UGG Holdings, Inc. and Deckers Outdoor
Corporation v. Paul Barclay d/b/a Australian Made Goods
Claim Number: FA0312000216873
PARTIES
Complainants
are UGG Holdings, Inc. and Deckers Outdoor Corporation, Goleta, CA (collectively,
“Complainant”) represented by Paul
Juettner of Greer, Burns &
Crain, Ltd., Suite 2500, 300 Wacker Drive, Chicago, IL 60606. Respondent is Paul Barclay d/b/a Australian Made Goods,
Vandalia, OH (“Respondent”) represented by R.
William Graham, 22 South St. Clair
St., Dayton, OH 45402.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <ugboots.us>, <ugg.us>, <uggboots.us> and <uggs.us> registered with Register.com.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelists in
this proceeding.
Judge
Carolyn M. Johnson (Ret.) and David H. Tatham as Panelists, and Judge Karl V.
Fink (Ret.) as Chair.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 8, 2003; the Forum received a hard copy of the
Complaint on December 9, 2003.
On
December 10, 2003, Register.com confirmed by e-mail to the Forum that the
domain names <ugboots.us>, <ugg.us>, <uggboots.us> and <uggs.us> are registered with Register.com and that
Respondent is the current registrant of the name. Register.com has verified
that Respondent is bound by the Register.com registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution
Policy (the “Policy”).
On
December 17, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 6, 2004 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
A
timely Response was received and determined to be complete on January 6, 2004.
Complainant
submitted a timely and complete Additional Submission on January 12, 2004.
Respondent
submitted a timely and complete Additional Submission on January 20, 2004.
On January 15, 2004, pursuant to Complainant’s request
to have the dispute decided by a three-member
Panel, the Forum appointed Judge
Carolyn M. Johnson (Ret.) and David H. Tatham as Panelists, and Judge Karl V.
Fink (Ret.) as Chair.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
·
Complainant
UGG Holdings, Inc. is a wholly owned subsidiary of Complainant Deckers Outdoor
Corporation, which created global lifestyle brands by designing and marketing
innovative, functional and outdoor footwear.
UGG Holdings does business under the trade name UGG Australia. Complainant holds numerous registrations for
UGG® and stylized versions and phononyms of “UGG” such as “UHG,” with dates of
use going back to the 1970s. U.S.
Registration No. 1,973,743 is incontestable under American law.
·
Over the
last eight years, Complainant has spent more than seven million dollars
advertising under the UGG brand. UGG®
footwear has moved beyond being a “cult” item among surfers to mainstream
luxury brand. Complainant’s marketing
efforts have resulted in widespread media coverage for the brand in various
fashion and celebrity-oriented magazines.
They have augmented the unsolicited coverage with paid advertising in
upscale magazines.
·
These
efforts have resulted in UGG Holdings achieving worldwide sales of $23.5
million for 2002.
·
Respondent
has no trademark or trade name rights to UGG, UGH or UG. Respondent is not known by any of the
contested domain names.
·
Due to the
fame of Complainant’s trademarks and trade name, it may be inferred that
Respondent has knowledge of the UGG mark and UGG Australia Trade Name, since
they deal in similar goods. Respondent
has constructive notice of the UGG mark by virtue of its registration on the
United States Principal Register.
·
Respondent
is an online seller of Australian-themed products located in Vandalia,
Ohio. Respondent has registered
approximately twenty-seven (27) domains incorporating UGG or its phononyms.
·
Respondent
operates a primary website <australianmadegoods.com> that sells various
products including sheepskin footwear made by another manufacturer.
·
Respondent
is not now and never has been an authorized (or unauthorized) seller of genuine
UGG brand footwear.
·
The domain
names involved are confusingly similar to Complainant’s UGG® trademark and UGG
Australia trade name. The use of
numerous variants and phononyms of UGG, UGH and derivatives of Australia,
coupled with the goods to which Complainant’s marks refer (“Boots”) suggests
that this site is the home of an authorized seller of genuine and authentic
UGG® footwear, if not Complainant’s itself.
