Thursday, October 02, 2014

Ugh! No! Trademarking a Few Letters Does Not Mean Any Domain Name Using Those Letters is a Cybersquatter!

In Plaintiff's corner we have Deckers Outdoor Corporation which sells footwear under its UGG brand. In Defendant's corner we have Ozwear, an Australian company that sells sheepskin footwear, and has the domain names ozwearuggs.com and ozwearuggs.com.au. Plaintiff alleges, among other things, that Defendant is a cybersquatter.

Defendant has not responded and one of the things that is interesting about this case is that Plaintiff moves for default judgment. It is interesting because, even though Defendant did not appear, Plaintiff loses!

There are a couple of problems with Plaintiff's cybersquatter claim. As we know, in order to make out a cause of action for cybertsquatting, Plaintiff must
show that 1) Defendants have or had a "bad faith intent to profit from that mark" and 2) "registers, traffics in, or uses a domain name that" is identical or confusingly similar to a mark that was "distinctive" or "famous" at the time of registration of the domain name, or causes dilution of a mark that was famous at the time of the domain name's registration. 15 U.S.C. § 1125(d)(1)(A).
Plaintiff's trademark is three letters: "UGG." Defendant's domain name contains its own name "ozwear" plus those three letters "ugg" plus an "s."

And here's a problem. The term "uggs" is generic for sheepskin boots ~ while "UGG" itself is not generic but is Plaintiff's distinctive trademark.

So if I add an "s" to a distinctive trademark, is it no longer a trademark? Maybe. If adding an "s" turns a distinctive trademark into a generic term, then the trademark owner has a problem. For instance, notes the court, if "CHIP" is a distinctive trademark and you add "s" to make "chips" ~ then the trademark owner don't own every domain name that has "chips" in it.

Plus, notes the court, Defendant uses its own name in the domain name attached to "uggs" to make quite clear that the consumer is not going to Plaintiff's Decker's website but to Defendant Ozwear's website.
After reviewing Plaintiff's allegations, the Court finds that Plaintiff does not allege sufficient facts to show that Defendants' use of the term "uggs" in Defendants' domain names is "confusingly similar" to Plaintiff's UGG Trademark. Plaintiff also does not allege sufficient facts to show that the term "uggs" in Defendants' domain names dilutes Plaintiff's famous UGG mark.
Even in a default judgment case, Plaintiff loses. Tip O' The Hat to the Judge on this one.
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