Mountain Origins Design, LLC d/b/a Stio v. dong liu / 帆 颜
Claim Number: FA2209002014357
Complainant is Mountain Origins Design, LLC d/b/a Stio ("Complainant"), United States, represented by Carolyn Juarez of Neugeboren O'Dowd PC, United States. Respondent is dong liu / 帆 颜 ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <stio-sale.com> and <stiostores.com>, registered with Name.Com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to Forum electronically on September 30, 2022; Forum received payment on September 30, 2022.
On October 2, 2022; October 10, 2022, Name.Com, Inc. confirmed by email to Forum that the <stio-sale.com> and <stiostores.com> domain names are registered with Name.Com, Inc. and that Respondent is the current registrant of the names. Name.Com, Inc. has verified that Respondent is bound by the Name.Com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 18, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed in the domain name registration records as technical, administrative, and billing contacts, and to postmaster@stio-sale.com, postmaster@stiostores.com. Also on October 18, 2022, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On November 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant has alleged that the disputed domain names in this proceeding are effectively controlled by the same person or entity. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder."
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions sets forth factors that are normally considered when a complainant is filed against multiple respondents:
[P]anels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants' identity(ies) including pseudonyms, (ii) the registrants' contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.11 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/.
Complainant contends that Respondents are all aliases for a single entity or that the disputed domain names are under common control. Complainant notes that the corresponding websites share the same look and feel, both featuring Complainant's design mark, similar icons, and the same organization and menu options. The Panel notes also the obvious similarity between the domain names themselves, the fact that they were registered via the same registrar approximately one month apart, and the fact that they appear to use the same hosting service provider. In addition, as stated above, the Complaint was communicated to Respondents using the contact information in the registration records for both domain names, and no objection has been received to the inclusion of both domain names in this proceeding. See, e.g., Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Client Care et al., FA 2004683 (Forum Aug. 22, 2022) (treating multiple respondents as under common control); G. G. Properties, Ltd. v. Afeez Adeleke / Rufai Muhammed, FA 1985582 (Mar. 29, 2022) (same). The Panel finds that the domain names at issue in this proceeding are under common control, and accordingly refers to the registrants collectively as "Respondent."
A. Complainant
Complainant uses STIO and a related design mark composed of the word STIO and an image of a pinecone in connection with outdoor apparel and accessories. Complainant owns corresponding United States trademark registrations, both of which reflect a first use date of 2012.
Respondent registered the disputed domain names <stio-sale.com> and <stiostores.com> in August and September of 2022. Each domain name is being used for a website that displays Complainant's STIO design mark and offers what appear to be Complainant's products for sale at discounted prices. Complainant states that the websites contain text, images, and other components copied from Complainant's website, along with invalid contact information. Complainant notes similarities between the information on the websites and that on similar imposter websites that were at issue in two previous proceedings, Mountain Origins Design, LLC d/b/a Stio v. Haiyan Zhao, FA 2000169 (Forum July 13, 2022) (ordering transfer of <stiopromo.com>), and Backcountry.com, LLC & Mountain Origins Design, LLC d/b/a Stio v. Xiuying Liu, D2022-0420 (WIPO Apr. 5, 2022) (ordering transfer of <thestoiconline.com>). Complainant alleges that Respondent is using the domain names and websites to obtain personal and payment information from consumers.
Complainant contends on the above grounds that each of the disputed domain names <stio-sale.com> and <stiostores.com> is confusingly similar to its STIO mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
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."
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Each of the disputed domain names <stio-sale.com> and <stiostores.com> incorporates Complainant's registered STIO trademark, adding a hyphen in one instance and the generic term "sale" or "stores," and appending the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Mountain Origins Design, LLC d/b/a Stio v. Haiyan Zhao, supra (finding <stiopromo.com> confusingly similar to STIO); Links (London) Ltd. d/b/a Links of London v. "Barack Hussein Obama Jr" et al., D2011-0878 (WIPO July 11, 2011) (finding <links-of-london-sale.com> and <linksoflondonstores.com> confusingly similar to LINKS OF LONDON). The Panel considers the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain names incorporate Complainant's registered mark without authorization, and they are being used for websites that attempt to pass off as Complainant and offer for sale competing and likely counterfeit or nonexistent products. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Mountain Origins Design, LLC d/b/a Stio v. Haiyan Zhao, supra (finding lack of rights or interests in similar circumstances); Links (London) Ltd. d/b/a Links of London v. "Barack Hussein Obama Jr" et al., supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith can be shown by evidence that Respondent registered a domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith can be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered two domain names incorporating Complainant's registered mark and is using them for websites that attempt to pass off as Complainant and offer for sale competing and likely counterfeit or nonexistent products. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Mountain Origins Design, LLC d/b/a Stio v. Haiyan Zhao, supra (finding bad faith registration and use in similar circumstances); Links (London) Ltd. d/b/a Links of London v. "Barack Hussein Obama Jr" et al., supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stio-sale.com> and <stiostores.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: November 18, 2022
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