DECISION

UGG Holdings, Inc. v. WebQuest.com, Inc.

Claim Number: FA0409000335456

PARTIES

Complainant is UGG Holdings, Inc. (“Complainant”), represented by Tom Fitzsimons, of Greer, Burns & Crain, Ltd., 300 South Wacker Drive, Suite 2500, Chicago, IL 60606.  Respondent is WebQuest.com, Inc. (“Respondent”), represented by David M. Dingeman, 550 Trees Drive, Cedar Hill, TX 75104.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <australiaug.com>, <australiaugs.com>, <australiauggs.com>, <kidsuggboots.com>, <mensuggboots.com>, <uggboots.com>, <uggclogs.com>, <uggslippers.com>, and <talluggboots.com> registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and <womensuggboots.com> registered with Moniker Online Services Inc.

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 Marks Johnson, Honorable Charles K. McCotter, Jr. (Ret.) and Mr. P-E H Petter Rindforth as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 27, 2004; the Forum received a hard copy of the Complaint on September 28, 2004.

On September 29, 2004 Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain names <australiaug.com>, <australiaugs.com>, <australiauggs.com>, <kidsuggboots.com>, <mensuggboots.com>, <uggboots.com>, <uggclogs.com>, <uggslippers.com>, and <talluggboots.com> are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the names.  Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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 October 1, 2004 Moniker Online Services Inc. confirmed by e-mail to the Forum that the domain name <womensuggboots.com> is registered with Moniker Online Services Inc. and that Respondent is the current registrant of the name.  Moniker Online Services Inc. has verified that Respondent is bound by the Moniker Online Services 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 October 1, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 4, 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@australiaug.com, postmaster@australiaugs.com, postmaster@australiauggs.com, postmaster@kidsuggboots.com, postmaster@mensuggboots.com, postmaster@uggboots.com, postmaster@uggclogs.com, postmaster@uggslippers.com, postmaster@talluggboots.com, and postmaster@womensuggboots.com by e-mail.  Respondent was granted an extension to submit its Response by October 29, 2004

A timely Response was received and determined to be complete on October 29, 2004.

A timely Additional Submission was received from Complainant and was determined to be complete on November 3, 2004.

A timely Additional Submission was received from Respondent and was determined to be complete on November 8, 2004.

Respondent’s Response was received in electronic form only and therefore is not in conformance with ICANN Rule 5(a).  Furthermore, Respondent failed to provide a signed Response in accordance with ICANN Rule 5(viii). However, ruling a Response inadmissible because of formal deficiencies is an extreme remedy. In this case, the Panel considers the Response to meet all other applicable requirements stipulated in ICANN Rule 5. According to ICANN Rule 10(b), the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. It is the opinion of the Panel that it would be unfair not to accept and consider the Response in this case.

On November 16, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Judge Carolyn Marks Johnson, Honorable Charles K. McCotter, Jr. (Ret.) and Mr. P-E H Petter Rindforth (Chair) as Panelists.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

UGG Holdings, Inc. is a wholly owned subsidiary of Deckers Outdoor Corporation and does business under the trade name UGG Australia. Complainant has long been known as a producer of premium sheepskin footwear, in particular boots, but the UGG brand is also extended to handbags, outerwear, and clothing. Complainant holds numerous registrations for UGG and stylized versions and phononyms of “UGG” such as “UGH,” with dates of use going back to the 1970’s.

Over the last eight years, Complainant has spent more than $8 million advertising the UGG brand, resulting in that UGG has moved beyond being a “cult” item among surfers to a mainstream luxury brand. UGG was awarded the 2003 Brand of the Year honors in Footwear News.  Numerous magazines and newspapers have recently written stories about UGG, such as the Chicago Sun-Times, the Chicago Tribune, Entertainment Weekly, Elle, Forbes, the New York Post, the New York Times, People, Star, US Weekly, Vogue and the Wall Street Journal.

