7-Eleven, Inc. v. Jin Dong Li / Li Jin Dong
Claim Number: FA2002001881819
Complainant is 7-Eleven, Inc. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Jin Dong Li / Li Jin Dong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <7-leven.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 3, 2020; the Forum received payment on February 3, 2020. The Complaint was submitted in both Chinese and English.
On February 6, 2020, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <7-leven.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2020 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-leven.com. Also on February 10, 2020, 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 4, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, 7-Eleven, Inc. is in the business of offering convenience store services and products. Complainant has rights in the 7-ELEVEN mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <7-leven.com> domain name is confusingly similar to Complainant’s mark because it merely omits the letter “e” from the mark and adds the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <7-leven.com> 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. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to host a commercial parking page that includes sponsored links.
Respondent registered and uses the <7-leven.com> domain name in bad faith. Respondent attempts to attract users for commercial gain by hosting a commercial parking page.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the 7-ELEVEN trademark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its 7-ELEVEN trademark.
Respondent uses the <7-leven.com> domain name to address a website that hosts a commercial parking page where some links are directly related 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 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”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest that the Respondent is conversant and proficient in the English language. Complainant shows that the domain name targets a United States based company and its United States registered trademark. Complainant also avers that while Respondent will not be prejudiced by conducting the proceedings in English, on the other hand Complainant will be burdened by additional costs and delay if the proceedings are conducted in Chinese. Further, Respondent does not oppose Complainant’s contentions and Complainant’s request that English be the language used in the instant proceeding. Therefore, the Panel concludes that this proceeding should be in English.
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its 7-ELEVEN trademark. Such registration is sufficient to demonstrate Complainant’s rights in the 7-ELEVEN mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <7-leven.com> domain name contains Complainant’s 7-ELEVEN trademark less its first “e”, all followed by top-level domain name “.com”. The slight differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <7-leven.com> domain name from the Complainant’s 7-ELEVEN trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <7-leven.com> domain name is confusingly similar to Complainant’s 7-ELEVEN trademark. See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for <7-leven.com> identifies the domain name’s registrant as “Jin Dong Li / Li Jin Dong” and the record before the Panel contains no evidence indicating that Respondent is commonly known by the <7-leven.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <7-leven.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Additionally, Respondent uses the <7-leven.com> domain name to address a commercial parking page containing pay-per-click links some of which are directly related to Complainant’s business. Respondent’s use the of the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent uses the <7-leven.com> domain name to host a website offering pay-per-click links some of which relate to Complainant’s business. Using a confusingly similar domain name to host parked hyperlinks evidences Respondent’s intent to attract internet users for commercial gain in bad faith under Policy ¶ 4(b)(iv). See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)).
Additionally and although not specifically argued by Complainant, Respondent is engaged in a typosquatting. Typically, typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name hoping that internet users will either inadvertently type the malformed string when searching for products or services related to the domain name’s target trademark, or on viewing the domain name will confuse the domain name with its target trademark. Here, Respondent registered a domain name identical to Complainant’s trademark but for the omission of the mark’s first “e”. Predictably and as per Respondent’s design, some internet users seeking Complainant’s official website will inadvertently mistype the expected address as <7-leven.com>. Respondent may then capitalize on these unintentional visits to Respondent’s <7-leven.com> website, as it appears to do here. Also, in reading the domain name, perhaps as presented in search engine results, internet users may mistake it for a domain name sponsored, by or affiliated, with Complainant when it is not. Respondent then, via pay-per-click links, commercially exploits the accidental traffic to its website caused by confusion between Complainant’s trademark and Respondent’s domain name. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”); see also, Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Furthermore and although also not expressly argued by Complainant, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the 7-ELEVEN mark when it registered <7-leven.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and the similarity of the domain name to that uniquely stylized trademark. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name additionally shows Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); 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).
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-leven.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 5, 2020
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