7-Eleven, Inc. v. Marquis Frazier
Claim Number: FA2212002023522
Complainant is 7-Eleven, Inc. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California. Respondent is Marquis Frazier (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <7-elevenevstations.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on December 9, 2022; Forum received payment on December 9, 2022.
On December 12, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <7-elevenevstations.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 December 19, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 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@7-elevenevstations.com. Also on December 19, 2022, 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 January 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it has been engaged in the business of, among other things, offering convenience store services and products, either directly or through its licensees, to the general public at various locations throughout the United States since at least as early as 1927. It has grown from the world’s first convenience store to over 72,000 stores in numerous countries around the world. Complainant has annually sold billions of dollars of products and services in the U.S. and beyond. Complainant offers electric vehicle charging station services for electric vehicles at select 7-Eleven stores. Complainant asserts rights in the 7-ELEVEN mark based upon its registration in the United States in 1970. The mark is registered elsewhere around the world and it is famous.
Complainant alleges that the disputed domain name is confusingly similar to its 7-ELEVEN mark because it contains the mark in its entirety, merely adding the letters “ev” (which may stand for “electric vehicle”), the generic/descriptive term “stations” (which in context may refer to “charging stations”), and the generic top-level domain name (“gTLD”) “.com”.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s 7-ELEVEN mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent is using the domain name to redirect to a commercial landing page that invites users to contact a phone number to verify that the domain name is for sale and to facilitate the purchase process. Specifically, the resolving web page states: “This domain may be for sale”, and it provides a toll free number, stating: “We can verify that the domain is for sale over the phone, help you with the purchase process, and answer any questions.”
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent registered the disputed domain name with the intent to sell. Respondent is making use of Complainant’s well-known mark to attract internet users for commercial gain. Because the 7-ELEVEN mark is so obviously connected with Complainant, and because the subject domain name so clearly references Complainant’s mark, registration and use by Respondent, who has no connection with Complainant, strongly supports a finding of bad faith. Respondent exhibits opportunistic bad faith in that Respondent registered the domain name combining Complainant’s 7-ELEVEN mark and “evstations” in view of the fact that Complainant offers electric vehicle (EV) charging stations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark 7-ELEVEN dating back to at least 1970 and uses it to offer convenience store services and products, including electric vehicle charging stations. The mark is famous.
The disputed domain name was registered in 2021.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving web page states: “This domain may be for sale”, and it provides a toll free number, stating: “We can verify that the domain is for sale over the phone, help you with the purchase process, and answer any questions.”
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 disputed domain name incorporates Complaint’s 7-ELEVEN mark in its entirety, merely adding the letters “ev” (which may stand for “electric vehicle”), the generic/descriptive term “stations” (which in context may refer to “charging stations”), and the generic top-level domain name (“gTLD”) “.com”. Under Policy ¶ 4(a)(i), adding a gTLD and/or generic terms and/or relevant or meaningless letters is generally insufficient in differentiating a disputed domain name from the mark it incorporates. 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 Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Here, the WHOIS information for the disputed domain name lists the registrant as “Marquis Frazier”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent has made actual use of the disputed domain name by allowing it potentially to be offered for sale. Complainant argues that such use is proof of Respondent’s bad faith.
The instant Panel reaffirms the reasoning set forth in Broadcom Corporation v. Michael Becker, FA0108000098819 (Forum, Oct. 22, 2001), the relevant elements for the present case being (emphasis in original):
The question that this panel has to answer is whether the registration and sale of a domain name can be a legitimate use in the sense of the Policy. According to this panel:
a) The answer is clearly “yes” if the domain name is a generic name (composed of common words) and is not being used in violation of anybody’s trademark.
b) The answer is clearly “no” when the domain name is a famous trademark.
…
We thus conclude that the Respondent’s use of the trademark (offering it for sale), is a legitimate interest in the sense of Paragraph 4(c) of the Policy, provided that there was no bad faith in the sense of Paragraph 4(b) of the Policy.
In the instant case, the Panel finds that there is bad faith, for the reasons given below.
Thus the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name. See Altria Group, Inc. v. Stacey Scott / Baldwin Inc, FA1410001584163 (Forum Nov. 12, 2014) (finding that the respondent’s only use of the resolving website was to advertise the sale of the associated domain name indicated that the respondent lacked rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii)).
Complainant’s case would no doubt be stronger if it had made the effort to call the toll-free number displayed on the resolving page to ask at what price the disputed domain name was being offered for sale, and if that price had been in excess of out-of-pocket costs.
Nevertheless, the Panel, on the balance of the evidence before it, finds bad faith registration and use, as explained below.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, Respondent is based in the USA, so it must surely know of Complainant’s famous mark and of Complainant’s activities, which include electric vehicle (EV) charging stations. It is difficult to envisage any use of the disputed domain name that would not violate the Policy. See Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
Further, given that Respondent is a US entity, that Complainant’s mark is famous, and that the disputed domain name is no doubt a reference to one of Complainant’s services, namely electric vehicle (EV) charging stations, the Panel infers that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For all the above reasons, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to 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 <7-elevenevstations.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 12, 2023
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