The products and trademark have been advertised in (among others), Elle, InStyle, O: The Oprah Magazine and Vogue. UGG boots have been featured on many television shows and movies, including Oprah, Sex and the City, Jeopardy!, “Raising Helen” and “Eternal Sunshine of the Spotless Mind.”

 

UGG Holdings achieved $34.6 million in worldwide sales in 2003, up more than 47% from its $23.5 million in sales for 2002.  Since at least as early as April 1999, Complainant has operated a website for its footwear at <www.uggaustralia.com>.   Complainant sells its products from an online store located at that website address.

Respondent has no trademark or trade name rights to UGG, UGH or UG.  Further, 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.  Respondent has constructive notice of the UGG mark by virtue of its registration on the United States Principal Register. 

All ten disputed domain names are confusingly similar to Complainant’s UGG trademark and UGG Australia trade name. 

Each of Respondent’s websites offer a search engine that contains links to providers of a variety of goods and services, including sites that offer products competitive with Complainant’s. The numerous uses of Australia, UGG and variants thereof, coupled with the goods to which Complainant’s marks refer (“boots,” “slippers,” “clogs”) suggest that these sites are authorized sellers of genuine and authentic UGG footwear.  However, Respondent is neither authorized nor licensed to sell or advertise authentic UGG footwear. Respondent’s use of the contested domains to sell similar or competing goods is not a bona fide use under the UDRP.  The domain names were registered in 2002 or later, whereas Complainant and its predecessors in interest have been using the UGG mark at least as early as 1979, and have multiple U.S. trademark registrations that include UGG dating to 1987.

Respondent neither registered nor used the disputed domain names in good faith.  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. Respondent intentionally registered the disputed domain names that contain Complainant’s marks for Respondent’s commercial gain.  Respondent’s domain names divert Internet users seeking Complainant’s services to Respondent’s commercial websites through the use of domain names that are confusingly similar to Complainant’s marks.  It can be inferred that Respondent profits from the traffic that is diverted to the Respondent’s search engine website. 

 

B. Respondent

Respondent is a business incorporated in California on December 3, 2002, providing search engines pertinent to the generic domain names on which they reside (such as <automakers.com>, <automotivetires.com>, <dentalproblems.com>, <weddingplaces.com> <cheapweddings.com>, and <uggboots.com>).

Respondent registered <uggboots.com> on March 23, 2002 and  <australiaug.com>, <australiaugs.com>, <australiauggs.com>, <kidsuggboots.com>, <mensuggboots.com>, <uggclogs.com>, <uggslippers.com>, <talluggboots.com> and <womensuggboots.com> on or about February 29, 2003.

Respondent has never known of Complainant’s trademark registrations until this action. Several of Complainant’s U.S. and Australian trademark registrations are presently being contested.

Respondent’s registration of <uggboots.com> pre-dates each of the advertisements, awards, articles, etc referred to by Complainant, with the exception of the Oprah Show, which however Respondent never watches.

On two separate occasions, Respondent has offered to transfer all the disputed domain names to Complainant at no cost, but Complainant never replied and Complainant’s representative has, by phone, turned down Respondent’s offer to transfer and withdraw the dispute.

Uggs, ughs and ugs are slang, generic terms for sheepskin boots and web searches for the term “ugg boots” returned over 280,000 websites selling such items as ugg sheepskin foot apparel. Respondent did not have constructive notice of Complainant’s registration for UGG because it did not occur to him that there could be valid registration for a term that is a style of feet apparel.

Respondent registered <uggboots.com> as a generic name to promote his web search engine, and did not intentionally mislead or divert consumers nor tarnish the contested marks at issue. Respondent immediately shut down all websites under the contested domain names upon learning of Complainant’s trademark registrations and offered to transfer the domain names without condition.

All allegations made by Complainant on registration and use in bad faith are contested by Respondent.

