7-Eleven, Inc. v. charles rasputin
Claim Number: FA1902001829082
Complainant is 7-Eleven, Inc. (“Complainant”), represented by Caitlin Costello, Texas, USA. Respondent is charles rasputin (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <7elevendelivered.com>, <711delivered.com>, and <sevenelevendelivered.com>, registered with NameCheap, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 8, 2019; the Forum received payment on February 8, 2019.
On February 8, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <7elevendelivered.com>, <711delivered.com>, and <sevenelevendelivered.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 February 14, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2019 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@7elevendelivered.com, postmaster@711delivered.com, postmaster@sevenelevendelivered.com. Also on February 14, 2019, 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 March 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant uses its 7 ELEVEN mark in connection with a broad variety of goods and services, including retail convenience store services. Complainant has rights in the 7 ELEVEN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,642,740, registered Oct. 29, 2002). See Compl. Ex. E. Respondent’s <7elevendelivered.com> domain name is confusingly similar as it merely adds the term “delivered” and the “.com” generic top-level domain (“gTLD”). Respondent’s <711delivered.com> and <sevenelevendelivered.com> domain names are confusingly similar to Complainant’s mark as they each convert either the number “7” into the written form, or the word “eleven” into the number form, while adding the term “delivered” and the “.com” gTLD.
Respondent has no rights or legitimate interests in the <7elevendelivered.com>, <711delivered.com>, and <sevenelevendelivered.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent initially used the domain names to redirect unsuspecting internet users to its own site that directly competes with Complainant, <gopuff.com>, a convenience store delivery app provider and digital convenience retailer that has its own goPuff facilities containing 3,000+ convenience store products and delivers those products to the public. See Compl. Exs. F & G. Further, within twenty-four hours of sending Respondent a cease-and-desist letter, Respondent began using the domain names to redirect to websites dedicated to various religions. See Compl. Exs. G & H.
Respondent registered and uses the <7elevendelivered.com>, <711delivered.com>, and <sevenelevendelivered.com> domain names in bad faith. Respondent’s initial usage of the domain names intentionally attempted to attract, for commercial gain, internet users to its directly competitive website, <gopuff.com>, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. See Compl. Exs. F & G. Further, Respondent later used the domain names in connection with religious websites unrelated to Complainant’s business. See Compl. Exs. G & H. Finally, Respondent knew of Complainant’s rights in the 7 ELEVEN mark as shown by Respondent’s registration of confusingly similar domain names and Respondent’s use of the domain names to offer directly competitive services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of a broad variety of goods and services, including retail convenience store services.
2. Complainant has established its trademark rights in the 7 ELEVEN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,642,740, registered Oct. 29, 2002).
3. Respondent registered the disputed domain names on the following dates: <7elevendelivered.com> on December 13, 2018, <711delivered.com> on December 15, 2018 and <sevenelevendelivered.com> on December 13, 2018).
4. Respondent has used the disputed domain names to generate links to competitors of Complainant and to religious websites unrelated to Complainant’s business.
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 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 (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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the 7 ELEVEN mark through its registration of the mark with the USPTO (e.g. Reg. No. 2,642,740, registered Oct. 29, 2002). See Compl. Ex. E. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the 7 ELEVEN mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s 7 ELEVEN mark. Complainant argues that Respondent’s <711delivered.com> and <sevenelevendelivered.com> domain names are confusingly similar to Complainant’s mark as they each convert either the number “7” into the written form, or the word “eleven” into the number form, while adding the term “delivered” and the “.com” gTLD. Converting words into numbers (or vice versa) while adding terms and a gTLD generally fail to distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i). See Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (Forum July 20, 2015) (finding the <pandora1.com> domain name to be confusingly similar to Complainant’s PANDORA ONE mark due to the similarity between the word ONE and the numeral 1 in meaning and sound.); see also MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The Panel therefore finds that the disputed domain names are confusingly similar to the 7 ELEVEN mark under Policy ¶ 4(a)(i).
Complainant also argues that Respondent’s <7elevendelivered.com> domain name is confusingly similar as it merely adds the term “delivered” and the “.com” gTLD. Adding terms and a gTLD generally do not sufficiently distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The Panel therefore finds that the disputed domain name is confusingly similar to the 7 ELEVEN mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s 7 ELEVEN trademark and to use it in its domain names, making only minor alterations to the trademarks and adding the word “ delivered”, that do not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the disputed domain names on the following dates: <7elevendelivered.com> on December 13, 2018, <711delivered.com> on December 15, 2018 and <sevenelevendelivered.com> on December 13, 2018;
(c) Respondent has used the domain names to generate links to competitors of Complainant and to religious websites unrelated to Complainant’s business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <7elevendelivered.com>, <711delivered.com>, and <sevenelevendelivered.com> domain names because it is not commonly known by the domain names. Where a response is lacking, relevant information to resolve that issue includes the WHOIS and any other submissions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “charles rasputin” as the registrant. Complainant also submits that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent initially used the domain names to redirect unsuspecting internet users to its own site that directly competes with Complainant. Using a confusingly similar domain name that resolves in a webpage that directly competes with a complainant fails to indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides a screenshot of the resolving webpage, which resolved to the URL <gopuff.com>, described as “the first digital convenience retailer” and “deliver[s] snacks, drinks, essentials, and basically all of your convenience needs right to your door.” See Compl. Ex. F. As such, the Panel finds that Respondent’s competing use of the domain names provides evidence of Respondent’s lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii);
(g) Complainant submits that within twenty-four hours of sending Respondent a cease-and-desist letter, Respondent began using the domain names to redirect to websites dedicated to various religions. Using a confusingly similar domain name to promote services unrelated to a complainant can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii). See Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant). Complainant provides screenshots of this alleged use, which have website titles such as “The Church of Jesus Christ of Latter-day Saints” and “Hillsong Church.” See Compl. Ex. H. Accordingly, the Panel finds that Respondent’s current use of the domain names to promote unrelated services fails to amount to any bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent has used the domain names to intentionally attempt to attract, for commercial gain, Internet users to both its directly competitive and unrelated websites to create confusion among Internet users as to the source, sponsorship, affiliation, or endorsement of Respondent’s various websites. Using a disputed domain name to trade off the goodwill associated with a complainant’s mark for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). Complainant provides screenshots of both the current and former uses of the domain names, where the current webpages appear to promote religion, and the former webpages appeared to promote an online convenience store retailer. See Compl. Exs. F & H. Accordingly, the Panel agrees that Respondent attempted to benefit commercially off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the 7 ELEVEN mark at the time of registering the infringing domain names. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See 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). Complainant contends that Respondent’s knowledge can be inferred given Respondent’s registration of confusingly similar domain names and Respondent’s use of the domain names to offer directly competitive services. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the 7 ELEVEN mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <7elevendelivered.com>, <711delivered.com>, and <sevenelevendelivered.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 9, 2019
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