7-Eleven, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2004001891709
Complainant is 7-Eleven, Inc. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, United States. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <7elven.com>, registered with Media Elite Holdings Limited.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 10, 2020; the Forum received payment on April 10, 2020.
On April 14, 2020, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <7elven.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 April 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 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@7elven.com. Also on April 14, 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 May 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant has grown from the world’s first convenience store to over 60,000 stores in numerous countries around the world. Complainant has rights in the 7-ELEVEN trademark based upon its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 896,654, registered Aug. 11, 1970). Respondent’s <7elven.com> domain name is confusingly similar to Complainant’s trademark because it wholly incorporates Complainant’s 7-ELEVEN trademark, merely omitting the letter “e” within the trademark and adding the “.com” generic top-level domain (“gTLD”).
The Respondent does not have rights or legitimate interests in the <7elven.com> domain name. Respondent is not licensed or authorized to use Complainant’s 7-ELEVEN trademark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to resolve to a site which contains pay-per-click advertisements.
Respondent registered and uses the <7elven.com> domain name in bad faith. Respondent is attempting to attract Internet users to its webpage which resolves to pay-per-click advertisements. Finally, Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s rights in the 7-ELEVEN trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 896,654 7-ELEVEN (word), registered August 11, 1970 for services in class 35;
No. 1,702,010 7-ELEVEN (word), registered July 21, 1992 for goods in class 30;
No. 2,152,472 7-ELEVEN (word), registered April 21, 1998 for services in class 36;
No. 2,685,684 7-ELEVEN (word), registered February 11, 2003 for services in class 35;
No. 2,765,976 7-ELEVEN (word), registered September 23, 2003 for goods in classes 8, 9, 14, 16, 18, 24, 25, and 28;
No. 2,914,788 7-ELEVEN (word), registered December 28, 2004 for goods in class 4;
No. 3,338,512 7-ELEVEN (word), registered November 20, 2007 for services in class 36; and
No. 5,105,124 7-ELEVEN (word), registered December 20, 2016 for services in class 41.
Respondent registered the disputed domain name <7elven.com> on October 7, 2005.
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 Complainant asserts rights in the 7-ELEVEN trademark based upon its registration of the trademark with the USPTO (e.g., Reg. No. 896,654, registered Aug. 11, 1970). Registration of a trademark with the USPTO is generally sufficient to establish rights in a trademark per Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i)”). Complainant provides evidence of registration of the 7-ELEVEN trademark with the USPTO, therefore, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <7elven.com> domain name is confusingly similar to Complainant’s trademark because it wholly incorporates Complainant’s 7-ELEVEN trademark, merely omitting an “e” within the trademark and adding the “.com” gTLD. The omission of a single letter and adding a gTLD may not negate any confusing similarity between a disputed domain name and a trademark under Policy ¶ 4(a)(i). See Klein Tools, Inc. v chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains the entire BANK OF AMERICA mark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)). This is indeed the same in the present case. Thus, the Panel find that the disputed domain name is confusingly similar to the 7-ELEVEN trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 Complainant argues that Respondent does not have rights or legitimate interests in the <7elven.com> domain name because Respondent is not licensed or authorized to use Complainant’s 7-ELEVEN trademark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names”). Additionally, lack of authorization to use a mark can constitute a further showing that a respondent lacks rights in a mark. 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). The WHOIS information of record in the present case notes “Domain Administrator / Fundacion Privacy Services LTD” as the registrant and no information in the record suggests that Complainant has authorized Respondent to use the 7-ELEVEN trademark in any way or that Respondent is commonly known by the disputed domain name. Thus, the Panel find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a website containing pay-per-click advertisements. Use of a disputed domain name to resolve to a site displaying pay-per-click advertisements generally does not qualify as a bona fide offering of goods or services. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering”). Here, Complainant has provided screenshots of Respondent’s web page which displays a commercial parking page that includes sponsored links to, among other goods and services, “7 Eleven Job Application,” “7 Eleven Careers,” “7 Eleven Franchise,” and “7 Eleven Application Form.” The Panel agree with Complainant that this does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Complainant argues that Respondent has registered and uses the <7elven.com> domain name in bad faith. Specifically, Complainant alleges Respondent uses the disputed domain name to misdirect users to a commercial website which hosts advertisements and links to third-party sites. Using a confusingly similar domain name to commercially benefit via, pay-per-click links can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees”); see also Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). As previously mentioned, Complainant has provided screenshots of Respondent’s website which features advertisements and links to third-party websites. Thus, the Panel find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant’s rights in the 7-ELEVEN trademark when registering the disputed domain name. Actual knowledge of a complainant’s rights in a trademark at the time of registration of a domain name can be shown to be bad faith per Policy ¶ 4(a)(iii). See 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”). Actual knowledge of a mark can be established by showing the fame and notoriety of the mark. See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Complainant argues that Respondent must have had actual knowledge of Complainant’s rights due to the fame of the 7-ELEVEN trademark, Respondent’s use of the trademark in its entirety, and Complainant’s long-standing use of the 7-ELEVEN trademark. Based on this, the Panel agrees, and find bad faith registration and use under 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 <7elven.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: May 11, 2020
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