Stussy, Inc. v Body & Fitness

Claim Number: FA0012000096253

PARTIES

The Complainant is Stussy, Inc. , Irvine, CA, USA ("Complainant") represented by John R. Sommer, Stussy, Inc. The Respondent is Body & Fitness, Long Beach, CA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is "stussy.net" registered with Tucows.

PANEL

On January 5, 2001, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 8, 2000; The Forum received a hard copy of the Complaint on December 8, 2000.

On December 13, 2000, Tucows confirmed by e-mail to the Forum that the domain name "stussy.net" is registered with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 13, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 2, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts, and to postmaster@stussy.net by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forumís Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIESí CONTENTIONS

A. Complainant

Complainant alleges the following:

The domain name stussy.net is identical and confusingly similar to Complainantís registered trademark STUSSY.
Complainant owns the STUSSY trademark. Complainant has registered the STUSSY trademark in the U.S. and the rest of the world. The trademark is registered for a wide variety of goods and services, including the offering of products over the Internet.

STUSSY is a famous trademark. The STUSSY brand was created in 1980 by Shawn Stussy. Since that time, the STUSSY brand has become world famous among its intended market. Complainant promotes its products at tradeshows throughout the world. Complainant also advertises in many publications directed towards its core audience and sells it in widely distributed catalogs in both the United States and Europe. Many movie, television and rock stars wear the brand. Strong evidence of the fame of the STUSSY brand is the numerous articles that mention STUSSY. The August 1999 issue of The Face lists STUSSY among the "40 greatest brands ever." The STUSSY brand was listed by Details magazine as being in the same league as MTV, COCA-COLA, NIKEís SWOOSH Design, the PLAYBOY Bunny and BEN & JERRYíS. The STUSSY brand is well known among most teenagers because stores such as Pacific Sunwear carry it.
Of relevance are the domain name disputes that have been decided to date. Network Solutions cancelled a pirate registration for stussy.com under its prior policy. The administrator at NetZero.Com concluded that the registrations for stussy.org and stussytin.com were invalid. The registration for stussysunglasses.com was transferred to Complainant without compensation.
Complainant registered the domain name stussy.net on April 10, 1998, through Network Solutions. Complainant thought that the registration was valid through April 10, 2001. Network Solutions sent its invoice to Complainantís old address (even though it has Complainantís current address on all other registrations), so Complainant did not receive it. Thereafter, Network Solutions cancelled the registration of the domain name for non-payment, which was taken by Respondent.
Since Respondentís business name is Body & Fitness, it has no legitimate reason to register stussy.net as his domain name. According to its Dun & Bradstreet report, Respondent filed Chapter 7 Bankruptcy on September 17, 1997. It is unclear why Respondent is still in business or needs a domain name. The report also lists its business as "retail and wholesale vitamin health products." The word STUSSY is not generic for any of Respondentís products.
Respondent registered the domain name in bad faith, for the purpose of obtaining business or compensation from Complainant. Two days after registration of the domain name, Respondent contacted Complainant to offer to "display whatever content that [Complainant] wish to be displayed." After Complainant demanded the transfer of the domain name, Respondent replied: "If you contact me again, my position will be even less negotiable."

B. Respondent

The Panel has received no submission from Respondent.

FINDINGS

The Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") state the following with regard to default cases:

(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. Rule 14.

In this case, Respondent has not submitted a response, and therefore this Panelist may infer, for the purposes of this decision, that the averments in the complaint are true. See Ziegenfelder Co. v. VMH Enterprises, Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding that based on Respondentís failure to respond, the Panel draws two inferences: 1) that Respondent does not deny the facts asserted by Complainant, and 2) Respondent does not deny conclusions which the Complainant asserts can be drawn from the facts).

Based on the investigation, this panelist also takes note that Respondent registered the domain name after he filed Chapter 7 bankruptcy.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The domain name stussy.net is identical to the Complainantís trademark STUSSY under Policy 4(a)(i). See Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the Complainantís famous NIKE mark); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as "net" or "com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Rights or Legitimate Interests

Prior to Respondentís registration of the domain name, Complainant had registered the STUSSY trademark in the U.S. and the rest of the world, and registered the domain name stussy.net. Complainant inadvertently permitted the registration of the domain name to be cancelled by Network Solutions. See American Anti-Vivisection Society v. "Infa do Net" Web Services, FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainantís prior registration of the same domain name is a factor in considering Respondentís rights or legitimate interests in the domain name).

Respondent has not offered any evidence that they have been commonly known by the

domain name under Policy 4(c)(ii). In fact, they are known by the name "Body &

Fitness." Moreover, Respondent has not provided any evidence that they are using the

domain name in connection with a bona fide offering of goods or services under Policy 4(c)(i), or in connection with a legitimate noncommercial or fair use under Policy

4(c)(iii),. See The Body Shop International PLC v. CPIC NET and Syed Hussain, D2000-1214 (Nov. 26, 2000) (finding "that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainantís <THE BODY SHOP> trademark and service mark"); Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainantís prior rights in the domain name precede Respondentís registration; (3) Respondent is not commonly known by the domain name in question).

Registration and Use in Bad Faith

Complainantís trademark is well known in the U.S. and around the world. Respondentís constructive knowledge of the Complainantís trademark evidences his registration and use of domain name in bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, April 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration);

Exxon Mobil Corporation v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that the Respondent had actual and constructive knowledge of the Complainantís EXXON mark given the world-wide prominence of the mark and thus the Respondent registered the domain name in bad faith).

Moreover, Respondentís offer to sell, rent or otherwise transfer the domain name registration to Complainant two days after registration, as contended by the Complainant, demonstrates his bad faith in registration. Policy 4(b)(i). See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) (finding that the name was registered in bad faith because of the short time frame between the Respondentís registration and the unsolicited offer of sale to the Complainant); American Anti-Vivisection Society v. "Infa dot Net" Web Services, FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that "general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith").

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "stussy.com" be transferred from the Respondent to the Complainant.

James P. Buchele, Panelist

Dated: January 13, 2001

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