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Generic Top Level Domain Name (gTLD) Decisions |
Deckers Outdoor Corporation v. Bills
Distribution
Claim
Number: FA0410000358035
Complainant is Deckers Outdoor Corporation (“Complainant”),
represented by Tom Fitzsimons of Greer, Burns & Crain, Ltd., 300 South Wacker Drive, Suite 2500, Chicago, IL 60606. Respondent is Bills Distribution (“Respondent”), 4B Oak Leaf Lane, Circle Pines,
MN 55014.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <poormansuggs.com>, registered with Wild
West Domains, Inc.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
29, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 29, 2004.
On
November 1, 2004, Wild West Domains, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <poormansuggs.com> is
registered with Wild West Domains, Inc. and that Respondent is the current
registrant of the name. Wild West Domains, Inc. has
verified that Respondent is
bound by the Wild West Domains, 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
November 1, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 22, 2004 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@poormansuggs.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 6, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed Hon. Ralph
Yachnin 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <poormansuggs.com>
domain name is confusingly similar to Complainant’s UGG mark.
2. Respondent does not have any rights or
legitimate interests in the <poormansuggs.com> domain name.
3. Respondent registered and used the <poormansuggs.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Deckers Outdoor Corporation, is a producer of
premium sheepskin footwear and of boots in particular. Complainant’s predecessor was UGG Holdings
Inc., which was merged into Complainant on September 30, 2004. Complainant now does business under the
trade name UGG Australia.
Complainant holds numerous registrations in several countries for the UGG
mark and stylized versions and phonoyms of the mark such
as UGH, including a
registration with the United States Patent and Trademark Office for the UGG
mark (U. S. Reg. No. 1973,743 issued
May 14, 1996). Complainant and its predecessors in interest have been using the
UGG mark since at least as early as 1979 and its multiple trademark
registrations including the UGG mark date to 1970.
In the last eight years, Complainant has spent more than $8 million on
advertising for its UGG brand. In 2003,
Complainant’s highly successful marketing campaign won Complainant’ 2003 Brand
of the Year honors in a leading footwear industry
publication, Footwear News. In addition, many magazines and newspapers
have featured stories about the widespread popularity of the UGG brand,
including the New York Times, Wall Street Journal, Chicago
Tribune, and Entertainment Weekly.
Complainant has also placed paid advertising in magazines such as Elle,
O: the Oprah Magazine, Teen Vogue and Vogue. UGG boots have also been featured on several
television shows seen worldwide, including Oprah, Sex and the City,
and the popular game show Jeopardy!, were also featured in the movies
and movie posters for Raising Helen and Eternal Sunshine of the Spotless
Mind.
Due to the widespread fame of the UGG brand for footwear, Complainant has
also extended the brand into clothing and accessories, including
handbags,
ponchos, and miniskirts. Complainant
also operates a website and online store for its products located at the
<uggaustralia.com> domain name.
Sales for the UGG brand totaled approximately $23.5 million for 2002 and
$34.6 million in 2003. Additionally,
Complainant predicts sales in excess of $90 million for 2004.
Respondent registered the <poormansuggs.com> domain name on May 5, 2004. Respondent is using the disputed domain name
to divert Internet users to a website that offers look-alike sheepskin boots
not made
by Complainant or under Complainant’s authority. Respondent also makes unauthorized use of
the UGG mark on its website to promote the look-alike boots.
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.
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
established in this proceeding that it has rights in the UGG mark through
registration in numerous countries and with
the United States Patent and
Trademark Office and by continuous use of its mark in commerce since at least
as early as 1970. See 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.”); see also 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).
The <poormansuggs.com>
domain name registered by Respondent is confusingly similar to Complainant’s
UGG mark because the domain name incorporates Complainant’s
mark in its
entirety, adding only the generic or descriptive terms “poor” and “mans” and
the letter “s.” The mere addition of
generic or descriptive terms and the letter “s” to Complainant’s registered
mark does not negate the confusing
similarity of Respondent’s domain name
pursuant to Policy ¶ 4(a)(i). See
Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of
Complainant
combined with a generic word or term); see also Am.
Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum
Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and
merely added the descriptive terms “traffic school,” “defensive driving,” and
“driver improvement”
did not add any distinctive features capable of overcoming
a claim of confusing similarity); see also Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb.
