Mountain Origins Design, LLC d/b/a Stio v. lanying feng / jia yao / hui su / Lo ri / xi bing
Claim Number: FA2303002037590
Complainant is Mountain Origins Design, LLC d/b/a Stio (“Complainant”), represented by Carolyn Juarez of Neugeboren O’Dowd PC, Colorado, USA. Respondents are lanying feng / jia yao / hui su / Lo ri / xi bing (“Respondents”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <stiodiscount.com>, <discountstio.com>, <stiosale.com>, <shatterstio.com> and <stioblackfriday.com>, registered with Name.Com, Inc. and Gname.Com Pte. Ltd.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on March 27, 2023. Forum received payment on March 27, 2023. The Complaint was submitted in English.
On March 30, 2023, Name.Com, Inc. confirmed by e-mail to Forum that the <stiodiscount.com>, <discountstio.com> and <stiosale.com> domain names are registered with Name.Com, Inc. On April 13, 2023, Gname.Com Pte. Ltd. confirmed by e-mail to Forum that the <shatterstio.com> and <stioblackfriday.com> domain names are registered with Gname.Com Pte. Ltd. Both registrars confirmed that Respondents are the current registrants of the names. Name.Com, Inc. and Gname.Com Pte. Ltd. have verified that Respondents are bound by the Name.Com, Inc. and Gname.Com Pte. Ltd. registration agreements, which are in English and Chinese respectively, and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 14, 2023, Forum served the Complaint and all Annexes, including an English and Chinese Language Written Notice of the Complaint, setting a deadline of May 4, 2023 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registrations as technical, administrative, and billing contacts, and to postmaster@stiodiscount.com, postmaster@discountstio.com, postmaster@stiosale.com, postmaster@shatterstio.com, postmaster@stioblackfriday.com. Also on April 14, 2023, the English and Chinese Language Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registrations as technical, administrative and billing contacts.
Having received no response from Respondents, Forum transmitted to the parties a Notification of Respondent Default.
On May 11, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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 Respondents to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of 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”. Paragraph 1(d) of the Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Complainant contends that the <stiodiscount.com>, <discountstio.com>, <stiosale.com>, <shatterstio.com> and <stioblackfriday.com> domain names are effectively controlled by the same person and/or entity, operating under several aliases, noting that the websites to which the domain names resolve have the same overall “look and feel”, similar formatting and nearly identical content, including the same images of products listed for sale.
In the absence of any evidence to the contrary, the above circumstances demonstrate sufficient commonality as between the domain names to satisfy the Panel that they are commonly owned or controlled by a single person who is using multiple aliases. Henceforth this decision will refer to lanying feng / jia yao / hui su / Lo ri / xi bing as “Respondent”.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
As noted, the Name.Com, Inc. registration agreement is in English and the Gname.Com Pte. Ltd. registration agreement is in Chinese. Pursuant to Rule 11(a), the language of the proceeding in relation to the <stiodiscount.com>, <discountstio.com> and <stiosale.com> domain names shall be English and the language of the proceeding in relation to the <shatterstio.com> and <stioblackfriday.com> domain names shall be Chinese unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Complainant requests that the proceeding be conducted in English, noting that the websites to which the <shatterstio.com> and <stioblackfriday.com> domain names resolve are both in English, as are the websites to which the <stiodiscount.com>, <discountstio.com> and <stiosale.com> domain names resolve.
In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be proficient in English and that there would be no undue prejudice to Respondent if English were the language of the proceeding.
Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the English and Chinese language Written Notice of the Complaint and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant, Mountain Origins Design, LLC d/b/a Stio, offers outdoor apparel and bags. Complainant has rights in the STIO word and design marks through registration of the marks with the United States Patent and Trademark Office (“USPTO”). Respondent’s <stiodiscount.com>, <discountstio.com>, <stiosale.com>, <shatterstio.com> and <stioblackfriday.com> domain names are virtually identical and confusingly similar to Complainant’s mark.
Respondent has no legitimate interests in the domain names. Respondent is not commonly known by the domain names and Complainant has not authorized or licensed to Respondent any rights in the STIO marks. Additionally, Respondent does not use the domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the domain names resolve to websites displaying the STIO word and design marks and containing text, photographs, designs, product names, listings and images misappropriated or copied from Complainant’s website. Respondent also uses the domain names to engage in phishing.
The <shatterstio.com> website makes references to an email address at the domain name <thestoiconline.com>, which was transferred to Complainant’s Co-Complainant, Backcountry.com. See Backcountry.com, LLC and Mountain Origins Design, LLC d/b/a Stio v Xiuying Liu, WIPO Case No. D2022-0420. The <discountstio.com> and <stiosale.com> websites make references to an email address at the domain name <stiopromo.com>, which was transferred to Complainant. See Mountain Origins Design, LLC d/b/a Stio v. Haiyan Zhao, FA 2000169 (Forum July 13, 2022).
Respondent registered the domain names in bad faith and uses them in bad faith in order to create a likelihood of confusion with Complainant’s mark; to divert customers for commercial gain; and to participate in phishing. Respondent is using the domain names to impersonate Complainant and sell STIO branded goods at below-market prices, has misappropriated copyrighted images and text owned by Complainant, and appears to be masking Respondent’s identity and location in what appear to be phishing operations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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”).
Complainant has shown that it has rights in STIO word and design marks through registrations with the USPTO (word mark STIO, Reg. No. 4,396,916 registered on September 3, 2013 and design mark STIO with an image of a pinecone, Reg. No. 4,411,715, registered on October 1, 2013). The Panel finds each of Respondent’s <stiodiscount.com>, <discountstio.com>, <stiosale.com>, <shatterstio.com> and <stioblackfriday.com> domain names to be confusingly similar to Complainant’s STIO word mark because each incorporates the STIO mark in its entirety and adds one or two generic terms which are insufficient to distinguish any of the domain names from the mark, and the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <stiodiscount.com>, <discountstio.com>, <stiosale.com>, <shatterstio.com> and <stioblackfriday.com> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s STIO word and design marks when Respondent registered the <stiodiscount.com>, <discountstio.com>, <stiosale.com>, <shatterstio.com> and <stioblackfriday.com> domain names and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s websites and of the goods promoted on those websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stiodiscount.com>, <discountstio.com>, <stiosale.com>, <shatterstio.com> and <stioblackfriday.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: May 17, 2023
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