>, <retailugg.com>, <showugg.com>, <superugg.com>, <touchugg.com>, <ugg100.com>, <ugg888.com>, <uggbeauty.com>, <uggboots-store.com>, <uggbuy.com>, <uggdreams.com>, <uggheaven.com>, <ugghome.com>, <ugghot.com>, <uggkingdom.com>, <uggsbeach.com>, <uggsharing.com>, <uggstory.com>, and <uggszone.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: April 10, 2009
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