However, Respondent is selling knock-off products instead.
·
Where the
trademark is the dominant part of the domain, adding additional “neutral” words
does not render the domain dissimilar to a registered trademark.
·
A domain
name that contains a phononym or spelling variation of a registered trademark
also violates the UDRP. Adding a
geographic descriptor or surname to a trademark similarly does not prevent
confusing similarity. In determining
the similarity of a domain name to a trademark, points of similarity are
weighed more heavily than points of difference.
·
Respondent’s
use of the contested domain names to sell competing goods is not a bona fide
use under the UDRP. Further,
under the UDRP, Complainant’s incontestable U.S. Federal trademark
registrations cannot be challenged.
·
Respondent
is engaged in a pattern of abusive registrations that attempt to improperly
free-ride upon the goodwill that Complainant has built up with the consuming
public and divert prospective customers of Complainant to its sites where it
hawks knock-offs.
·
The fact
that contact information for Respondent was initially false is indicative of
Respondent’s bad faith. Submission of
false contact information on a domain name registration is evidence of bad
faith.
·
Respondent’s
conduct prior to changes instigated by Complainant’s enforcement efforts should
be considered by the Panel in assessing bad faith. In this case, Respondent was engaged in diversion and blocking,
using websites containing infringing metatags to sell competing goods prior to
being reined in by Complainant. This
conduct is directly relevant and demonstrates Respondent’s bad faith.
·
Customers
are being misled and confused.
B.
Respondent
·
Respondent
Paul Barclay d/b/a Barclay Holdings, Inc. markets and sells sheepskin products
through its websites <aussieugs.com> and <australianmadegoods.com>.
Since at least April 2000, Respondent has operated said websites and has
legally registered a number of domain names to facilitate its business, some of
which are complained of by Complainant in the instant Complaint.
·
The focus
of the Panel should properly be on Complainant’s attempt to usurp the clearly
generic terms “UGG” and “UG” away from the public domain. The terms “UGG” and
“UG” remain free for competitors to use to properly describe their goods,
sheepskin boots, and assure that such generic terms remain in the public
domain.
·
The terms “UG,” “UGG,” and “UGH” have always been and remain
generic as to a general type of sheepskin boot. It is clear from the Exhibits
of both parties that the terms “Ug,” “Ugg,” and “Ugh” have been and are now
used by the public to describe a sheepskin boot, not a particular source of the
boot.
·
A generic name for a product in another country cannot be
imported into the United States and be transformed into a valid trademark.
·
The people
behind Uggs-N-Rugs were the first to see the potential for ugg boots. They set
up their business in Western Australia in the 1970s and sell uggs today through
the website <uggs-n-rugs.com.au>.
Subsequently, many versions of ugs/uggs/ughs have been duplicated,
copied and sold far and wide by various competitors.
·
Complainant
and/or assignors obtained their registrations in contravention of conventional
requirements of trademark law. The merely descriptive nature of the term “ugg”
was not brought to the attention of the U.S. Patent and Trademark Office when
these registrations were sought. Had
they been so, the application would never have matured into a registration.
·
The only
valid right Complainant may assert is to its composite mark which includes the
stylized version of “UGG Australia with Sun Logo.”
·
Here, the
“ugg boots” in question are made in Australia.
Respondent is simply choosing to link variation of terms using the
“.com” extension to effect part of a legal competitive business approach.
·
Respondent has acted in good faith and has a legitimate interest with
respect to the domain names.
·
Respondent’s
domain names are not identical to or
confusingly similar to Complainant’s mark.
·
Prior to
the notice of the Complaint, Respondent’s use of the complained of domain names
was in connection with a bona fide offering of goods through its websites. Respondent is making a legitimate
noncommercial or fair use of the domain names which are the subject of the
Complaint, without intent for commercial gain to misleadingly divert consumers
or to tarnish any trademark at issue.
C.
Additional Submissions
·
Respondent has failed to rebut Complainant’s prima facie case, and accordingly a decision in favor of Complainant
is required.
