national arbitration forum

DECISION

UGG Holdings, Inc. v. Constantinos Roussos

Claim Number:  FA0409000335441

PARTIES

Complainant is UGG Holdings, Inc. (“Complainant”), represented by Tom Fitzsimons, of Greer, Burns & Crain, Ltd., Suite 2500, 300 South Wacker Drive, Chicago, IL 60606.  Respondent is Constantinos Roussos (“Respondent”), 950 S. Flower Street # 1404, Los Angeles, CA 90015.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <uggaustralia.net>, <ugg-ugg.com>, <ugg-shoes.net>, <uggs.net>, and <uggs-uggs.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

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

On September 29, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <uggaustralia.net>, <ugg-ugg.com>, <ugg-shoes.net>, <uggs.net>, and <uggs-uggs.com> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 September 30, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 20, 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@uggaustralia.net, postmaster@ugg-ugg.com, postmaster@ugg-shoes.net, postmaster@uggs.net, and postmaster@uggs-uggs.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On October 28, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <uggaustralia.net>, <ugg-ugg.com>, <ugg-shoes.net>, <uggs.net>, and <uggs-uggs.com> domain names are confusingly similar to Complainant’s UGG mark.

2. Respondent does not have any rights or legitimate interests in the <uggaustralia.net>, <ugg-ugg.com>, <ugg-shoes.net>, <uggs.net>, and <uggs-uggs.com> domain names.

3. Respondent registered and used the <uggaustralia.net>, <ugg-ugg.com>, <ugg-shoes.net>, <uggs.net>, and <uggs-uggs.com> domain names in bad faith.

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

FINDINGS

Complainant, Ugg Holdings, Inc., is a wholly owned subsidiary of Deckers Outdoor Corporation and is a producer of premium sheepskin footwear, in particular boots.  Complainant holds numerous registrations for the UGG mark with the U.S. Patent and Trademark Office (“USPTO”), including Reg. No. 1,973,743 (registered on May 14, 1996), as well as other registrations with other countries. 

Complainant participates in the Commission Junction affiliate program as an “advertiser,” where Commission Junction creates relationships to market Complainant’s goods by enlisting third-party “publishers” (i.e. domain names that will refer customers to Complainant).  Commission Junction expressly prohibits violating the intellectual property rights of advertisers, expressly prohibiting misleading others, linking to websites offering pornographic or illegal material, and engaging in cybersquatting or typosquatting.

Respondent registered <uggaustralia.net>, <ugg-ugg.com>, <ugg-shoes.net>, <uggs.net>, and <uggs-uggs.com> on Feb. 11, 2004, Jan. 25, 2004, Nov. 13, 2003, Nov. 5, 2003, and Jan. 25, 2004, respectively.   Respondent previously used the disputed domain names to participate in the Commission Junction affiliate program.  However, when Complainant notified the affiliate program that Respondent’s domain names incorporated Complainaint’s mark, Commission Junction stopped paying Respondent for referrals.  After that, Respondent used the <uggaustralia.net>, <ugg-ugg.com>, <ugg-shoes.net>, <uggs.net>, and <uggs-uggs.com> domain names to refer to the Zappo’s website—the largest Internet-based shoe store. Respondent also links the domain names to pornographic and gambling sites.

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 may bring a claim under Policy 4(a)(i) because it holds adequate rights in the UGG mark, as demonstrated by its registration with over 15 countries worldwide, including the U.S.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive, and Respondent has the burden of refuting this assumption.

Respondent’s <uggaustralia.net>, <ugg-ugg.com>, <ugg-shoes.net>, <uggs.net>, and <uggs-uggs.com> domain names are confusingly similar to Complainant’s UGG mark.  Neither the addition of the letter “s” (as in <uggs.net>), the repetition of the mark (as in <ugg-ugg.com>), the addition of the “s” and repetition of the mark (as in <uggs-uggs.com>), the addition of a descriptive term (as in <ugg-shoes.net>), the addition of a geographical term (as in <uggaustralia.net>), or the addition of a hyphen significantly distinguish the domain names from Complainant’s mark.  See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark; see also Nintendo of Am., Inc. v. Lizmi, FA 94329 (Nat. Arb. Forum Apr. 24, 2000) finding that Respondent’s domain names <pokemon2000.com> and <pokemons.com> are confusingly similar to Complainant’s mark; see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term; see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark; see also Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) finding that the domain names <teleplace.org>, <tele-place.com>, and <theteleplace.com> are confusingly similar to Complainant’s TELEPLACE trademark.

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to file a Response; therefore, the Panel may accept any reasonable assertion by Complainant as true.  See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) drawing two inferences based on Respondent’s failure to respond: (1) Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions which Complainant asserts can be drawn from the facts; see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true.

Respondent is appropriating Complainant’s mark to generate revenues for, inter alia, pornographic links, which is not 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 Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) finding that Respondent’s use of its domain name to link unsuspecting Internet traffic to an adult-orientated website did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use; see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”.

The Panel finds that there is nothing in the record, including the WHOIS domain name registration information, to demonstrate that Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) finding no legitimate interest where “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name”; 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.

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The Panel finds that Respondent is appropriating Complainant’s mark in the <uggaustralia.net>, <ugg-ugg.com>, <ugg-shoes.net>, <uggs.net>, and <uggs-uggs.com> domain names to sell merchandise, including shoes.  The Panel may conclude that appropriating another’s mark in a domain name in order to sell goods within the scope of that mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Gen. Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site; 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 also finds that Respondent is appropriating Complainant’s mark to host pornographic links.  The Panel may conclude that appropriating another’s mark to market pornography is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name; see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith.

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

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 <uggaustralia.net>, <ugg-ugg.com>, <ugg-shoes.net>, <uggs.net>, and <uggs-uggs.com> domain names be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  November 8, 2004

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