C. Additional Submissions

Complainant’s Additional Submission:

Respondent alleges that it was “unaware” of the UGG registration, and “thought” UGG was generic for sheepskin boots.  The evidence of record makes this highly implausible.  The evidence, in fact, shows that Respondent itself used UGG as a trademark.  Taking Respondent’s <uggboots.com> domain as an example, its listing for the retailer “J. Jill” prominently uses an ® symbol next to a capitalized Ugg, and the listing for Neiman Marcus spells UGG in all capitals to clearly indicate a trademark.  The McGeeehan declaration includes printouts of Respondent’s <kidsuggboots.com> and <mensuggboots.com> webpages.  They repeatedly use UGG as a trademark and identify UGG as a brand.  The listing for Nordstrom appearing on <kidsuggboots.com> reads: “Find a large selection of UGG® Australia shoes at Nordstrom.com”, and the listing for “Shoes.com” reads “…guaranteed low prices on Ugg and two hundred other brands.” The listing on Respondent’s <mensuggboots.com> webpage for “namebrandfinder.com” reads “Shop for Ugg Shoes, Clogs and footwear – Incredible Selection of Hundreds of Premium Shoe Brands”, and “easyshopdirect.com” on the same page reads “Genuine UGG Australia sheepskin boots and other famous brands…”  Almost every use of UGG on Respondent’s pages, in fact, is capitalized to indicate trademark status. 

Further, Respondent’s argument that it “thought” UGG was generic for sheepskin boots fails to explain its registration of several of the disputed domains, including <uggclogs.com> and <uggslippers.com>. 

Respondent states that it immediately shut down the disputed domains upon receipt of the Complaint.  This is not true.  Nine of the ten disputed domains were still active as of the filing of this Additional Submission.

Respondent claims that it immediately offered to transfer the domains when it learned of Complainant’s rights in the UGG trademark and that its offer to transfer went without response.  In doing so, Respondent omits the fact that it ignored a cease and desist letter mailed on July 27 to Respondent’s Whois address on July 27.  After ignoring this letter, Respondent offered to transfer the domains only after filing of the UDRP complaint.  Respondent’s suggestion that its offer to transfer the domains went unacknowledged is likewise misleading.  Complainant’s attorney did in fact respond to Respondent’s attorney, and indicated that despite not hearing from Respondent for more than two months after mailing of the cease and desist letter, it would consider withdrawing the complaint if Respondent would agree to reimburse Complainant for its non-refundable UDRP filing fee.  Respondent did not respond to this offer.

Respondent’s entire Response is premised on the untenable argument that Complainant’s multiple UGG trademark registrations are invalid and unenforceable as generic. Respondent’s allegation quickly falls in the face of the overwhelming evidence of record that the UGG trademark is valid and enforceable.  This evidence includes thirty-nine valid and subsisting registrations, Complainant’s repeated successful enforcement of its rights in the UGG trademark over the years, and that no UGG registration has ever been invalidated.  Further, it is well established that ICANN UDRP proceedings are inappropriate for determining the validity of trademarks. 

Respondent offers only scant and highly suspect “evidence” to support its allegation that UGG is generic. Respondent has submitted no evidence whatsoever as to the primary significance of the UGG trademark among the American public. Respondent’s evidence is limited to an unreliable on-line “slang dictionary” entry for “uggs,” and to printouts of alleged web searches for UGG where large numbers of “hits” resulted.  

Respondent’s suggestion that genericness is shown by multiple “hits” from a search for UGG on the Internet is likewise unconvincing.  UDRP Panels have held in the past that this type of evidence is not sufficient to show a mark to be generic. Indeed, the number of “hits” may be evidence of the fame of the brand as opposed to its genericness.  Respondent also fails to mention that ten of the thirteen “hits” for Ugg are selling genuine UGG brand products.  The three that are not (Uggs-N-Rugs, Rousabout Uggs, and Ikonaustralia) are all Australian-based infringers that Complainant has formal pending legal actions. 