·
Respondent
has not challenged any of the evidence or legal authorities cited in the
Complaint. It does not claim to have
been unaware of the UGG trademark prior to registration of the subject domain
names.
·
Respondent
argues that the UGG trademark is generic.
Under United States law, federal trademark registrations are entitled to
a strong presumption of validity.
·
It is well
established that ICANN UDRP proceedings are inappropriate for determining the
validity of trademarks. “The word
CAMPER is already a registered mark of Complainant and, therefore, Respondent’s
argument regarding the genericness of the word cannot be attacked in this
proceeding.” Camper, S.L. v. DPR USA,
FA 118188 (Nat. Arb, Forum Oct. 22, 2002).
·
In
asserting an argument that UGG is generic, Respondent is asking this Panel to
make a determination on a limited evidentiary record that Complainant’s nearly
40 registrations worldwide are invalid. Respondent’s proper recourse is to
challenge validity before the U.S. Trademark Trial and Appeal Board (as
Respondent has threatened) and the other appropriate governing authorities
throughout the world.
·
The
evidence of record shows that the primary significance of the UGG trademark in
the footwear trade and among American consumers (and consumers worldwide) is
that of a trademark and not as a generic name for the goods.
·
Complainant
and its predecessors have successfully enforced their UGG trademark rights in
the United States, Great Britain, Australia, New Zealand and other countries.
·
The primary significance of the “UGG” trademark in the footwear industry
and among American consumers is as a brand name.
·
UGG is a
famous brand for sheepskin footwear.
The UGG brand was named 2003 “Brand of the Year” (along with Reebok) by Footwear News, a leading footwear
industry publication. Individuals
knowledgeable in the footwear industry testify that UGG is a well-known
footwear brand name.
·
Although
Respondent asserts that UGG has been generic since the 1960s, Respondent has
failed to cite a single article or publication predating Complainant’s trademark
registrations. Respondent’s argument that UGG is generic in Australia is
immaterial to a dispute between American parties.
·
That
infringing use of a mark by others does not excuse the infringement of the
accused.
·
Evidence of actual confusion under marketplace conditions is the best
evidence of a likelihood of confusion.
In addition to the actual confusion cited in the Complaint, additional
actual confusion has more recently occurred.
·
Respondent has offered no evidence to rebut Complainant’s overwhelming
evidence that confusion is likely.
·
To
determine the respective rights of these parties in and to the domain names at
issue, this Panel must, by necessity, consider Complainant’s
trademark. Complainant’s assertion
that this is not the proper forum to address the genericness issue is simply
incorrect. All of the cases directly addressing the genericness issue are far too
numerous to cite in their entirety (the NAF alone references 1777 decisions
addressing the genericness issue).
·
The terms
“ugg” “ug” or “ugh” as applied to the genus of sheepskin boots in question are
simply generic. To permit exclusive trademark rights in a generic name “would
grant the owner of a mark a monopoly, since a competitor could not describe his
goods as what they are.”
·
Respondent’s
domain names are not identical to the asserted mark, nor are they similar to
the asserted mark.
·
In a good
faith attempt to prevent any possible confusion between Complainant and
Respondent and their competing products, Respondent included specific disclaimers and warnings on the web pages
of <australianmadegoods.com> and <aussieugs.com>, its only
currently active websites, which clearly
and conspicuously state that Respondent is not affiliated with Complainant,
and further clearly and specifically
warn consumers that the ugs displayed are not those sold by
Complainant.
·
The mention
of “ugg boots” or “ug boots” in many of Complainant exhibits is only a
reference to sheepskin boots.
·
No evidence
exists that Respondent registered the domain names in order to prevent
Complainant from reflecting “UGG” in a corresponding domain name.
·
Respondent
registered only a relatively small number of the potential myriad of domain
names which can employ the use of the merely descriptive terms in
question. Respondent has done so with
the intent to promote its business in a fair way.
·
Respondent,
long before it had notice of this dispute, used and/or prepared to use, the
domain names in connection with a bona fide offering of goods or services. Respondent is making a legitimate
noncommercial or fair use of the domain names.
