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Generic Top Level Domain Name (gTLD) Decisions |
Deckers Outdoor Corporation v. Choi joo
yeon
Claim Number: FA0411000362468
Complainant is Deckers Outdoor Corporation (“Complainant”),
represented by Tom Fitzsimons, of Greer, Burns & Crain, Ltd., 300 South Wacker Drive, Suite 2500, Chicago, IL 60606.
Respondent is Choi joo yeon (“Respondent”),
Gyeonggi-do Yongin Si Guseong-eup.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <uggshop.com>, registered with Gabia,
Inc. d/b/a Gabia.com.
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.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
10, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 10, 2004. The Complaint was submitted in both Korean and English.
On
November 18, 2004, Gabia, Inc. d/b/a Gabia.com confirmed by e-mail to the
National Arbitration Forum that the domain name <uggshop.com> is
registered with Gabia, Inc. d/b/a Gabia.com and that Respondent is the current
registrant of the name. Gabia, Inc. d/b/a Gabia.com
has verified that
Respondent is bound by the Gabia, Inc. d/b/a Gabia.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
November 29, 2004, a Korean language Notification of Complaint and Commencement
of Administrative Proceeding (the "Commencement
Notification"),
setting a deadline of December 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@uggshop.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
December 27, 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.
Pursuant
to Rule 11(a) the Panel determines that the language requirement has been
satisfied through the Korean language Complaint
and Commencement Notification
and, absent a Response, determines that the remainder of the proceedings may be
conducted in English.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1. Respondent’s <uggshop.com>
domain name is identical to Complainant’s UGG mark.
2. Respondent does not have any rights or
legitimate interests in the <uggshop.com> domain name.
3. Respondent registered and used the <uggshop.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant,
a producer of sheepskin footwear, handbags, outerwear, and clothing, holds
numerous registrations for the UGG mark, including
U.S. Reg. No. 1,973,743, on
file at the United States Patent and Trademark Office (issued May 14, 1996).
Over the last eight years,
Complainant has spent over eight million dollars
promoting and advertising the UGG mark. Complainant’s UGG mark and UGG brand
footwear
have been promoted and advertised in various popular magazines,
newspapers, television shows, and motion pictures. Sales of UGG brand
products
totaled $34.6 million in 2003, and 2004 estimated sales exceed $90 million.
Complainant also operates a website at the <uggaustralia.com>
domain
name.
Respondent
registered the <uggshop.com> domain name on November 13, 2003. The
domain name resolves to a website that offers for sale counterfeit goods,
designed to look
like Complainant’s footwear products, that compete with
Complainant’s products. Respondent is not authorized or licensed to use
Complainant’s
UGG mark for any purpose. Respondent offered to sell the <uggshop.com>
domain name registration to Complainant for $20,000 after receiving from
Complainant a cease and desist letter that requested
transfer of the disputed
domain name.
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.
Complainant has
established that it has rights in the UGG mark through registration with the
United States Patent and Trademark Office
and through continuous use of the
mark in commerce. 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.
Respondent has the burden of refuting this assumption.
The <uggshop.com>
domain name is confusingly similar to Complainant’s UGG registered trademark
because the disputed domain name fully incorporates
the mark while merely
adding the generic term “shop” and the “.com” generic top-level domain. Neither
the addition of a generic term
nor the addition of a generic top-level domain
distinguishes the disputed domain name from Complainant’s mark. See 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; see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept.
14, 2000) finding that combining the generic word “shop” with Complainant’s
registered mark “llbean”
does not circumvent Complainant’s rights in the mark
nor avoid the confusing similarity aspect of the ICANN Policy; see also 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; 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.
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a Response in this proceeding. Therefore, Complainant’s
submission has gone unopposed and its arguments
unrefuted. In the absence of a
Response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly
contradicted by the evidence. Because Respondent has
failed to submit a Response, it has failed to propose any set of circumstances
that could substantiate its rights or legitimate interests in the <uggshop.com>
domain name. See Parfums Christian
Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) finding that by
not submitting a Response, Respondent has failed to invoke any circumstance
which
could demonstrate any rights or legitimate interests in the domain name; 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 the Complaint to be deemed true.
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i),
nor is Respondent making a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). The record reveals
that Respondent’s domain name directs
unsuspecting Internet users to a website that offers for sale counterfeit goods
that compete
with Complainant’s products. Respondent makes opportunistic use of
Complainant’s mark in order to capitalize on the goodwill and
fame associated
with the UGG moniker; thus, Respondent fails to establish rights or legitimate
interests in the <uggshop.com> domain name. See Ticketmaster Corp. v. DiscoverNet,
Inc., D2001-0252 (WIPO Apr. 9, 2001) finding no rights or legitimate
interests where Respondent generated commercial gain by intentionally
and
misleadingly diverting users away from Complainant's site to a competing
website; see also Am. Online, Inc.
v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be
unconscionable to find a bona fide offering of services in a respondent’s
operation
of [a] web-site using a domain name which is confusingly similar to
the Complainant’s mark and for the same business”); see also 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 not a bona fide offering of goods or
services pursuant to Policy ¶
4(c)(i).
