The Northern District of Illinois granted a preliminary injunction against various unnamed Chinese defendants who sold counterfeit UGG® brand shoes online. In granting the injunction, the court found that Deckers Outdoor Corporation (“Deckers”) was likely to succeed on the merits of its claims for trademark infringement, counterfeiting, and false designation of origin under the Lanham Act, 15 U.S.C. §§ 1114, 1125(a), and its cyberpiracy claim under the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d). Deckers Outdoor Corp. v. Does 1-100, No. 1:12-cv-10006, slip op. at 1 (N.D. Ill. Jan. 16, 2003).
Deckers produces and distributes UGGs throughout the United States and on its website. It owns the registration for the UGG mark in the United States and over 100 other countries. Deckers alleges that the unnamed defendants use a variety of domain names and create websites that incorporate copyright-protected content to mislead customers into believing that they are purchasing genuine UGG products. Id. at 1-2.
The court found that Deckers is likely to succeed on its trademark infringement claim. First, Deckers is entitled to a presumption that its marks are protected because it holds registrations for the UGG mark. Second, applying the Seventh Circuit’s test for likelihood of confusion, the court found that Deckers established that it is likely to succeed in establishing confusion despite the lack of evidence of actual confusion. Rather than show actual confusion, Deckers produced “compelling evidence” that the defendants were selling counterfeit UGG products online with the intent to induce customers looking for genuine UGG products to purchase their counterfeit products. Id. at 3-6.
With respect to the cyberpiracy claim, the court found that the UGG mark is well known among consumers. It inferred a bad faith intent to profit from the UGG mark because the defendants register, traffic in, and use domain names that are identical or confusingly similar to the UGG mark. Therefore, the court found that Deckers was likely to succeed in proving that the defendants violated the ACPA. Id. at 6-7.
The court entered a preliminary injunction against the defendants. The injunction prohibits the defendants from further infringement, freezes the defendants’ PayPal and other financial accounts, and allows Deckers to conduct discovery to learn the defendants’ identities.
Lesson Learned: Even without evidence of actual confusion, Deckers was able to establish likelihood of success sufficient for preliminary injunction on trademark infringement and cyberpiracy claims by showing the strength of its mark and a strong case of bad intent.