DECISION
Mountain Origins Design, LLC d/b/a Stio v. Judy Lay / Judy T Lay / GNavarro Julia
Claim Number: FA2311002072700
PARTIES
Complainant is Mountain Origins Design, LLC d/b/a Stio ("Complainant"), represented by Carolyn Juarez of Neugeboren O'Dowd PC, Colorado, USA. Respondent is Judy Lay / Judy T Lay / GNavarro Julia ("Respondent"), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <stio.shop> and <stio-us.com>, registered with Gname.com Pte. Ltd. and NameCheap, Inc.
PANEL
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.
The Honorable Neil Anthony Brown KC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on November 28, 2023; Forum received payment on November 28, 2023.
On November 29, 2023 and November 30, 2023, Gname.com Pte. Ltd. and NameCheap, Inc. confirmed by e-mail to Forum that the <stio.shop> and <stio-us.com> domain names are registered with Gname.com Pte. Ltd. and NameCheap, Inc. and that Respondent is the current registrant of the names. Gname.com Pte. Ltd. and NameCheap, Inc. have verified that Respondent is bound by the Gname.com Pte. Ltd. and NameCheap, Inc. registration agreements 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 December 4, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@stio.shop and postmaster@stio-us.com. Also on December 4, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 13, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceeding, Complainant has submitted that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. 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 question therefore is whether the named Respondents, because of their use of several alleged aliases, can be said in reality to be "the same domain name holder," which the Complainant submits they are.
The Panelo finds that the Complainant has shown that in the case of the domain name <stio.shop>, the mailing address of the purported registrant is nonexistent and the evidence establishes that fact. The same conclusion must be reached with respect to the domain name <stio-us.com> where the registrant's address is also nonexistent. The Panel is also influenced in considering this issue by the fact that the two domain names use the Complainant's STIO mark and for the same purpose, which must be more than a coincidence and also that the two domain name were registered within four months of each other. Moreover, as the Complainant submits, the contents of the websites to which the domain names resolve has the same overall "look and feel", the STIO mark appears in the banner of each site and similar round "Sale" icons are displayed with each listing. Also, the product listings are nearly identical and have the same or similar layout. It is therefore clear to the Panel that these two domain names were probably concocted by the same entity using aliases. Both domain names seen to be promoting the same fraud and it would be a remarkable coincidence if both nominal Respondents embarked on it independently at roughly the same time.
Having regard to all of those considerations and the whole of the evidence, the Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases and are therefore "the same domain name holder". The proceeding may therefore go forward on that basis. For reasons of convenience, the nominal Respondents will hereafter be referred to as "Respondent".
PARTIES' CONTENTIONS
A. Complainant
Complainant made the following contentions.
1. Complainant is a United States company engaged in the provision of premium outdoor apparel and accessories and related goods and services.
2. Complainant has registered trademark rights in the STIO mark by virtue of its registration of the mark with the United States Patent and Trademarks Office ("USPTO), Registration No. 4,396,916, registered on September 3, 2013 ("the STIO mark").
3. Respondent registered the <stio.shop> domain name on June 23, 2023, and the <stio-us.com> domain name on October 18, 2023 ("the disputed domain names").
4. In so doing, Respondent has incorporated in the disputed domain names the entirety of the Complainant's STIO trademark without any authority to do so.
5. The Complainant acquired its rights in the STIO mark prior to the registration by the Respondent of the disputed domain names.
6. The Respondent has caused the disputed domain names to resolve to websites that use the STIO mark in banners and which contain text, photographs, designs, product names, listings and product images misappropriated or copied from the Complainant's official website at <www.stio.com> including copyrighted material.
7. The disputed domain names are respectively identical and confusingly similar to the STIO mark.
8. The Respondent has no rights or legitimate interests in the disputed domain names. That is so because:
(a) the products displayed on the resolving websites purport to be genuine and official STIO products at heavily and disproportionately discounted prices;
(b) the conduct of the Respondent aforesaid includes an attempt to obtain consumers' personal and financial information;
(c) the Respondent has held itself out as being the Complainant or as being entitled to use the STIO mark;
(d) the Respondent has by that means infringed the Complainant's STIO mark and sought to mislead consumers.
