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.
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.
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).
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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