Stiostore.com + 3 more domains

The timeline behind stiostore.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Mountain Origins Design, LLC d/b/a Stio v. CheXinxin Zi / Figueroa Tom / FengYaxin / xiansheng chen Claim Number: FA2409002117243s 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 CheXinxin Zi / Figueroa Tom / FengYaxin / xiansheng chen ("Respondent"), Multiple Locations. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <stiostore.com>, <stiooutletshop.com>, <stioadventurewear.com> and <buystious.com>, registered with Name.com, Inc., Metaregistrar BV, MAT BAO CORPORATION and Gname.com Pte. Ltd. PANEL The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding. Steven M. Levy, Esq. as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on September 24, 2024; Forum received payment on September 24, 2024. On September 25, 2024, September 26, 2024 and September 27, 2024, Name.com, Inc., Metaregistrar BV, MAT BAO CORPORATION and Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <stiostore.com>, <stiooutletshop.com>, <stioadventurewear.com> and <buystious.com> domain names are registered with Name.com, Inc., Metaregistrar BV, MAT BAO CORPORATION and Gname.com Pte. Ltd. and that Respondent is the current registrant of the names. Name.com, Inc., Metaregistrar BV, MAT BAO CORPORATION and Gname.com Pte. Ltd. have verified that Respondent is bound by the Name.com, Inc., Metaregistrar BV, MAT BAO CORPORATION and Gname.com Pte. Ltd. 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 October 2, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 2024 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@stiostore.com, postmaster@stiooutletshop.com, postmaster@stioadventurewear.com and postmaster@buystious.com. Also on October 2, 2024, 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 October 23, 2024, pursuant to Complainant's payment of fees required to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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 proceedings, Complainant has alleged that, despite the listing of different Registrant names in the respective WHOIS records, the disputed domain names at issue are effectively owned or controlled by the same domain name holder who uses different aliases. It requests that these four domain names be consolidated into the present proceeding. 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." Despite being presented with WHOIS records that name different Registrants, prior Panels have held that consolidation of a case against multiple domain names is appropriate where there are other similarities that indicate a likelihood of common ownership. See, e.g., American Airlines, Inc. v. Ramadhir Singh, WhoisGuard Protected, WhoisGuard, Inc. / Reema Gupta, Ballu Balwant, Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Lucy Lionel, Lucy99, Red Keep, D2021-0294 (WIPO Mar. 11, 2021) (consolidation upheld based on "the similar content and layout of the websites that were linked to the disputed domain names; the fact that all the disputed domain names target a specific sector and the same trademark within this sector; the similar patterns in the disputed domain names; and the identical reaction of the Respondents to the Complaint, not replying to the Complainant's contentions.") Complainant contends that, despite their respective WHOIS records listing different Registrants, the disputed domain names are controlled by the same holder for a number of reasons including its contentions that "[t]he content available at each domain name has the same overall 'look and feel.' The STIO and Design mark appears in the banner of each site, similar round "Sale" icons are displayed with each product listing, and similar website organization and menu options at each site." It goes on to assert that "[m]any of the webpages available at the domain names contain similar formatting and nearly identical content, with only slight variations" and "[t]he product listings are nearly identical and display the same images of products listed for sale." The Panel has carefully reviewed the submitted evidence and declines to consolidate the four disputed domain names. While Complainant acknowledges that the WHOIS records for the disputed domain names list different Registrant names, the Panel notes that these also list different postal addresses, phone numbers, and email addresses with the only point of commonality being that two of the domains list addresses in different cities in China (the other domains list addresses in the USA and in Singapore). Further, each of the disputed domain names use a different Registrar. As such, there are no meaningful points of commonality in the respective WHOIS records. As such, the Panel must turn to circumstantial elements such as naming conventions and the manner in which the disputed domain names are used – here, the content of their resolving websites. Each of the four disputed domain names contains Complainant's STIO trademark and three of them use it in the left-most position followed by a generic term (i.e. "store", "shop", "adventure wear"). The fourth domain, however, consists of a generic term (i.e., "buy") in the left-most position followed by the STIO mark and the added letters "us". Turning to the websites to which