Eight of the ten disputed domain names include Complainant’s registered UGG trademark in its entirety and the remaining two include UG, a misspelling thereof.  Respondent does not deny that these domains are confusingly similar to the UGG trademark. 

Respondent suggests that its <uggboots.com> predates many of Complainant’s marketing exhibits (but not any of its trademark registrations) except for the Oprah show exhibit. Respondent implies that this somehow gives it superior rights to Complainant.  Since Complainant’s famous UGG trademark registrations for boots long predate Respondent’s registration of <uggboots.com>, however, Respondent’s logic fails.  Further, Respondent conveniently ignores that the remaining nine disputed domains were registered between December 2003 and March 2004, after the bulk of the marketing exhibits were published.

Finally, Respondent admits that it offered to transfer the disputed domains to Complainant.  Respondent’s willingness to transfer the domain names is further evidence that it has no rights or legitimate interests in the domains. 

Respondent’s denial of bad faith based on it being “unaware” of the UGG registration and because it “thought” UGG was generic are easily dismissed.  Under United States law, a trademark registration on the principal register is “prima facie evidence of the validity of the registered mark…of the registrant's ownership…(and) exclusive right to use the registered mark.” See 15 U.S.C. §1065(a). 

Respondent registered and used the disputed domains that include the UGG trademark to profit from the fame of Complainant’s UGG footwear brand by diverting customers.  This is evidence of bad faith registration and use. 

Respondent’s Additional Submission:

Respondent states that it had not created or controlled the content for the disputed domain names, as the content on the corresponding web pages was created by Overture, and that the terms “ugg”, “ugh”, “ug” and “ugs” are paid-for search terms on Overture, Google and Yahoo.

Respondent asserts that it has never received Complainant’s cease and desist letter via US postal service.

The reason why the corresponding web sites, except for <uggboots.com>, was not shut-down is that DotRegister froze the web sites immediately upon receipt of the Complaint.

FINDINGS

Complainant is the owner of a number of registered trademarks incorporating or consisting of the word UGG and UGH. These marks include, but are not limited to, the following United States trademark registrations: No. 2,624,802 BABY UGGS, No. 1,460,992 ORIGINAL UGG BOOT UGG AUSTRALIA & Design, and No. 1,973,743 UGG. Complainant also holds registrations for UGG trademark in Israel, Italy, Japan, Korea, Norway, Russia, Spain, Sweden, Uruguay, Japan, Argentina, Mexico, Australia, New Zealand, Switzerland, UK, Benelux, Colombia, Costa Rica, Denmark, El Salvador, Finland, France, Germany, Greece, Guatemala, Canada and the European Union. The marks are registered in respect of footwear and other goods in International Class 25.

Complainant has used its mark since the 1970’s. The registration date for the U.S trademark No.1,973,743 UGG is May 14, 1996. Since at least of April 1999, Complainant has operated a website for its footwear at <www.uggaustralia.com>.

Complainant’s trademark UGG has, at least since November 2002 and onward, received significant media coverage especially in the United States (magazines, television shows and movies).

Respondent registered the disputed domain name <uggboots.com> on March 23, 2002 and  <australiaug.com>, <australiaugs.com>, <australiauggs.com>, <kidsuggboots.com>, <mensuggboots.com>, <uggclogs.com>, <uggslippers.com>, <talluggboots.com> and <womensuggboots.com> on or about February 29, 2003.

Respondent has no trademark or trade name registrations incorporating or consisting of the word UGG.

In July 2004, Complainant’s attorney sent a cease and desist letter to Respondent’s listed address. According to Respondent, he never received the said letter. Respondent contacted Complainant after the UDRP complaint had been filed, and offered to transfer the disputed domain names to Complainant, free of charge. Complainant’s attorney informed Respondent that the Complaint may be withdrawn if Respondent was willing to reimburse Complainant for the UDRP filing fee. Respondent did not respond.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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;

(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.

