7-Eleven, Inc. v. a7 eleven / c7 eleven / d7 eleven / e7 eleven
Claim Number: FA2304002041227
Complainant is 7-Eleven, Inc. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is a7 eleven / c7 eleven / d7 eleven / e7 eleven, Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <7eleven711.com>, <7eleven711b.com>, <7eleven711c.com>, and <7eleven711d.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on April 23, 2023; Forum received payment on April 23, 2023.
On April 24, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <7eleven711.com>, <7eleven711b.com>, <7eleven711c.com>, and <7eleven711d.com> domain names are registered with GoDaddy.com, LLC and that respondents are the current registrant of the names. GoDaddy.com, LLC verified that respondents are bound by its registration agreement 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 26, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2023 by which respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on respondents’ registration as technical, administrative, and billing contacts, and to postmaster@7eleven711.com, postmaster@7eleven711b.com, postmaster@7eleven711c.com, postmaster@7eleven711d.com. Also on April 26, 2023, the Written Notice of the Complaint, notifying respondents 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 respondents’ registration as technical, administrative and billing contacts.
Having received no response from any respondent, Forum transmitted to the parties a Notification of Respondent Default.
On May 17, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 a response from any respondent.
Complainant requests that the domain names be transferred from the respondents to Complainant.
A. Complainant
Complainant asserts trademark rights in 7-ELEVEN. Complainant holds a national registration for that trademark. Complainant submits that the domain names are confusingly similar to its trademark.
Complainant alleges that the respondents have no rights or legitimate interests in the disputed domain names because they have no trademark rights; are not known by the same names; and the domain names have not been used other than for illegitimate purposes.
Complainant alleges that the respondents registered the disputed domain names in bad faith having targeted Complainant’s business.
B. Respondent
The respondents failed to submit Responses in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides convenience store services by reference to the trademark, 7-ELEVEN, registered with the United States Patent & Trademark Office (“USPTO”) as Reg. No. 896,654, registered on August 11, 1970; and
2. the disputed domain names were all registered on February 6, 2023 and resolve a gambling websites.
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."
Preliminary Procedural Issue: Multiple Respondents
Rule 1 provides that “[t]he Holder of a Domain Name Registration” means the single person or entity listed in the WHOIS registration information at the time of commencement. In this case, the disputed domain names are listed to separate holders. The Forum’s Supplemental Rules 1 and 4(c) provide that if a complainant wishes to make an argument for a single respondent having multiple aliases it must present that argument in the complaint for the Panel’s consideration.
The WIPO Jurisprudential Overview 3.0 states at paragraph 4.11.2 that where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. It notes that Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate.
Here, Complainant notes that the domain names were all registered on the same day using the same registrar, and all resolve to identical webpages. Further, that the names are closely related iterations of the trademark.
In the circumstances, the Panel finds that in all likelihood the domain names are under the control of a single person or entity and so for the purposes of application of this Policy regards the named respondents as aliases of a single party referred to hereinafter as “Respondent”.
Substantive Issues
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights in the trademark since it provides proof of its registration of the trademark 7-ELEVEN with the USPTO, a national trademark authority.
The domain names are transparent modifications of the trademark in the sense that they omit the hyphen, add numbers and sometimes letters, and add the “.com” gTLD. For the purposes of comparison of the disputed domain names with the trademark the gTLD, “.com”, can be disregarded. So, too, the Panel finds the other additions still leave the trademark as the recognizable and dominant aspect of each name. The Panel finds the domain names to be confusingly similar to the trademark (see, for example, Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018,’ plus the generic Top Level Domain (“gTLD”) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”); The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶4(a)(i).”)).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The registrant names do not in any way indicate that Respondent might be commonly known by any of the domain names. There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties. Further, the use of the domain names as described to divert internet users to gambling sites is clearly in bad faith and cannot give rise to any rights or legitimate interests.
A prima facie case has been made. The onus shifts to Respondent and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
The Panel has already found the domain names confusingly similar to the trademark. Respondent’s use of the disputed domain names as described is for commercial gain in one form or another. The Panel finds that Respondent’s conduct falls squarely under paragraph 4(b)(iv) above (see, for example, Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”)).
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in respect of the <7eleven711.com>, <7eleven711b.com>, <7eleven711c.com> and <7eleven711d.com> domain names. Accordingly, it is Ordered that the names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: May 25, 2023
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