Deckers Outdoor Corp v Chen (kissugg.co.uk ...) -[2009] DRS 7638- (03 November 2009)

Key Facts

Issues

• The issue of whether the domain names mislead consumers into thinking they are connected to the Complainant, given the inclusion of the UGG mark and the websites' use of unauthorized branding.
• The Complainant asserts the domain names were used to sell counterfeit UGG boots and infringe copyrights, which the Expert concludes supports the finding of abusive registration under the Policy.
• The second issue is whether the Respondent's registration and use of the domain names for selling counterfeit UGG products constitutes an abusive registration, including factors like unauthorized use of the trademark, consumer confusion, and disruption of the Complainant's business.
• The primary issue is whether the Complainant holds rights in the UGG mark and whether the domain names (e.g., kissugg.co.uk, goodugg.co.uk) are sufficiently similar to the UGG trademark to constitute a conflict under the Policy.

Holdings

• The Expert ordered the transfer of all five disputed Domain Names to the Complainant. This decision followed the conclusion that the Complainant holds valid rights in the UGG mark and that the Respondent's registration and use of the domains were abusive under the Nominet Policy.
• The Expert determined that the disputed Domain Names (kissugg.co.uk, goodugg.co.uk, hellougg.co.uk, gpbugg.co.uk, uggshow.co.uk) constitute Abusive Registrations. This was based on evidence that the domains were used to sell counterfeit UGG products, caused consumer confusion by implying affiliation with the Complainant, and were part of a pattern of registrations by the Respondent targeting famous trademarks.
• The Expert concluded that the Complainant has Rights in the UGG trademark, as evidenced by the US trademark registration 3,050,925, which is in the Complainant's name and predates the registration of the disputed Domain Names. Despite issues with the clarity of other trademark certificates, the US registration alone suffices to establish the Complainant's claim under the Policy.

Remedies

Legal Principles

• The Complainant must prove, on the balance of probabilities, both that it has rights in a name or mark similar to the domain name and that the domain name is an abusive registration under the Nominet Policy.
• The standard of proof required is the balance of probabilities, which the Complainant satisfied through evidence of trademark ownership and the Respondent's use of domain names to sell counterfeit goods.

Precedent Name

• UGG Holdings, Inc. v Roussos
• Deckers Outdoor Corp. v Choi
• Deckers Outdoor Corp. v Bills Distribution
• Hitachi v. Logic Europe
• Seiko Epson Corp. v. Inkking
• Vodafone Group Plc v. Knights Indep. Traders
• Nokia v. Just Phones
• Deckers Outdoor Corporation v. Original UGG
• Taylor Woodrow Plc v. M Davis
• UGG Holdings, Inc. v WebQuest.com, Inc.
• UGG Holdings, Inc. v Sharpe
• UGG Holdings, Inc. v Barclay
• Deckers Outdoor Corporation v. Rongchun Huang and Yuan Chen
• Compaq Trademark BV v. Balata.com LLC

Cited Statute

Judge Name

Passage Text

• On the Expert's own analysis, 'kissugg', 'goodugg', 'hellougg', 'gpbugg' or 'uggshow' are not recognised ordinary English words. However, it is a reasonable expectation that an English reader would deconstruct them into recognisable parts where possible, and would be likely to perceive them respectively as 'kiss UGG', 'good UGG', 'hello UGG', 'gbp UGG' and 'UGG show'.
• The Expert determines that the Domain Names (1) kissugg.co.uk; (2) goodugg.co.uk; (3) hellougg.co.uk; (4) gpbugg.co.uk; (5) uggshow.co.uk should all be transferred to the Complainant.