9. The Respondent has registered and is using the disputed domain names in bad faith. That is so because the Respondent:
(a) has sought to impersonate the Complainant or create the false impression that it is the Complainant and that the websites are those of the Complainant or that they are affiliated with or sponsored by the Complainant;
(b) purports to sell genuine STIO products at heavily and disproportionately discounted prices;
(c) has attempted to perpetrate a fraud on consumers to the effect that they are dealing with the Complainant;
(d) attempting to sell counterfeit products;
(e) is engaging in phishing and other illegal activity.
10. The Complainant has cited numerous prior UDRP decisions to support its contentions.
11. It is therefore submitted by the Complainant that it has shown all of the elements that it must establish and that the domain names should therefore be transferred from the Respondent to the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Complainant is a United States company engaged in the provision of premium outdoor apparel and accessories and related goods and services.
2. Complainant has established its registered trademark rights in the STIO mark by virtue of its registration of the mark with the United States Patent and Trademarks Office, Registration No. 4,396,916, registered on September 3, 2013 ("the STIO mark").
3. Respondent registered the <stio.shop> domain name on June 23, 2023, and the <stio-us.com> domain name on October 18, 2023 ("the disputed domain names").
4. Respondent has caused the disputed domain names to resolve to websites that purport to be the websites of Complainant or established with the approval of Complainant and which offer for sale products portrayed as genuine products of Complainant, which they are not.
5. By reason of the matters aforesaid and as demonstrated by the evidence, the disputed <stio.shop> domain name is identical to the Complainant's STIO trademark and the disputed <stio-us.com> domain name is confusingly similar to that trademark; the Respondent has no rights or legitimate interests in the domain names and the domain names have been registered and used in bad faith.
6. Accordingly, the disputed domain names should be transferred to the Complainant.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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: eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").
Identical and/or Confusingly Similar
The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. The evidence shows that the Complainant has established its rights in the STIO mark registered in the name of the Complainant with the USPTO. That is demonstrated by the registration detailed in the Complaint.
The Complainant has adduced evidence of the foregoing registrations in Annex 8, which the Panel has examined and finds to be in order. This shows that the Complainant has registered trademark rights in the STIO mark by virtue of its registration of the mark with the United States Patent and Trademarks Office, Registration No. 4,396,916, registered on September 3, 2013 ("the STIO mark").
Registration of a trademark with a recognized authority such as USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i) and that the Complainant "has" a trademark ,which is the element that it must prove and which it has established. Since Complainant has registered and has established its rights in the STIO mark through its registration of the mark, the Panel finds that the Complainant has rights in the STIO mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant's STIO trademark.
The Respondent registered the <stio.shop> domain name on June 23, 2023. That domain name consists of the STIO mark alone and the gTLD ".shop". Incorporating the entirety of a trademark in a domain name without any other additions has the effect that the domain name is identical to the relevant trademark and the Panel so holds in the present case. The addition of a generic Top Level Domain to a trademark, as the Complainant submits, cannot negate a finding of identicality or confusing similarity that is otherwise present between a domain name and a trademark, as it is in the present case. The domain name is therefore identical to the STIO mark.
The Respondent registered the <stio-us.com> domain name on October 18, 2023. That domain name consist of the STIO mark as its dominant feature, a hyphen and the letters "us" as a descriptive word which is presumably used to give the domain name the air of being a United States domain name. The domain name means and would be interpreted by internet users to mean that it is invoking the Complainant and its use by the Complainant or with its approval and that the Respondent is using it legitimately. It is therefore clear that the domain name is confusingly similar to the trademark.
The Panel therefore finds that the Respondent's domain names are, respectively, identical and confusingly similar to the STIO mark under Policy ¶ 4(a)(i).
The Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
It is now well established that the Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)).
The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations:
(a) the Respondent has chosen to take the Complainant's STIO trademark and to use it in its domain names which generate the clear impression that they are referring to and invoking the STIO trademark and its use and that those behind using the domain names to sell obviously counterfeit goods are authorized to do so. The Respondent had no right to do any of this, meaning that there is no foundation at all for finding that it had the right to do so or that it gave the Respondent any legitimate interest in the domain names so created;
(c) the domain names were registered well after the Complainant had obtained its trademark registration;
(e) the evidence demonstrated by Annexes 4-5 and 9 shows that the Respondent is using the domain names as an imposter by causing them to resolve to websites which have been got up to give the false impression that they are legitimate STIO sites at which consumers may buy genuine STIO goods but where in fact the websites are false and the goods are counterfeit and being offered for sale at heavily and disproportionately discounted prices;
(f) the websites to which the disputed domain names resolve are clearly being used to sell counterfeit and/or unauthorized STIO products.