Forum Jan. 11, 2001) (finding that the domain name
<nationalgeographics.com> was confusingly similar to
Complainant’s
“National Geographic” mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in the <poormansuggs.com>
domain name, containing Complainant’s UGG mark in its entirety. Because Respondent failed to respond to the
Complaint, the Panel assumes that Respondent lacks rights and legitimate
interests in
the disputed domain name.
In fact, once Complainant makes a prima facie case in support of
its allegations, the burden shifts to Respondent to show that it does have such
rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate
interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion
because this information is “uniquely within
the knowledge and control of the respondent”); see also Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that
once Complainant asserts that Respondent has no rights or legitimate interests
with
respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate
interests in the
domain name).
Furthermore, the
Panel finds that Complainant has made a prima facie showing. Since Respondent has not Respondent, the
Panel is entitled to accept all reasonable allegations and inferences in the
Complaint as
true. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact
in the allegations of Complainant 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”).
Respondent is
using the <poormansuggs.com> domain name to redirect Internet
users to a website that offers look-alike sheepskin boots not made by
Complainant. Respondent’s use of a
domain name that is confusingly similar to Complainant’s UGG mark to redirect
Internet users interested in Complainant’s
products to a commercial website
that offers products and services in competition with Complainant is not a use
in connection with
a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name
pursuant
to Policy ¶ 4(c)(iii). See
Hewlett-Packard Co. v. Inversiones HP Milenium
C.A., FA 105775 (Nat. Arb. Forum Apr. 12,
2002) (finding Respondent’s use of the confusingly similar domain name
<hpmilenium.com>
to sell counterfeit versions of Complainant’s HP
products was not a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i)); see also Avery Dennison Corp. v. Steele, FA
133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or
legitimate interests in the disputed domain name
where it used Complainant’s mark,
without authorization, to attract Internet users to its business, which
competed with Complainant);
see also Chip
Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding
that the disputed domain names were confusingly similar to Complainant’s mark
and that
Respondent’s use of the domain names to sell competing goods was
illegitimate and not a bona fide offering of goods).
Respondent has
offered no evidence that Respondent is commonly known by the <poormansuggs.com>
domain name, and nothing in the WHOIS information supports such a finding. Additionally, Complainant has not licensed
Respondent to use its UGG mark. Thus,
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly
known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also 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).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant is a
producer of sheepskin footwear, including boots. Respondent is using the <poormansuggs.com> domain
name to redirect Internet users to a website that uses Complainant’s UGG mark
to offer look-alike sheepskin boots.
The Panel finds that this shows that Respondent registered the domain
name primarily to disrupt Complainant’s competing business and
that this is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22,
2000) (finding that Respondent registered and used the domain name primarily
for the purpose of
disrupting the business of Complainant by offering personal
e-mail accounts under the domain name <openmail.com> which is identical
to Complainant’s services under the OPENMAIL mark); 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); see also EthnicGrocer.com,
Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding
bad faith where Respondent’s sites pass users through to Respondent’s competing
business).
Respondent’s <poormansuggs.com>
domain name is confusingly similar to Complainant’s UGG mark and is used to
divert Internet users to Respondent’s commercial website
in competition with
Complainant. Furthermore, Respondent is
unfairly and opportunistically benefiting from the goodwill associated with
Complainant’s UGG mark to profit
from look-alike products not manufactured by
Complainant. Thus, the Panel finds that
Respondent’s practice of diversion to create a likelihood of confusion for
commercial gain is evidence
of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb.
Forum Feb. 23, 2000) (finding that Respondent acted in bad faith by registering
the <fossilwatch.com>
domain name and using it to sell various watch
brands where Respondent was not authorized to sell Complainant’s goods); see
also Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with Complainant’s
well-known marks,
thus creating a likelihood of confusion strictly for commercial gain); see
also Luck's Music Library v. Stellar
Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that
Respondent had engaged in bad faith use and registration by linking the
domain
name to a website that offers services similar to Complainant’s services,
intentionally attempting to attract, for commercial
gain, Internet users to its
website by creating a likelihood of confusion with Complainant’s marks).
The Panel finds
that 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 <poormansuggs.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 20, 2004
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