No
evidence before the Panel suggests that Respondent is commonly known by the
<uggshop.com> domain name under Policy ¶ 4(c)(ii). Respondent’s
WHOIS information indicates that the registrant of the disputed domain name
is
known as “Choi joo yeon” and is
not known by the confusing second-level domain that infringes on Complainant’s
UGG mark. Moreover, Respondent is not authorized
or licensed to use
Complainant’s mark for any purpose. See
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly
known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply; see also RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) interpreting Policy ¶ 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".
Respondent’s
offer to sell the <uggshop.com> domain name registration to
Complainant is further evidence that Respondent lacks rights or legitimate
interests in the disputed
domain name pusuant to Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684
(Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s
lack of rights and legitimate interests in the domain name is further evidenced
by Respondent’s attempt to sell its domain
name registration to Complainant,
the rightful holder of the RED CROSS mark”); see also Mothers Against Drunk Driving v. 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.
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
uses a confusingly similar variation of Complainant’s UGG mark within the <uggshop.com>
domain name to ensnare unsuspecting Internet users. Respondent then redirects
the users to its website, which offers counterfeit
goods for sale. Respondent
commercially benefits from this diversion by offering products for sale to
Internet users who are searching
under Complainant’s mark. Such infringement is
what the Policy was intended to remedy. Thus, the Panel finds Respondent
registered
and used the domain name in bad faith under Policy ¶ 4(b)(iv). 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;
see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov.
22, 2002) finding that if Respondent profits from its diversionary use of
Complainant's mark when
the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent
offered to sell the <uggshop.com> domain name registration to
Complainant for a price that undoubtedly exceeds Respondent’s out-of-pocket
expenses with respect
to the disputed domain name. Respondent uses the disputed
domain name to sells goods that resemble Complainant’s products; therefore,
the
Panel infers that Respondent registered the domain name with knowledge of
Complainant’s rights in the UGG mark. Thus, the Panel
concludes that Respondent
deliberately registered the disputed domain name so that it could ultimately
sell its domain name registration
to Complainant, which evidences bad faith
registration and use pursuant to Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc.,
FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell
a domain [name] bad faith is some accompanying evidence
that the domain name
was registered because of its value that is in some way dependent on the
trademark of another, and then an offer
to sell it to the trademark owner or a
competitor of the trademark owner"); see also Little
Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001)
finding Respondent's offer to sell the domain name at issue to Complainant was
evidence
of bad faith; see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000)
finding that Respondent used the domain name in bad faith because he offered to
sell the domain name
for valuable consideration in excess of any out-of-pocket
costs.
Respondent has
registered and used a domain name that is confusingly similar to Complainant’s
mark for the purpose of offering for
sale products that compete with
Complainant’s products. Respondent’s use of the <uggshop.com>
domain name establishes that Respondent registered the domain name for the
purpose of disrupting the business of a competitor
pursuant to Policy ¶
4(b)(iii). See 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; see also Puckett v.
Miller, D2000-0297 (WIPO June 12, 2000) finding that Respondent has
diverted business from Complainant to a competitor’s website in violation
of
Policy ¶ 4(b)(iii); see also EthnicGrocer.com, Inc. v. Latingrocer.com,
FA 94384 (Nat. Arb. Forum July 7, 2000) finding bad faith where Respondent’s
sites pass users through to Respondent’s competing
business.
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration
of the <uggshop.com>
domain name, additional factors can also be used to support findings of bad
faith. See Twentieth Century Fox
Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) finding that
in determining if a domain name has been registered in bad faith, the Panel
must look at the “totality of circumstances”; see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are
intended to be illustrative, rather than exclusive”).
Respondent’s
registration of the disputed domain name, which incorporates Complainant’s
well-known registered mark and simply adds
the generic term “shop,” suggests
that Respondent knew of Complainant’s rights in the UGG mark. Additionally,
Complainant’s trademark
registration, on file at the United States Patent and
Trademark Office, gave Respondent constructive notice of Complainant’s mark.
Thus, the Panel finds that Respondent chose the <uggshop.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark, which evidences bad faith registration and
use pursuant to Policy ¶
4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding that the “domain names are so
obviously connected with the Complainants that the use or
registration by
anyone other than Complainants suggests ‘opportunistic bad faith’”; see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9,
2000)finding bad faith registration and use where it is “inconceivable that the
respondent could make any
active use of the disputed domain names without
creating a false impression of association with the Complainant”; see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000)
finding that Respondent demonstrated bad faith where Respondent was aware of
Complainant’s famous
mark when registering the domain name as well as aware of
the deception and confusion that would inevitably follow if he used the
domain
names; see also Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) determining that
Policy paragraph 4(b) sets forth certain circumstances, without limitation,
that shall be evidence of registration and use of a domain name in bad faith; see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) finding that evidence of bad faith includes actual or constructive
knowledge of a commonly
known mark at the time of registration; see also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark 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”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <uggshop.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
January 10, 2005
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