the disputed domain names resolve, screenshots of these have been submitted by Complainant and the Panel notes that while there are some similarities, these are limited and likely due to other causes while, by contrast, the websites contain many differences. All four sites prominently display, at the top, Complainant's STIO mark with its green graphic logo and at least one of Complainant's apparel products is offered for sale at all four sites. However, the websites appear to use different templates and have many elements that are dissimilar. The marquis photo of each site is a different image, the color schemes and layouts of the sites are not the same, and the sites use different pull-down menus at the top and show different lists of links at the bottom footers. Further, while, as noted above, there is at least one of Complainant's products that appear to be for sale on all four of these sites, most of the displayed products are different (and one set of screenshots shows many blank squares where products would otherwise be displayed). Complainant also provides screenshots of sale pages for specific products and these also show significant differences including the display of different text, graphics, and seller features. Next, three of the sites also display various of Complainant's products with the word "Sale" in a circle, though two of the sites use green circles while one uses red circles. The fourth site displays green circles overlaid with the word "New". Also, screenshots of the "Checkout" pages for two of the websites are submitted and, while these do show more similarities than the other parts of the websites, there are still significant differences such as the color schemes, the way the STIO mark is presented, and the layout of the footer links. Finally, Complainant has submitted what it claims to be screenshots of "Contact Us" pages for each of the disputed domain names but two of these Annexes are incorrect and do not reflect the content claimed in the Complaint.1 The contact addresses listed for the <stioadventurewear.com> and <buystious.com> websites name Conroe, Texas and Philadelphia, Pennsylvania respectively and the "Contact Us" pages for the <stiooutletshop.com> and <stiostore.com> websites have not been submitted but the Panel browsed to those sites and found that their Contact pages state addresses in Lafayette, Louisiana and Orlando, Florida respectively. While the STIO mark is used in each of the disputed domain names and while there are some similarities between their resolving websites, the Panel determines that this is likely down to the fact that all four are targeting Complainant's mark and products. However, this is outweighed, on balance, by the many differences and the likelihood that four different online store templates were used by four different domain name registrants. When viewed against the differing WHOIS records, Registrars, and dates for each of the domain names, this leads the Panel to conclude that the preponderance of the submitted evidence does not warrant consolidation here (i.e., it is not more likely than not that the disputed domain names are under common ownership or control as required by Paragraph 3(c) of the Rules). In light of the above, the Panel has decided to proceed with the remainder of the present case against the <stiostore.com> domain name and dismiss, without prejudice, the case against the <stiooutletshop.com>, <stioadventurewear.com>, and <buystious.com> domain names leaving Complainant the option of filing new complaints against those domain names. PARTIES' CONTENTIONS A. Complainant Complainant owns U.S. Trademark Registration No. 4,396,916 (dated September 3, 2013) for STIO for "backpacks, briefcases, tote bags, traveling bags" in International Class 18 and "clothing, namely, ski jackets, ski bibs, ski overalls, insulated jackets, insulated vests, parkas, rainwear, sweaters, coats, jackets, pants, shorts, shirts, belts, hats, and gloves" in International Class 25. It also owns U.S. Trademark Registration No. 4,411,715 (dated October 1, 2013) for the STIO graphic logo for "backpacks, briefcases, tote bags, traveling bags" in International Class 18 and "clothing, namely, ski jackets, ski bibs, ski overalls, insulated jackets, insulated vests, parkas, rainwear, sweaters, coats, jackets, pants, shorts, shirts, belts, hats, and gloves" in International Class 25. The Domain Name <stiostore.com> (created on December 23, 2023) merely adds the descriptive term "store" after STIO, and the .com gTLD and its thus confusingly similar to the mark. Respondent has no rights or legitimate interests in the disputed domain name as it resolves to a website that copies content from Complainant's own website and either offers counterfeit products at below-market prices or is engaged in a phishing scheme. The disputed domain name was registered and is used in bad faith where Respondent knew of the STIO mark and it resolves the domain name to the above-mentioned website through which Respondent seeks to collect users' personal and financial information for commercial gain. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS - Complainant owns trademark rights to the STIO mark and the <stiostore.com> domain name is confusingly similar to such mark; - Respondent does not have rights or legitimate interests in the disputed domain name where it is not commonly known by the domain name and it hosts a website that passes off advertised goods as those of Complainant; and - The disputed domain name was registered and is used in bad faith where its website passes itself off as Complainant and deceives customers, for commercial gain, based on a likelihood of confusion with Complainant's mark 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 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"). Identical and/or Confusingly Similar Complainant asserts rights in the STIO trademark through its registration with the United States Patent and Trademark Office ("USPTO"). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).") Here, Complainant provides copies of two of its USPTO registration certificates. Therefore, the Panel finds that Complainant has rights in the STIO mark under Policy ¶ 4(a)(i). Next, Complainant argues that Respondent's <stiostore.com> domain name is confusingly similar to its mark because the disputed domain name incorporates the mark in its entirety and adds only the generic word "store" and the ".com" TLD. The addition of a generic term and a TLD to a trademark is typically not sufficient to distinguish a disputed domain name from that mark. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.) In fact, adding the word "store" here actually serves to create greater confusion for consumers through an obvious relation to Complainant's business. Fenix International Limited c/o Walters Law Group v. Prc Maru, D2021-3255 (WIPO Dec. 15, 2021) ("Finally, the use of the word 'premium' in the disputed [onlyfanspremium.site] domain name coupled with the Complainant's trademark enhances not reduces confusion.") Further, the gTLD ".com" does not serve to distinguish the disputed domain name from the Complainant's mark, which is the distinctive component thereof. See Red Hat Inc v Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of a gTLD was insufficient to differentiate the disputed domain name from the mark). As the <stiostore.com> domain name incorporates the entirety of Complainant's mark and adds only the generic word "store" and the ".com" TLD, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark under Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have 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)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("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"). Complainant does not directly address Policy ¶ 4(c)(ii) though it does assert that it has not authorized or licensed Respondent to use the STIO mark and this is relevant to the ¶ 4(c)(ii) analysis. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)"). Further, WHOIS information is often referenced when considering whether a respondent is commonly known by the disputed domain name under this section of the Policy. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). The WHOIS information for the disputed domain name, as verified to Forum by the concerned Registrar, lists the registrant as "Figueroa Tom" and there is no evidence to identify Respondent otherwise. Further, Complainant refers to "Respondents' unauthorized use of STIO trademark in the Domain Names" and Respondent has not participated in this case to assert that it had any relevant license or authorization. Therefore, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). Next, the Complaint does not cite to Policy ¶¶ 4(c)(i) or (iii) or the language of those clauses but it does assert that the <stiostore.com> domain name resolves to a website that impersonates Complainant, copies content of its products, and deceives users. These assertions do speak to the question of whether Respondent is using the disputed domain name in connection with a bona fide offering of goods or services and whether it is making a legitimate noncommercial or fair use of the domain name. The activity engaged in by Respondent has been held to be neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See Subway IP LLC v. subways pvt ltd / business development, FA 2069330 (Forum Nov. 28, 2023) (no rights or legitimate interests found where "Respondent has used the disputed domain name to impersonate Complainant and Complainant's Indian subsidiary...") In support of its contentions Complainant provides screenshots of the <stiostore.com> website in which Respondent purports to offer for sale STIO branded apparel and it uses copyrighted images that Complainant asserts have been taken from its own legitimate website. It also claims that Respondent is either selling counterfeit goods or is engaged in a phishing scheme in an effort to obtain consumer's personal and payment information. In the submitted screenshots, Respondent's masthead features the STIO graphic logo followed by an image of a person wearing what appears to be one of Complainant's jackets. Below this appears the language "Stio Latest Hottest". There are then images of some of Complainant's products over each of which appears a green circle with the word "Sale!" printed on it in white lettering. Below each image appears a product name and one price in grey, strikethrough letters followed by a lower price in red letters. The