StockX LLC v. 明明 李 / 铁 陈
Claim Number: FA2301002028740
Complainant is StockX LLC (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is 明明 李 / 铁 陈 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <stockx-hk.com>, <stockx-aka.com>, <stockx-sacle.com>, and <stockxapp.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on January 23, 2023; Forum received payment on January 23, 2023.
On January 26, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <stockx-hk.com>, <stockx-aka.com>, <stockx-sacle.com>, and <stockxapp.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 January 30, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 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@stockx-hk.com, postmaster@stockx-aka.com, postmaster@stockx-sacle.com, postmaster@stockxapp.com. Also on January 30, 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 February 27, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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
In the instant proceedings, Complainant alleges that the entities that control the domain names at issue are effectively controlled by the same person or entity operating under two different 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 domain names in the present dispute are similarly constructed as each domain name contains Complainant’s entire trademark trailed by a hyphen and generic term or just generic term, with all followed by the “.com” top level domain name. The domain names’ WHOIS information shows that the domain names share the same IP addresses, and where available, the same telephone, fax registrar and protection service. All but one domain name shares the same contact name, and the all the domain name address identical content and are related to the same Russian based service provider. While it is possible that the domain names’ underlying registrants may or may not differ in their relevant WHOIS data, the at-issue domain names nevertheless appear to be related to, or controlled by, the same person, persons, or entity. The array of similar characteristics within the domain names is compelling and furthermore Complainant’s contention that the domain names should be treated as a single entity is unopposed. Therefore, the Panel will treat the nominal respondents (herein referred to collectively as Respondent) as if a single respondent for the purposes of this proceeding.
A. Complainant
Complainant contends as follows:
Complainant, StockX LLC, provides an online consumer marketplace for high-demand and limited edition products.
Complainant has rights in the STOCKX mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s at-issue domain names are identical or confusingly similar to Complainant’s STOCKX mark as each merely adds the descriptive or generic terms “hk”, “aka” (which is an acronym for “also known as”), “sacle” (which appears to be a misspelling of the word “sale”), and “app”, hyphens and the “.com” gTLD to form.
The respondents should be treated as a single entity as multiple factors show that they are likely the same controlling person or entity.
Respondent lacks rights or legitimate interests in the at-issue domain names. Respondent has not been authorized or licensed by Complainant to use the STOCKX mark. Respondent has not used the at-issue domain names in connection with a bona fide offering of goods or services as Respondent uses the at-issue domain names to phish for personal and financial information.
Respondent registered and uses the at-issue domain names in bad faith. Respondent registered the domain names in bad faith for commercial gain. Additionally, Respondent registered and used the at-issue domain names for a phishing scheme, showing further evidence of bad faith. Lastly, Respondent had actual knowledge of Complainant’s rights to the STOCKX mark prior to registering the disputed domain name as evidenced by Respondent’s use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the STOCKX mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the STOCKX trademark.
Respondent uses the at-issue domain names to pass itself off as Complainant and facilitate Respondent’s phishing for personal financial information..
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 Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the STOCKX mark with the USPTO demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <stockx-hk.com>, <stockx-aka.com>, <stockx-sacle.com>, and <stockxapp.com> domain names each consists of Complainant’s STOCKX trademark and include a descriptive term or terms, and in most cases a hyphen. Each domain name concludes with the “.com” top-level. Under the Policy, the differences between Respondent’s domain names and Complainant’s trademark do nothing to distinguish any of the domain names from Complainant’s mark. Therefore, the Panel concludes that Respondent’s <stockx-hk.com>, <stockx-aka.com>, <stockx-sacle.com>, and <stockxapp.com> domain names are each confusingly similar to Complainant’s STOCKX trademark pursuant to Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also, Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.).
The WHOIS information for <stockx-hk.com>, <stockx-aka.com>, <stockx-sacle.com>, and <stockxapp.com> indicates that their nominal registrants have names that are materially different from the respective domain names. There is nothing in the record before the Panel that indicates that Respondent is otherwise known by <stockx-hk.com>, <stockx-aka.com>, <stockx-sacle.com>, or <stockxapp.com>. As such, the Panel finds that Respondent is not commonly known by any at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the at-issue domain names to address websites that pose as if they may be sponsored by Complainant. The domain names’ websites, cloaked with Complainant’s trademark and logo, provide for the submission of personal information that is sufficient for Respondent to fraudulently charge the submitting site visitor’s bank card account. Respondent’s websites are thus shams and used as vehicles for collecting proprietary personal financial information that may be used to swindling internet users who have been fooled by Respondent’s subterfuge. Such use of the domain names is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name.
Respondent’s <stockx-hk.com>, <stockx-aka.com>, <stockx-sacle.com>, and <stockxapp.com> domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that allow the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses the domain names to attract internet users who, through Respondent’s deceptive practices, mistakenly believe they are dealing with Complainant so that Respondent may then benefit from the goodwill and reputation of Complainant. Respondent’s use of the domain names in this manner demonstrates Respondent’s bad faith registration and use of the at-issue domain names under Policy ¶ (b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Next, Respondent uses the domain names to facilitate a phishing scheme intended to defraud third parties. Respondent capitalizes on the confusion it caused to trick internet users into mistakenly believing that the at-issue domain names and their associated websites are sponsored or authorized by Complainant. Respondent exploits confused website visitors through a phishing scheme aimed at collecting their proprietary financial information. Respondent’s use of the confusingly similar domain names to further fraud shows Respondent’s bad faith under Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”); see also, Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)).
Moreover, the Panel finds that Respondent registered its <stockx-hk.com>, <stockx-aka.com>, <stockx-sacle.com>, and <stockxapp.com> domain names knowing that Complainant had trademark rights in STOCKX. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark; from Respondent’s registration of multiple domain names combining Complainant’s STOCKX trademark with terms suggestive of Complainant’s business; and from Respondent’s display of Complainant’s STOCKX trademark, logo, and other references to Complainant on Respondent’s domain name related websites. Respondent’s prior knowledge of Complainant's STOCKX trademark further demonstrates that Respondent registered and used <stockx-hk.com>, <stockx-aka.com>, <stockx-sacle.com>, and <stockxapp.com> in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stockx-hk.com>, <stockx-aka.com>, <stockx-sacle.com>, and <stockxapp.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 28, 2023
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