Identical and/or Confusingly Similar

Complainant has established rights in the UGG mark through registration with trademark authorities across the globe, including the U.S. Patent and Trademark Office (Reg. No. 1,973,743 registered on May 14, 1996).  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.”).

Respondent’s domain name registrations  <australiauggs.com>, <kidsuggboots.com>, <mensuggboots.com>, <uggboots.com>, <uggclogs.com>, <uggslippers.com>, <talluggboots.com> and <womensuggboots.com> all incorporate Complainant’s mark UGG, in combination with generic words such as “boots”, “clogs”, “slippers” or “Australia”.

Respondent’s domain name registrations <australiaug.com> and <australiaugs.com> consists of the word UG and the word Australia. The Panel consider UG as confusingly similar, and phonetically identical, to Complainants’s registered mark UGG.

The mere addition of generic terms to a mark is insufficient to distinguish Respondent’s domain names from Complainant’s mark. 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).

In addition, the generic terms “boots”, “clogs”, “slippers” and the country name “Australia” directly refer to the business and trade name of Complainant and thus add to the conceptual similarity between the domain names and the trademark UGG.  See Space Imaging LLC v. Brownell, 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).

Furthermore, the addition of the generic top-level domain “.com” is insufficient to distinguish the domain names from Complainant’s mark. 

Accordingly, the Panel finds that the disputed domain names are all confusingly similar to Complainant’s UGG trademark.  The Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has not contested Complainant’s assertions that he is not commonly known by the disputed domain names, or that he is has no trademark or trade name rights to UGG or UG.

Complainant asserts that the domain names resolve to websites that provide links to commercial websites, including a link to Complainant’s website.  Respondent admits in its Response that Respondent received click-through fees via use of the domain names.  Commercial use of domain names that are confusingly similar to another’s mark does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).

Respondent asserts that the <uggboots.com> domain name was registered prior to the date in which Complainant established rights in the UGG mark. This is obviously not true. Respondent registered <uggboots.com> on March 23, 2002, whereas Complainant’s U.S. trademark registration  No. 1,973,743 UGG was registered on May 14, 1996, almost six years earlier. The fact that Complainant is the owner of numerous trademark registrations for UGG also contradict Respondent’s arguments that UGG is a generic term. As stated above, under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning, therewith proving established trademark rights for Complainant from at least 1996.

Furthermore, Respondent offered to transfer the disputed domain names to Complainant at no cost.  The Panel finds that Respondent’s willingness to dispose of the domain names is evidence that Respondent lacks rights and legitimate interests in them.  See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant contends that Respondent registered and used the domain names in bad faith because Respondent had actual or constructive knowledge of the UGG mark. The UGG trademark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.  See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).

Further, with the exception of <uggboots.com>, all disputed domain names are registered when Complainant’s mark UGG had become well known through extensive media coverage. The domain names are combined with generic words referring to the Complainant and its business, and linked to a website with references to UGG as a trademark. These circumstances indicate clearly that Respondent was, at the time of the registration of the domain names, well aware of the fact that UGG was an established trademark.

Respondent has obviously used the disputed domain names to receive click-through fees by linking to commercial websites, therewith to intentionally attempt to attract Internet users to Respondent’s website by using Complainant’s famous marks and likeness. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

Referring to the above circumstances, the Panel concludes that Respondent has registered and used the domain names in bad faith. The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <australiaug.com>, <australiaugs.com>, <australiauggs.com>, <kidsuggboots.com>, <mensuggboots.com>, <uggboots.com>, <uggclogs.com>, <uggslippers.com>, <talluggboots.com>, and <womensuggboots.com> domain names be TRANSFERRED from Respondent to Complainant.

Judge Carolyn Marks Johnson, Honorable Charles K. McCotter, Jr. (Ret.)

and Mr. P-E H Petter Rindforth (Chair), Panelists.
Dated: December 8, 2004

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