Specifically, Respondent is using one or more merely descriptive terms
of the boots themselves and/or origin of the boots, which in no way is with an
intent to commercially gain by misleadingly diverting consumers or to tarnish
Complainant’s asserted mark at issue.
·
Complainant
has known of the Severn’s use of the term “ug boots” on the sale of its boots
for more than a decade and has failed to take any legal action against them to
cease use of such terms as applied to such boots. This also demonstrates that equitable principles, including
laches, estoppel, and acquiescence, are applicable here and the ninth defense
under Title 15 USC Section 1115(b) exists.
FINDINGS
For the reasons set forth below, the Panel finds
Complainant has proved that the domain names should be transferred.
DISCUSSION
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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Complainant
has produced evidence of trademark registrations with the United States Patent
and Trademark Office (“USPTO”) for the UGG mark, including Reg. No. 1,973,743
(registered on May 14, 1996) related to footwear. The Panel finds that these
registrations with the USPTO demonstrate Complainant’s rights in the UGG mark
for purposes of Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence of validity, which creates a
rebuttable presumption that the mark is inherently distinctive. Respondent has
the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”).
Complainant
also provides evidence of trademark registrations for the UGG mark in a number
of countries across the globe. This evidence establishes Complainant’s rights
in the UGG mark under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v.
Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the UDRP does
not require that the mark be registered in the country in which Respondent
operates. It is sufficient that Complainant can demonstrate a mark in some
jurisdiction); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO
Oct. 18, 2000) (holding that UDRP ¶ 4(a)(i) does not require Complainant to
demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis
for making the Complaint in the first place).
Respondent’s
<ugg.us> domain name is identical to Complainant’s mark because
the domain name simply adds the country-code top-level domain (“ccTLD”) “.us”
to the end of the mark. The Panel finds that the addition of the ccTLD “.us”
fails to significantly distinguish the domain name from the mark pursuant to
Policy ¶ 4(a)(i). See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum
Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails
to add any distinguishing characteristic to the domain name, the
<tropar.us> domain name is identical to Complainant’s TROPAR mark); see
also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Respondent’s
substitution of the term “ug” for Complainant’s UGG mark does not differentiate
the <ugboots.us> domain name. See Hewlett-Packard Co. v.
Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a
domain name which is phonetically identical to Complainant’s mark satisfies ¶
4(a)(i) of the UDRP); see also Am. Online, Inc. v. Peppler dba
RealTimeInternet.com, FA 103437 (Nat. Arb. Forum Feb. 22, 2002) (finding
the word “quest” and “crest” to be similar in sound and, thus, that
Respondent’s <mapcrest.com> domain name and Complainant’s MAP QUEST mark
are confusingly similar).
Complainant
contends that Respondent’s <ugboots.us>, <uggboots.us>
and <uggs.us> domain names are confusingly similar to
Complainant’s UGG mark because the disputed domain names appropriate Complainant’s
mark, or a phonetically identical variation thereof, and add the generic or
descriptive term “boots” or the letter “s” to the mark. The addition of neither
the term “boots” nor the letter “s” sufficiently differentiates the domain
names from the mark under Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v.
Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the
addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract
from the overall impression of the dominant part of the name in each case,
namely the trademark SONY” and thus UDRP ¶ 4(a)(i) is satisfied); see also
Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business); see also Blue Cross & Blue Shield Ass’n v.
InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding
that a domain name which merely adds the letter “s” to Complainant’s mark is
sufficiently similar to the mark to cause a likelihood of confusion among the
users of Complainant’s services and those who were to view a website provided
by Respondent accessed through the contested domain name); see also Nat’l Geographic
Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding
that the domain name <nationalgeographics.com> was confusingly similar to
Complainant’s “National Geographic” mark); see also Diageo plc v. John
Zuccarini, individually and t/a Cupcake Patrol, D2000 - 0996 (WIPO Oct. 22,
2000) (finding confusing similarity where Respondent's series of 11 domain
names consisted of Complainant's trademark followed by between two and five
generic terms). This finding applied the test for similarity between a domain
name and a trademark laid down by the U.S. Court for the Ninth Circuit in AMF
Inc v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).