bottom of each page displays various links and popular credit card logos as well as the footer "Copyright 2024 © www.stiostore.com". The Complaint asserts that Respondent's website "contain[s] text, photographs, designs, product names and listings, and product images misappropriated or copied from Stio's website" as noted in Annex 10. While the Panel was unable to find Annex 10 in the submitted evidence, it accepts the assertion that the <stiostore.com> website seeks to impersonate Complainant. Based upon the submitted evidence, the Panel finds that a prima facie case is made for Respondent creating a false impression that its site is operated by Complaint and is deceiving potential customers. This retail sales website extensively uses Complainant's mark and images of its products with no indication that it is unaffiliated with Complainant and Respondent has not participated in these proceedings to offer an alternate explanation for its activities. Thus, the Panel finds that the disputed domain name is not being used for a bona fide offering of goods or services or in a legitimate noncommercial or fair manner under either Policy ¶¶ 4(c)(i) and (iii). Registration and Use in Bad Faith Complainant asserts that Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the STIO mark. Actual knowledge can provide a solid foundation upon which to build an argument of bad faith registration under Policy ¶ 4(a)(iii) and can be demonstrated based on the use to which a disputed domain name is put. See WordPress Foundation v. mich delorme / mich d dots tlds, FA 1584295 (Forum Nov. 25, 2014) ("Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant's services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant's mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.") Complainant asserts that Respondent "clearly knew" of Complainant and its trademark based on its activities in operating an impersonation website. The Panel finds that the submitted evidence supports the claim that Respondent's passing itself off as Complainant supports the conclusion that it had actual knowledge of the STIO mark at the time that it registered the disputed domain name. Next, Complainant argues that Respondent registered and uses the <stiostore.com> domain name in bad faith because Respondent passes itself off as Complainant by confusing and deceiving consumers into thinking that they are dealing with a website that originates with a genuine source for Complainant's products. Such conduct is indicative of bad faith per Policy ¶ 4(b)(iv). See Tesla Inc. v. Ultimate / Jonathan Littlewood, FA 2052426 (Forum Aug. 2, 2023) (finding bad faith where "Respondent has attempted to commercially gain or otherwise benefit by fraudulently impersonating Complainant to entice shoppers to purchase on Respondent's website."); Jarrow Formulas, Inc. v. Boyan Kabakov / Triping EOOD, FA 2080725 (Forum Feb. 15, 2024) (bad faith found where Respondent's website "uses the Complainant's mark and logo as a masthead and the Complainant's copyright materials…") The Panel references the above-mentioned screenshots of the site resolving from the <stiostore.com> domain name which show Respondent's use of the STIO mark and graphic logo as well as content that displays Complainant's products appearing to be offered at steep discounts. The evidence presented gives the clear impression that Respondent's website originates with Complainant and is improperly seeking commercial gain based on confusion with its mark. It is thus targeting the mark and seeking to compete with Complainant. As such, the Panel finds firm ground upon which to conclude that Respondent both registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv) and thus under ¶ 4(a)(iii). 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 <stiostore.com> domain name be TRANSFERRED from Respondent to Complainant. Further, the Complaint against the <stiooutletshop.com>, <stioadventurewear.com> and <buystious.com> domain names is DISMISSED WITHOUT PREJUDICE. Steven M. Levy, Esq., Panelist Dated: October 25, 2024 [1] In the Complaint's List of Annexes, Annex 17 is described as "Screenshot of order 'Checkout' screen for stioadventurewear.com, accessed August 28, 2024". However, it is actually an image of the "Contact Us" page for the <stioadventurewear.com> website and is identical to Annex 19 which is accurately described as "Screenshot of 'Contact Us' page at stioadventurewear.com". The Panel is unable to find a submission that depicts the "Checkout" page of <stioadventurewear.com>. Furthermore, Annex 18 is described as "Screenshot of order 'Checkout' screen for buystious.com, accessed August 28, 2024" however, it is actually an image of the "Contact Us" page for that website and is identical to Annex 20 which is accurately described as "Screenshot of 'Contact Us' page at buystious.com". The Panel is unable to find a submission that depicts the "Checkout" page of <buystios.com>. The Panel is also unable to find submissions of the "Contact Us" pages for the <stiostore.com> or <stiooutletshop.com> websites although it has attempted to browse to those sites on its own as noted in the body of the decision. 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Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.