DECISION

UGG Holdings, Inc. and Deckers Outdoor Corporation v. Geoff Sharpe d/b/a Australian Aura & DigiCommander Corp.-Ph. 1300 76 3888 a/k/a Domain Registration

Claim Number:  FA0401000227667

PARTIES

Complainant is UGG Holdings, Inc. and Deckers Outdoor Corporation (“Complainant”), represented by Thomas Fitzsimons, of Greer, Burns & Crain, Ltd., Suite 2500, 300 South Wacker Drive, Chicago, IL 60606. Respondents are Geoff Sharpe d/b/a Australian Aura & DigiCommander Corp.-Ph. 1300 76 3888 a/k/a Domain Registration (“Respondent”), Level 31, ABN-AMRO TOWER, 88 Phillip St., Sydney, Australia 2000.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <uggfootware.com> and <uggfootwear.com>, registered with Enom, 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 M. Johnson (Ret.) and David P. Miranda 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 January 19, 2004; the Forum received a hard copy of the Complaint on January 20, 2004.

On January 22, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain names <uggfootware.com> and <uggfootwear.com> are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 January 22, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 11, 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@uggfootware.com and postmaster@uggfootwear.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 Forum transmitted to the parties a Notification of Respondent Default.

On February 24, 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 P. Miranda as Panelist, and Judge Karl V. Fink (Ret.) as Chair.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

· Complainant UGG Holdings, Inc. is a wholly-owned subsidiary of Complainant Deckers Outdoor Corporation.  Deckers Outdoor Corporation is a designer and marketer of footwear.  UGG Holdings does business under the trade name UGG Australia and sells sheepskin boots, slippers and shoes under the UGG® brand.  UGG Australia is known as the worldwide leader in luxury sheepskin footwear.

· Since at least as early as April 1999, Complainants have operated a website for their footwear at <uggaustralia.com>.  Complainants hold numerous registrations for the trademark UGG and stylized versions and phononyms such as “UGH,” with application filing dates going back to January 1971. 

· Over the last eight years, the Complainants have spent more than seven million dollars marketing UGG footwear.  Complainant’s marketing efforts include a national print advertising campaign in upscale publications and trade magazines. 

· Through the marketing efforts of Complainants, UGG footwear has become a mainstream luxury brand. 

· Complainants also market UGG brand footwear through national public relations and product placement campaigns.  These campaigns have resulted in widespread media coverage for the brand in various fashion and celebrity-oriented magazines.

· Complainants’ marketing efforts have resulted in UGG Holdings achieving worldwide sales of $23.5 million for 2002 and projected worldwide sales of $35 million for 2003.

· As a result of Complainants’ successful marketing efforts and their explosive sales growth, the UGG brand was awarded “Brand of the Year 2003” honors by Footwear News, the leading footwear industry publication. 

· In addition to traditional distribution channels, Complainants promote and sell UGG® footwear at their UGG Australia website <uggaustralia.com>.

· Complainants’ UGG boots have distinctive sole designs, some of which comprise its UGG mark molded into the outsole. 

· According to the records of enom.com (the registrar for “uggfootware.com”), the domain name holder for <uggfootware.com> is Geoff Sharp of Australian Aura, 168 Dammans Road, Warburton VIC 3799.  

· According to the records of Enom, Inc. (the registrar for “uggfootwear.com”), the domain name holder for <uggfootwear.com> is DigiCommander Corp. - Ph. 1300 76 3888 a/k/a Domain Registration, Level 31, ABN-AMRO TOWER, 88 Phillip St., Sydney Australia 2000.  

· Both <uggfootwear.com> and <uggfootware.com> are affiliated with a website entitled “Australian Aura” and both are being used to sell knock-off sheepskin boots with counterfeit “Made by UGG Australia” labels. 

· Respondents have no trademark or trade name rights to UGG.  Respondents had actual notice of the UGG mark through a cease and desist letter that was sent by Complainants to Respondents on September 9, 2003.  Respondents have acknowledged receipt of this letter, but have indicated they will not comply. 

· Due to the fame of Complainants’ trademarks and trade name, it may be inferred that Respondents had knowledge of the UGG mark and UGG Australia trade name at the time the domain names were registered, since they deal in similar goods.

· Respondents also had constructive notice of the UGG mark by virtue of its registration on the United States Principal Register. 

· <Uggfootware.com> redirects visitors to <australianaura.com/uggfootware> while <uggfootwear.com> mirrors <australianaura.com/uggfootwear>.  Both sites display the same content.  These sites contain a prominent stylized “UGG” logo on the splash page that includes “UGG” molded into the outsole of a boot.  This “UGG” logo is evocative of Complainants’ distinctive trade dress that includes its UGG trademark in a sole design.  Respondents’ websites persistently infringe the UGG trademark.

· The products Respondents are selling are knockoffs of genuine UGG brand boots with counterfeit labels that read “Made by UGG Australia.”

· Substantial portions of the text on Respondents’ websites are plagiarized from Complainants’ websites. 