(g) the Panel has confirmed the accuracy of the Complainant's submissions by going through the motion of purporting to buy one of the articles for sale on the offending website at <www.stio.shop>. This exercise revealed that goods may be selected, put in a "cart" and at the checkout all major credit cards are offered to pay for them with their well-known symbols on display. Facilities are also available to provide personal information.
(h) the Respondent is not commonly known by the domain name. There is no evidence to suggest that it is so known and no evidence to suggest why anyone named "Judy Lay" or "Julia Gnavarro", if they truly are the names of the Respondents, would answer to the name "stio.shop" or "stio-us.com" or anything remotely like them;
(i) the evidence also shows that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Indeed, the opposite is the case, as the evidence shows that the Respondent is using them to resolve to websites where they pretend to be the Complainant and to sell the Complainant's products;
(j) the evidence also shows that the domain names are not being used for a legitimate non-commercial or fair use of the domain name; the use of the domain names has been demonstrated to be illegitimate; it also cannot be said to be non-commercial in any sense as it is clearly intended to be used by the Respondent to make money illegally; nor is it fair, as it is clearly unfair to use a trademark without permission and to pretend that it is used with the approval of the trademark owner, the Complainant;
(k) the evidence also shows that there is no relationship between the Complainant and the Respondent and that the Complainant has not authorized or licensed the Respondent to register the domain names or to use the STIO trademark in any way;
(l) the Respondent had an opportunity to show circumstances to the contrary of the above conclusions if they were justified but it has not done so.
The Complainant has correctly cited several prior UDRP decisions that support the foregoing contentions.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain names were registered in bad faith and that they have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
The Complainant has relied on several grounds to show that this is so, and the Panel agrees with each of them. Thus, the Complainant has made out on the evidence that the Respondent:
(a) has sought to impersonate the Complainant or create the false impression that it is the Complainant and that the websites are those of the Complainant or that they are affiliated with or sponsored by the Complainant;
(b) purports to sell genuine STIO products at heavily and
(c) disproportionately discounted prices;
(d) has attempted to perpetrate a fraud on consumers to
(e) the effect that they are dealing with the Complainant;
(f) has attempted to sell counterfeit products; and
(g) is engaging in phishing and other illegal activity.
The Panel has examined all the evidence and finds that it shows that the Respondent has intentionally attempted to attract, for commercial gain, internet users to the resolving websites by creating confusion with the STIO mark within the meaning of Policy ¶4(b) (iv).The Respondent has done this by generating the false impression that the domain names and the use of the STIO mark in them have been instigated by the Complainant or with its approval and consent, neither of which is true.
The evidence also shows that the Respondent had must had actual knowledge of the Complainant and its mark when it registered the disputed domain names; clearly the Respondent was attracted to the Complainant's prominent name by using it; moreover, it did not choose the STIO mark as the dominant portion of its domain names on a whim or by an accident but it chose them because of its fame and the goodwill and reputation that come with it. The Respondent clearly knew what it was doing, and it knew the name of its target and its trademark.
The evidence also shows that the Respondent has sought to impersonate the Complainant or create the false impression that it is the Complainant and that the websites already described are those of the Complainant, none of which is true and the Respondent must have known they were untrue.
The evidence also shows that by its conduct, the Respondent has sought to disrupt the business of the Complainant within the meaning of Policy ¶ 4(b)(iii).
As already noted, the root of this proceeding is that the Respondent has taken the Complainant's trademark and falsely pretended that the products it is trying to sell under its banner are genuine, which they clearly are not. It has copied the Complainant's own website with illustrations allegedly of the Complainant's products and in many respects the genuine and false websites look the same.
The evidence shows in total that the Respondent has, by virtue of all of the aforementioned facts, shown that it registered and used the disputed domain names in bad faith.
The Complainant has correctly cited several prior UDRP decisions that support its contentions.
Complainant has thus made out the third of the three elements that it must establish.
Complainant has thus established all of the elements that it must show under the Policy and is therefore entitled to the relief it seeks.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stio.shop> and <stio-us.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC, Panelist
Dated: December 28, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page