Deckers Outdoor Corp., owner of the UGG brand of footwear, recently obtained a preliminary injunction against one hundred anonymous entities that were selling counterfeit UGG products through domain names that also incorporated the UGG mark, in Deckers Outdoor Corp. v. Doe, No. 12-cv-10006 (N.D. Ill. Jan. 16, 2013). The Court has effectively shut down the defendants’ commercial operations, enjoining them from making, importing, and selling products under the UGG marks, freezing their PayPal accounts, and controlling the infringing domains.
Many of the websites also incorporated copyrighted photographs of authentic UGG products and logos, which, coupled with the use of UGG in the domain names, demonstrated a bad faith intent to profit, supporting violations under the Anticybersquatting Consumer Protection Act in addition to the trademark counterfeiting claim. Deckers had obtained a temporary restraining order in December against the defendants, who are believed to be foreign nationals.
Deckers is proactive when it comes to educating consumers about counterfeit products, which is important for maintaining the goodwill associated with a valuable brand. Deckers has a dedicated “What is counterfeit” website, which is prominently linked from its home page and includes a listing of the thousands of counterfeit websites Deckers has identified.