Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Stussy, Inc., Irvine, CA, USA ("Complainant") represented by John R. Sommer, of Stussy, Inc. The Respondent is Valhalla Promotions aka VP, Wavell Heights, Queensland, AUSTRALIA ("Respondent").

The domain names at issue are <stussygear.com>, <stussygirl.com>, <stussysista.com>, and <stussystuff.com> registered with Melbourne IT.

On March 21, 1001, pursuant to Complainant’s 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.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 13, 2001; the Forum received a hard copy of the Complaint on February 14, 2001.

On February 19, 2001, Melbourne IT confirmed by e-mail to the Forum that the domain names <stussygear.com>, <stussygirl.com>, <stussysista.com>, and <stussystuff.com> are registered with Melbourne IT and that the Respondent is the current registrant of the name. Melbourne IT has verified that Respondent is bound by the Melbourne IT registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 12, 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 Respondent’s registration as technical, administrative and billing contacts, and to postmaster@stussygear.com, postmaster@stussygirl.com, postmaster@stussysista.com, and postmaster@stussystuff.com 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

Complainant requests that the domain names be transferred from Respondent to Complainant.

Complainant’s STUSSY brand was created in 1980 by Shawn Stussy. Complainant distributes the STUSSY brand throughout the world and has registered the STUSSY mark and family of marks for a wide variety of goods and services in many countries including the U.S. and Australia. Complainant registered the STUSSY trademark in the U.S. as early as March 27, 1986. Complainant registered the STUSSY SISTA trademark on October 13, 1998. Complainant has also used STUSSYGEAR as a trademark. Moreover, since 1997 Complainant’s girl line of products has been in separate catalogs titled STUSSY GIRLS.

Respondent registered <stussygirl.com> on January 5, 2000 and <stussysista.com> on February 1, 2000.

On June 28, 2000, Respondent registered <stussygear.com> and <stussystuff.com> immediately after receiving Complainant’s cease and desist letter.

On July 4, 2000, Respondent stated "I am a domain reseller and will continue to register domain names of all sorts and upload a web page on them or sell them to the highest bidder." Although Respondent was unwilling to put a specific price, he mentioned that a domain name dispute once settled for $3 million.

Respondent has no content on any of the domains, nor are any of the domains operational.

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.

The domain names <stussygear.com> and <stussysista.com> are identical to Complainant’s marks. See Croatia Airlines v. Kijong, AF 0302 (eResolution Sept. 25, 2000) (finding that the domain name "croatiaairlines.com" is identical to the Complainant's trademark "Croatia Airlines").

The domain names <stussygirl.com> and <stussystuff.com> are confusingly similar because these domain names merely combine Complainant’s mark with a generic term. See VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the Complainant’s Verisign mark and the domain names "verisignindia.com" and "verisignindia.net" where Respondent added the word "India" to Complainant’s mark); see also General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term "direct" on to the Complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by the Complainant, and thus the Respondent’s domain names are confusingly similar).

Therefore, Complainant has satisfied the requirements under Policy ¶ 4(a)(i).

Complainants have shown that Respondent has passively held on to the domain names. Such evidence demonstrates that Repondent has not established rights or legitimate interests in the domain names. See Ziegenfelder Co. v. VMH Enterprises, Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the said domain name).

Additionally, Complainant has shown that Respondent has no interest in the domain names other than to sell them for a profit. See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the web sites that are located at the domain names at issue, other than to sell the domain names for profit).

Therefore, Complainant has satisfied the requirements under Policy ¶ 4(a)(ii).

Complainant has shown that Respondent has demonstrated bad faith by not developing a web site at any of the domain names. See Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that the Respondent registered and uses the domain name in bad faith).

Additionally, Respondent’s attempt to sell the domain names to Complainant for excess of out of pocket expenses shows bad faith on the part of the Respondent. See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith).

Therefore, Complainant has satisfied the requirements under Policy ¶ 4(a)(iii).

Based upon the above findings and conclusions, the Panel finds in favor of Complainant. Therefore, the relief requested by Complainant pursuant to Policy ¶ 4(i) is Granted. Respondent shall be required to transfer to Complainant the domain names <stussygear.com>, <stussygirl.com>, <stussysista.com>, and <stussystuff.com>.