Affiliate Sites And The Law

[Incipience]

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Only one DC in that Unit.. worrying I know.

[Incipience]

Guess what.. Lawyers Email demanding that I give them the domain.

Lol.. your really couldnt make this all up. But now I get my chance to defend.

[sgpratley]

I'd be careful if I were you, there's fairly strong grounds for doing you for passing off based on the domain name you've used. Saying no crime has been committed means they've just not bothered to charge you yet.

If you think you have grounds for saying that the site wasn't passing off then go for it, it's difficult to say without also seeing the site.

I agree it's a crappy process they've followed though. Shouldn't UGG be demanding the domain off Nominet rather than you if it's suspended?

I hope this doesn't mean we're headed for the system they have in some other european countries where you need a registered company name or trademark to buy a .co domain name.

[Renners]

It's interesting you say they want the domain, surely if, as you say, ug is an aussie slang term then they can't. I suppose it's what came first ug or their brand name.

I must admit doing a search on google aus shows a use of this term so its not that clear from their point.

All the best with this I do think you've been caught in something that was supposed to make the internet a safer place.

Regards,
Renners

[Incipience]

Renners.. for sure.. I do applaud the fact that many fake sites were taken off line. However what you dont hear about is some 400 affiliate sites that advertised brands were taken off line also.

I guess taking out innocent sites that the brands believed infringed were an opportunity to easy to miss.. This was a case of circumvention..

Killing 2 birds with one stone.. Criminalise then see who complains.

I guess it would be like arresting 100 shoppers for Shoplifting, removing all rights to due process then releasing the ones who make a fuss about it.

Ok perhaps an extreme analogy.. but.. it was an extreme action.

As I mentioned the domain is now back on line and all reference to UGG Australia Gone.. now promoting other UGGS, UGS..

E-tailers standing along side and not backing down to the threats..

Awaiting written apology from E-crime unit... Formal Complaint went off to the Police Complaints Commission today.. dont expect much to happen as they all stick together.. but at least it goes on record.

So.. Nominet and Police put the site back online and I have been cleared of any wrongdoing..

But yes as you say.. Brand Protection Lawyers want the domain and have made threats if I dont comply they will have my affiliate account cancelled and pursue the domain via DRS.

To Quote Catherine Tate ""Am I bovvered?", "Do I look bovvered?" "Are you disrespecting me?""

[sgpratley]

Well done mate, shows what a little persistence can achieve. I don't know much about the Ugg brand, but if like you say it's a general slang term you should have a decent case.

A nasty case of shoot first and ask later, not a nice precedent.

Oh, I forgot why I dug the thread up again. You'll never guess who's merchant of the month over at Tradedoubler

[Incipience]

The irony of your last sentence, is very relevant to my case.

That Merchant of the Month, is not the same company. All very confusing.. lol.

The term UG, UGG, UGGS and derivatives were strucken from the Australian Trademark register, due to the "generic" name of boot that was invented back in the 1920s Aviators called the fug boots, as they were flying ugg boots.. The whole saga goes on until the 1990's where the Trademark was expired and then eventually the trade mark UGH Boots was bought and through aquisitions it was aquired by the now Deckers Corporation.. Who have seen their fair share of disputes over the name..

Commonwealth Countries Dictionaries up until 2006 (including collins) had the name UG, and UGG as a style of Sheepskin boot.

Deckers Corporation Now Owns the Trade Mark UGG Australia and does try to enforce UGG as its own..

They have won pretty much all of their WIPO UDRP cases, as they do fight hard.. however they are not shy of squatting domains themselves..

Uggs-n-Rugs.com had the Australian TM office declare that the word/s ug / ugh and ugg are interchangeable and are generic words used to describe sheepskin boots.

However Check out UggsNRugs.com - Comical Really, I guess its a case of Do as I Say and Not as I do.

One thing is for sure.. Deckers Will be better known for their actions than their footwear.

ONLY SHEEPSKIN BOOTS ARE REAL UGG BOOTS AND YOU CAN HELP “SAVE THE UGG” BY BUYING REAL UGG BOOTS MADE FROM REAL SHEEPSKIN FROM MEMBERS OF THE AUSTRALIAN SHEEPSKIN ASSOCIATION INC. (ASA).

Many of you will have read that an American company (Deckers Outdoor Corporation {Deckers}), who use the label UGG Australia, had their lawyers send out threatening letters to most if not all manufacturers and retailers in Australia selling ugg boots. In essence, Deckers claimed to own the trademark “ugg” which has been trademarked in the U.S. and “ugh” and “ugh-boots” which were old, unused trademarks they purchased in Australia in 1996. (It has always been and still is, our contention that these Australian trademarks should never have been registered (1971) as they were common terms for sheepskin boots decades before being registered.

When the first U.S. trademark was going through in the U.S., when asked by the U.S.A. federal trademark office’s examiner, Susan Heller, on March the 7th 1986 “what is the significance of the term ugg?”, she was told under oath that “There is no significance of the term ugg in the relevant trade or industry.” This is despite the fact that many years prior, ugg, ug and ugh were all generic terms for sheepskin boots and were so much a part of popular culture, they were referenced in Australian dictionaries and had been advertised as ‘ugg boots’ in U.S. magazines as early as 1970 (we actually have a 1970 edition of one of these magazines).

