7-Eleven, Inc. v. GIBB TAY ZHI JIU
Claim Number: FA2304002040299
Complainant is 7-Eleven, Inc. ("Complainant"), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is GIBB TAY ZHI JIU ("Respondent"), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <7eleven11.com>, <7eleven11a.com>, <7eleven11b.com>, and <7eleven11c.com>, registered with GoDaddy.com, LLC.
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 April 17, 2023; Forum received payment on April 17, 2023.
On April 18, 2023, GoDaddy.com, LLC confirmed by email to Forum that the <7eleven11.com>, <7eleven11a.com>, <7eleven11b.com>, and <7eleven11c.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 24, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 2023 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@7eleven11.com, postmaster@7eleven11a.com, postmaster@7eleven11b.com, postmaster@7eleven11c.com. Also on April 24, 2023, 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 May 22, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.
On May 23, 2023, Forum received email correspondence from Respondent, stating as follows: "I have ceased any domain activities since last year with that name. Apologies for any confusion & conveniences caused."
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 a formal response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant and its licensees offer convenience store services and products at more than 70,000 7-Eleven stores in the United States and many other countries. Complainant and its predecessors have used the 7-ELEVEN mark in connection with these products and services since at least as early as 1946, and Complainant asserts that the mark ranks among the most famous and distinctive marks in the world. Complainant owns numerous trademark registrations for 7-ELEVEN and related marks, including several United States registrations for the mark in standard character form, and also claims common-law rights in the mark.
Respondent registered the disputed domain names <7eleven11.com>, <7eleven11a.com>, <7eleven11b.com>, and <7eleven11c.com> on January 5, 2022. The domain name <7eleven11a.com> is being used for a website that prominently displays Complainant's 7-ELEVEN mark and logo and advertises gambling services. The other three disputed domain names resolve to registrar-generated parked pages composed of pay-per-click links to goods and services that compete with those offered by Complainant. Complainant states that Respondent is not commonly known by the disputed domain names, has no relationship with Complainant, and is not authorized to use Complainant's mark.
Complainant contends on the above grounds that each the disputed domain names <7eleven11.com>, <7eleven11a.com>, <7eleven11b.com>, and <7eleven11c.com> is confusingly similar to its 7-ELEVEN 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. As noted above, in email correspondence Respondent claims to have ceased use of the disputed domain names.
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").
The disputed domain name <7eleven11.com> incorporates Complainant's registered 7-ELEVEN trademark, omitting the hyphen, repeating "ELEVEN" in numeral form, and adding the ".com" top-level domain. The other three disputed domain names, <7eleven11a.com>, <7eleven11b.com>, and <7eleven11c.com>, add only a letter "A," "B," or "C." These alterations do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., 7-Eleven, Inc. v. Shi Lei, FA 1960736 (Forum Sept. 16, 2021) (finding <7elevenservice.com> confusingly similar to 7-ELEVEN); Eli Lilly & Co. v. Thomas Michael et al., FA 1638884 (Forum Dec. 10, 2015) (finding <cialisonlinetabs11a.com> and <overnightcialispills11b.com> confusingly similar to CIALIS). 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. One of them is being used for a misleading website that attempts to pass off as Complainant to promote gambling services, while the others are being used to display competing pay-per-click links. Neither of these uses gives rise to rights or legitimate interests under the Policy. See, e.g., 7-Eleven, Inc. v. Shi Lei, supra (finding lack of rights or interests arising from use for parking page composed of competing links); 7-Eleven, Inc. v. red&white / Kavita Singh, FA 1950414 (Forum July 9, 2021) (finding lack of rights or interests arising from website attempting to pass off as complainant).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed 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 may 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 may 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 four domain names containing Complainant's well-known registered mark without authorization. One of the domain names is being used for a misleading website that attempts to pass off as Complainant to promote gambling services, and the others display parking pages composed of links to competing goods or services. Respondent's actions are indicative of bad faith registration and use under the Policy. See, e.g., 7-Eleven, Inc. v. Shi Lei, supra (finding bad faith registration and use where domain name was used to display parking page composed of competing links); 7-Eleven, Inc. v. red&white / Kavita Singh, supra (finding bad faith arising where domain name was used for website attempting to pass off as complainant). The Panel finds that the disputed domain names were registered and are being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <7eleven11.com>, <7eleven11a.com>, <7eleven11b.com>, and <7eleven11c.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 23, 2023
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