One hundred anonymous entities' sale of counterfeit Ugg products through domain names incorporating the mark is likely to cause consumer confusion and irreparable harm to the brand, supporting the brand's request for a preliminary injunction, the U.S. District Court for the Northern District of Illinois ruled Jan. 16 (Deckers Outdoor Corp. v. Doe, N.D. Ill., No. 1:12-cv-10006, 1/16/13).
The court, building upon its Dec. 20 temporary restraining order, concluded that the defendants likely infringed the plaintiff's Ugg mark and registered and used domains containing the mark in bad faith.
Deckers Outdoor Corp. manufactures and sells Ugg branded footwear. Deckers sells Ugg products through brick and mortar retail outlets, and through its website. Deckers has registered the Ugg trademark in the United States and in more than 100 other countries.
Deckers filed a complaint against the anonymous defendants whom it alleged were foreign nationals that were offering to sell counterfeit Ugg products on the internet.
Deckers was granted a TRO in December. Deckers then sought a preliminary injunction.
Deckers bore the burden of demonstrating that it was likely to succeed on the merits of its trademark infringement claim in order to entitle it to a preliminary injunction, the court said.
The court turned to the likelihood of confusion test set forth in AutoZone Inc. v. Strick, 543 F.3d 923, 88 U.S.P.Q.2d 1225 (7th Cir. 2008), in order to determine if Deckers was likely to prevail on its trademark infringement claim.
Because the evidence indicated that the defendants were in fact selling counterfeit products, the court applied a truncated confusion test before determining that Deckers was likely to succeed on its infringement claim. Deckers and the defendants advertise and sell their products online, targeting consumers looking for Ugg merchandise, the court said.
“Those consumers are diverse with varying degrees of sophistication, and they are likely to have difficulty distinguishing authentic UGG merchandise from counterfeit products,” Magistrate Judge Maria Valdez said.
The court did not require Deckers to demonstrate actual consumer confusion. Such evidence was not required to demonstrate that a likelihood of confusion exists, given the compelling evidence that the defendants attempted to palm off their goods as genuine Ugg products, the court said.
The defendants' use of the well-known mark with the apparent intent to divert consumers also supported the plaintiff's claim under the Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125(d).
Many of the defendants' domain names incorporated the word “Ugg” and the defendants used copyrighted photographs of Ugg products and logos to sell counterfeit versions of Ugg footwear and other products. Those facts demonstrated the defendants' bad faith intent to profit, the court held.
The likelihood of irreparable harm required to support a preliminary injunction is generally presumed in trademark infringement cases, said. But the court went on to find a probability of irreparable harm in the significant resources the brand has expended in promoting its products.
The court found that the unauthorized use of the Ugg trademark was likely to result in irreparable harm to Ugg. The court noted the brand's popularity, and extensive media coverage of the brand in popular magazines like Time, Vogue, and Elle.
The court thus enjoined the defendants from manufacturing, importing, or offering to sell products bearing counterfeit UGG marks. It also granted the plaintiff's request for the continued freezing of the defendants' PayPay accounts, and continued control of the defendants' domain names.
Deckers was represented by Kevin W. Guynn of Greer Burns & Crain, Chicago.
By Amy E. Bivins
Text is available at /uploadedfiles/BNA_V2/Images/From_BNA_V1/News/12cv10006_11612(1).pdf.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)