Deckers argued that they had spent millions of dollars in marketing the term ‘ugg’. What about the millions spent for at least 70 years by Australian manufacturers? Proper due diligence would have yielded the term’s genericness.

Trademark law clearly states that no protection exists for generic words. Handing over exclusive use to any one company would end up in the loss of jobs and businesses because none of the small businesses involved could afford to re-educate customers to search on a NEW common term or terms. Don’t forget that most of these small Australian businesses operate on the internet where search terms are the ONLY way to be found. So developing a new name was just not a solution.

For two years members of the Australian Sheepskin Association (ASA) searched for hard evidence that the ugg words in all spellings were generic. Thousands of references were found in magazines, newspapers and telephone directories in Australia, the U.S. and the U.K. going back to 1936. Many other documents were found with reference to “thigh high sheepskin Fug boots as early as 1916, which were worn by pilots and navigators in open-cockpit aeroplanes in World War I. Dozens of Statutory Declarations were made by people who had been in the ugg boot manufacturing industry for the past 50 years stating that sheepskin boots had always been referred to as ugg boots with various spellings.

In November 2005 Uggs-N-Rugs finally had a hearing with the Australian Trademarks Office (IP Australia) where their Trademark Attorney and Barrister presented the evidence and their case to have Deckers trademark for “ugh-boots” removed from the Register.

On 16th January 2006, the Trademarks Office handed down their decision that the evidence was “overwhelming” that the terms ‘ugg boots’, ‘ug boots’ and ‘ugh boots’ were generic terms and could be used by anyone in Australia to refer to sheepskin boots, and that the trademark ‘ugh-boots’ be removed from the Register. A complete copy of this decision is available online.

The ASA had applied for the removal of the trademark ‘ugh’ and as a result of the above decision, had their attorneys write to Deckers attorneys asking them to withdraw this trademark voluntarily. This they did and their ‘ugh’ trademark was also removed from the Register.

Deckers still own trademarks for the word ‘ugg’ in many countries for sheepskin footwear, but they can no longer legally threaten businesses in Australia from using the term in Australia.

Just remember, Deckers still own the trademark “UGG Australia” with a blazing sun logo underneath the words, but they are NOT Australian.

[Mogga]

I always thought ugg was some sort of slang for ugly...

[sgpratley]

Who says the forum has gone downhill these days!

Incipience, that was fascinating, and I'm sure will be extremely useful to anyone else here with a similar problem to yours.

Sounds like even the sites shut down for selling 'fake' ugg boots could have a case as long as they're not using the Ugg Australia trademark. I shall keep en eye on this story with renewed interest :-)

[LawyerAffiliate]

Hi there,

I have been away from the forum recently and had only just noticed this now rather lengthy thread.

Simplfying some of the key issues:

1. There is some interaction between intellectual property (civil law) and criminal law but it is generally restricted to counterfitting and bootlegging. I have not heard of the police taking such an interest in what is certainly a civil issue such as this before. but I will be looking in to it now. If anyone has any more information on genuine retailers and their affiliaties who have been affected in a similar way, please let me know.

2. Using a brand name in a domain name is clearly asking for trouble but it is not the end of the matter. Brand owners do not have total control over who can and cannot use their brands. Affiliates do have some limited protection where they are using the brand name to sell the genuine goods which the brand relates to. Search my previous posts for more information.

3. Incipience - I strongly suggest you take professional advice here. UGG have made it clear that they are prepared to aggressively defend and protect their intellectual property. I suggest that you find a solicitor who specialises in intellectual property law and ask them for a fixed fee review of the correspondence and an initial view on your position. I would expect their fees to be £500-1000 plus VAT for this.

Please let me know if I can help you further with this.

[toast8172]

Hi,
I watched a program a while back all about Deckers battle with Australian makers of UGG boots.
It can be viewed online if anyone fancies a look. The Good The Bad and The Ugg Boot

Cheers
Paul

[Incipience]

Ok, so its been two years since that dreaded "Operation Takedown" the site is still going strong and we have strong partnership agreements with our affiliate partners.

I have been contacted no less than 5 times this month from news agencies looking to put together a piece on this as clearly the information coming down the wire is that nobody has ever challenged a takedown.

In light of the recent news of Nominet being able to essentially police the UK namespace it does make me wonder where due process exists in this 21st Century United Kingdom.

One commenter mentioned "Labour Government" but clearly things have gotten much worse under this brand friendly coalition.

The Nominet DRS exists for a reason, but by simply shutting down sites on the say so of those with little too no understanding of the internet. I of course refer to those I dealt with in the MET Special Crimes Unit, they had not idea as to what an affiliate site was or how the concept worked.

It is a worry, that these decisions are being made without representation from the domainer and affiliate community, its all former Civil Servants living in a Black and White World, where no grey exists.

Due Process is a right to all UK residents, without it, well, perhaps we should all just move to China.