Complainant
proved this element.
Complainant
asserts that Respondent is using the <ugboots.us>, <ugg.us>,
<uggboots.us> and <uggs.us> domain names to redirect
Internet traffic to Respondent’s <australianmadegoods.com> and
<aussieugs.com> domain names, which offer for sale various products such
as sheepskin footwear manufactured by a competitor of Complainant. The Panel
finds that Respondent’s use of the disputed domain names to sell competing
products does not represent a bona fide offering of goods or services under
Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iv). See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321
(Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of
Complainant’s mark to market products that compete with Complainant’s goods
does not constitute a bona fide offering of goods and services); see also
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that Respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services).
Complainant
maintains that Respondent does not own trademarks identical to the disputed
domain names and is not commonly known by the <ugboots.us>, <ugg.us>,
<uggboots.us> and <uggs.us> domain names. In fact,
Complainant asserts that Respondent is commonly known by Australian Made Goods.
The Panel finds that Respondent has failed to demonstrate any rights to or
legitimate interests in the domain names pursuant to Policy ¶¶ 4(c)(i) and
4(c)(iii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020
(WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent
was not commonly known by the mark and never applied for a license or
permission from Complainant to use the trademarked name); see also RMO, Inc.
v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting UDRP ¶
4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail").
In its
Additional Submission, Complainant has produced evidence of Complainant’s
enforcement of its rights in the UGG mark and affidavits from individuals
knowledgeable in the footwear industry that UGG is a well known brand name for
footwear to establish that its UGG mark is not generic.
Complainant
proved this element.
The
Panel finds that Respondent has registered the <ugg.us>, <uggboots.us>
and <uggs.us> domain names to prevent Complainant from reflecting
its UGG mark in a corresponding domain name, which is evidence of registration
and use in bad faith pursuant to Policy ¶ 4(b)(ii). See Pep Boys Manny, Moe,
& Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000)
(finding that, where Respondent registered many domain names, held them
hostage, and prevented the owners from using them, the behavior constituted bad
faith); see also Nabisco Brands Co. v. Patron Group, D2000-0032 (WIPO
Feb. 23, 2000) (holding that registration of numerous domain names is one
factor in determining registration and use in bad faith).
The
Panel finds that Respondent’s use of domain names identical or confusingly
similar to Complainant’s UGG mark to sell sheepskin boots demonstrates that the
<ugboots.us>, <ugg.us>, <uggboots.us>
and <uggs.us> domain names were registered primarily for the
purpose of disrupting the business of a competitor, which evidences bad faith
registration and use under Policy ¶ 4(b)(iii). See Surface Prot. Indus.,
Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between Complainant and Respondent, Respondent likely
registered the contested domain name with the intent to disrupt Complainant's
business and create user confusion); see also S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business).
The
Panel finds that Respondent’s unauthorized commercial use of the <ugboots.us>,
<ugg.us>, <uggboots.us> and <uggs.us>
domain names is evidence of bad faith registration and use with regard to
Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the
<saflock.com> domain name to offer goods competing with Complainant’s
illustrates Respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration and use pursuant to UDRP ¶ 4(b)(iv)); see
also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14,
2001) (finding bad faith where Respondent used the domain name, for commercial
gain, to intentionally attract users to a direct competitor of Complainant).
Complainant
proved this element.
DECISION
Having
established all three elements required under the Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <ugboots.us>, <ugg.us>, <uggboots.us> and <uggs.us> domain names be TRANSFERRED
from Respondent to Complainant UGG Holdings, Inc. as a wholly owned subsidiary
of Deckers Outdoor Corporation.
Judge Carolyn M. Johnson (Ret.), Panelist
David H. Tatham, Panelist
Judge Karl V. Fink (Ret.), Panelist
Dated: February 5, 2004
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page