7-Eleven, Inc. v. Milen Radumilo
Claim Number: FA2108001958008
Complainant is 7-Eleven, Inc. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <7-eleven.pro> (the “disputed domain name”), registered with Dynadot, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 3, 2021; the Forum received payment on August 3, 2021.
On August 4, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <7-eleven.pro> disputed domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 August 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 2021 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-eleven.pro. Also on August 6, 2021, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On August 31, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant engages in the business of offering convenience store services and products. Complainant has rights in the 7-ELEVEN trademark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 896,654, registered Aug. 11, 1970) (hereinafter referred to as the “7-ELEVEN Mark”).
Complainant contends that Respondent’s <7-eleven.pro> disputed domain name is identical or confusingly similar to Complainant’s mark as Respondent incorporates the mark in its entirety and adds the “.pro” top-level domain (“TLD”). Complainant further claims that Respondent lacks rights or legitimate interests in the <7-eleven.pro> disputed domain name because Complainant did not authorize, license or otherwise permit Respondent to use the 7-ELEVEN Mark. Complainant also contends that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent uses the disputed domain name in connection with a deceptive phishing scheme in which job seekers would believe that they had arrived at the Complainant’s official website. Finally, Complainant asserts that Respondent registered and was using the disputed domain name in bad faith based on Respondent’s phishing scheme, on the fact that Respondent had actual knowledge of Complainant’s rights in the 7-ELEVEN Mark, and that Respondent is a notorious cybersquatter who has been named as a respondent in over 100 UDRP proceedings.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant holds trademark rights in the 7-Eleven Mark, that the disputed domain name is confusingly similar to Complainant’s 7-Eleven Mark, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 Panel finds that Complainant has rights in the 7-Eleven Mark per Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 896,654, registered August 11, 1970). Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s 7-ELEVEN Mark per Policy ¶ 4(a)(i). The disputed domain name consists of the 7-ELEVEN Mark in its entirety and merely adds the “.pro” TLD. Registration of a domain name that contains a mark in its entirety and only adds a TLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (“we conclude from a review of the record that Respondent’s <mellosolar.com> domain name is substantively identical and confusingly similar to Complainant’s MELLO SOLAR mark.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, a complainant is required to make out a prima facie case that respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”). In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard-pressed to furnish availing arguments had it chosen to respond.
Specifically, Respondent is not commonly known by the disputed domain name, Complainant has not authorized, licensed, or otherwise permitted Respondent to use the 7-Eleven Mark and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use because the Respondent’s uses the disputed domain name in connection with a phishing scheme in which people interested in jobs at the Complainant are directed to complete forms available at the disputed domain name, available when the jobseekers download software on their computers, which is likely malware. Such jobseekers would then be directed to provide confidential information to Respondent, believing that they had arrived at the Complainant’s official website.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006). Therefore, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Second, the Panel finds that Respondent registered and is using the disputed domain name in bad faith because Respondent is using its website as a phishing scheme for jobseekers’ personal information. Per Policy ¶ 4(a)(iii), using a disputed domain name to phish for users’ information is considered evidence of bad faith. See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). Here, Respondent phishes for jobseekers’ confidential information by deceiving those jobseekers to believe that they were applying for positions at the Complainant’s official website. Further, the jobseekers were redirected to a website that required them to download software which was likely malware, another instance of bad faith.
Third, the Panel finds that Respondent engaged in a pattern of bad faith registration and use because Respondent was named in over 100 prior UDRP proceedings. Where a respondent has been subject to multiple past UDRP proceedings, the Panel may find bad faith per Policy ¶ 4(b)(ii). See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Finally, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith because Respondent had actual knowledge of Complainant’s rights in the 7-Eleven Mark based on Complainant’s widespread use of the trademark and its use for over 80 years. Thus, it strains credulity to think that Respondent did not have actual knowledge of Complainant’s 7-ELEVEN Mark. Prior knowledge of a complainant’s trademark and use of a disputed domain name that incorporates the trademark is sufficient to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it); Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by 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 <7-eleven.pro> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: September 9, 2021
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