· The metatags on Respondents’ websites include the metatitle “Welcome to UGG Footwear, official distributor of the UGG Footwear brand.”

· Respondent’s domain names are confusingly similar to complainants’ registered UGG mark.  Respondents’ domains incorporate Complainants’ registered trademark UGG and the goods to which these marks apply.  This suggests that these sites are the home of authorized sellers of authentic UGG footwear, if not Complainants themselves. 

· Actual consumer confusion between Respondents’ disputed <uggfootware.com> domain name and Complainants has occurred.

· Respondents’ use of the contested websites to sell competing goods is not a bona fide use under the UDRP.  The domain names were registered in 2003.  Complainants and their predecessors in interest have been using the UGG mark at least as early as 1979.  Under the UDRP, Complainants’ incontestable U.S. Federal trademark registrations cannot be challenged in a UDRP proceeding. 

· Respondents are not known as <uggfootware.com> or <uggfootwear.com>, but instead as Australian Aura.  Respondents hold no trademark registrations for UGG. 

· The Respondents are not engaged in a legitimate noncommercial or fair use of the domain name. 

· It is obvious that the Respondents registered and use the disputed domains in bad faith.  They are free-riding on Complainants’ substantial fame and goodwill to divert Complainants’ prospective customers to their website where they hawk knock-offs.

· A panel can presume that when a respondent registers an identical domain to complainant’s mark, they do so to capitalize on complainant’s fame and goodwill by diverting complainant’s customers to Respondents’ website for commercial gain. 

· Use of a complainant’s trademark in a domain name that merely redirects users to the respondent’s site or mirrors the respondent’s site shows bad faith. 

· Using a trademark in a metatag is evidence of bad faith.  In this case, Respondents have not merely used Complainants’ trademarks in metatags but also misrepresent themselves as Complainants in their metatags. 

· The Respondents are using these sites to sell merchandise with counterfeit “UGG Australia” labels.  Using the sites to sell inferior goods in a site riddled with spelling and grammatical errors acts to tarnish Complainants’ trademarks and goodwill, showing bad faith.

· Respondents’ copying of the look and feel of the Complainants’ website and portions of its text constitutes copyright infringement and further demonstrates bad faith. 

· The Respondents’ half-hearted disclaimer buried at the bottom of its website cannot rebut the badges of fraud and bad intentions that surround the Respondents’ use of the website and domains that incorporate the UGG trademark. 

B.  Respondent failed to submit a Response in this proceeding.

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."

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.

Identical and/or Confusingly Similar

Complainant has rights in the UGG mark as a result of the mark’s continuous use in commerce and multiple worldwide registrations.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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.”); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves.”).

The Panel finds the disputed domain names are confusingly similar to Complainant’s UGG mark because the names incorporate the mark in its entirety and the names have merely added descriptive terms that describe the goods offered under the UGG mark. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“The fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy.”); see Am. Online, Inc. v. Anytime Online Traffic School, 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 Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

Complainant proved this element.

Rights or Legitimate Interests

The Panel finds that Respondent’s failure to respond is an implicit admission that Respondent lacks rights to and legitimate interests in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”); 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.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Vert. 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).

Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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).

The Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is attempting to pass itself off as Complainant. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (Respondent's commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant's mark by redirecting Internet traffic to its own website); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114(D. Mass. 2002) (because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).

Complainant proved this element.

Registration and Use in Bad Faith

Respondent is attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s UGG mark pursuant to Policy ¶ 4(b)(iv).  See 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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market).

The Panel finds that Respondent has masqueraded under Complainant’s UGG mark and has freeloaded off of Complainant’s goodwill and investment in the mark, evidence of bad faith registration and use. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that Respondent's use of <monsantos.com> to misrepresent itself as Complainant and to provide misleading information to the public supported a finding of bad faith); see also Fendi Adele S.r.l. v. O’Flynn, D2000-1226 (WIPO Nov. 13, 2000) (transferring the domain name <fendiboutique.com> where the likelihood of confusion with the trademark FENDI is increased since Complainant’s fashion products are typically sold in boutiques and where Respondent obviously tried (or threatened to try) to pass himself off as a legitimate source for FENDI products); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that Respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that Complainant endorsed and sponsored Respondent’s website).

Complainant has offered proof that Respondent has used Complainant’s UGG mark to sell counterfeit merchandise, evidence of bad faith registration and use.  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 bad faith); see also DJR Holdings LLC v. Gordon a/k/a IQ Mgmt. Corp., FA 141813 (Nat. Arb. Forum Mar. 4, 2003) (using <defamsouth.com> to sell unauthorized DEF JAM SOUTH recordings bad faith).

Complainant proved this element.

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 <uggfootware.com> and <uggfootwear.com> domain names be TRANSFERRED from Respondent to Complainant UGG Holdings, Inc. as a wholly owned subsidiary of Deckers Outdoor Corporation.

Judge Karl V. Fink (Ret.), Panelist

Judge Carolyn M. Johnson (Ret.), Panelist

David P. Miranda, Panelist

Dated: March 9, 2004

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