7-Eleven, Inc. v. Qui Jian Jun
Claim Number: FA0806001204058
Complainant is 7-Eleven, Inc. (“Complainant”), represented by David
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <game711.com>, registered with Network Solutions, Inc.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On June 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 8, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <game711.com> domain name is confusingly similar to Complainant’s 7-ELEVEN mark.
2. Respondent does not have any rights or legitimate interests in the <game711.com> domain name.
3. Respondent registered and used the <game711.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the 7-ELEVEN mark and logo around the world
in connection with one of the largest convenience store chains in the
world. It has likewise registered the
mark in numerous jurisdictions, including with the United States Patent and
Trademark Office (‘USPTO”) (Reg. No. 2,135,385 issued February 10, 1998) and
with the People’s Republic of
The <game711.com> domain name was registered on
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has sufficiently established rights in the
7-ELEVEN mark through registration with the PRC and the USPTO pursuant to
Policy ¶ 4(a)(i).
See Google, Inc. v. DktBot.org, FA
286993 (Nat. Arb. Forum
Respondent’s <game711.com> domain name contains
Complainant’s 7-ELEVEN mark by omitting the hyphen between “7” and “ELEVEN” and
replacing the word “ELEVEN” with the numeral “11.” It then precedes the mark with the generic
word “game” and follows with the generic top-level domain (“gTLD”) “.com.” It is well-established that neither the
omission of punctuation such as hyphens nor the inclusion of a gTLD are relevant
to a Policy ¶ 4(a)(i) analysis. See
Innomed Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum
And finally, the disputed domain name contains the numeral
“711.” This is phonetically identical to
Complainant’s 7-ELEVEN mark because both “711” and “7-ELEVEN” may be pronounced
phonetically in the same way, with the numeral “11” representing the “ELEVEN”
part of Complainant’s “7-ELEVEN” mark. See
For all of the aforementioned reasons, the Panel finds that Respondent’s <game711.com> domain name is confusingly similar to Complainant’s 7-ELEVEN mark pursuant to Policy ¶ 4(a)(i).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
In accordance with Policy ¶ 4(a)(ii), the Panel finds that Complainant has met its obligations in first making a prima facie showing that Respondent lacks rights and legitimate interests in the <game711.com> domain name. Accordingly, the burden is shifted to Respondent to show that it does have rights or legitimate interests in the disputed domain name. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”).
However, Respondent has failed to submit a response to the
Complaint. Therefore, the Panel may
presume that Respondent has no rights or legitimate interests in the disputed
domain name, but will nonetheless examine the record in consideration of the
elements listed under Policy ¶ 4(c). See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a response, the respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name); see also Vanguard Group, Inc. v. Collazo,
FA 349074 (Nat. Arb. Forum
The disputed domain name contains a term phonetically identical to Complainant’s mark and resolves to a website prominently featuring exact copies of Complainant’s logo. Respondent has never sought nor received permission to use Complainant’s mark in any way. Additionally, there is nothing in the WHOIS record or anything else in the record that indicated that Respondent is or ever was commonly known by the disputed domain name. As a result of Respondent’s lack of authorization and any affirmative evidence establishing a connection between Respondent and the disputed domain name, the Panel finds that Respondent is not commonly known by the <game711.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <game711.com> domain name not only resolves to a website displaying Complainant’s 7-ELEVEN mark and logo in their entirety, but it also solicits advertising space and contains one or more commercial sites displaying adult-oriented images. The Panel presumes that the advertising space and links to commercial websites provide Complainant with financial income. The Panel finds that none of these uses and circumstances represents a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The disputed domain name resolves to a series of commercial third-party links and advertisements. The Panel finds that this use presumably commercially benefits Respondent. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). As a consequence of the aforementioned, the Panel finds that Respondent registered and is using the <game711.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) for the purpose of commercially benefiting from a confusingly similar disputed domain name.
Moreover, any use of adult-oriented material is considered by the Panel to be damaging to a complainant’s mark. Accordingly, the Panel finds that the existence of adult-oriented material on the website that resolves from the disputed domain name establishes additional evidence of Respondent’s bad faith registration and use of the <game711.com> domain name pursuant to Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that the respondent registered the <holidayinnakron.com> domain name and linked it to a pornographic website. The panel stated, “[W]hatever the motivation of Respondent, the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith).
The Panel concludes that Complainant has satisfied 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 <game711.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: July 28, 2008
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