DECISION

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

Complainant

· 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. 

Respondent

· 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.

Identical and/or Confusingly Similar

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, [1979] USCA9 691; 599 F.2d 341 (9th Cir. 1979).

Complainant proved this element.

Rights or Legitimate Interests

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.

Registration and Use in Bad Faith

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

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/221.html