7-Eleven, Inc. v. luozhiqiang
Claim Number: FA2008001909325
Complainant is 7-Eleven, Inc. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, United States. Respondent is luozhiqiang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <7-11bld.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 20, 2020; the Forum received payment on August 20, 2020.
On August 21, 2020, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <7-11bld.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 August 27, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 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@7-11bld.com. Also on August 27, 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 September 22, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
The information the Registrar has provided to the Forum regarding Respondent’s registration of the <7-11bld.com> domain name is in Chinese. Complainant has alleged that because Respondent is proficient in English the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings. Complainant claims Respondent will not be prejudiced by proceeding in English because Respondent uses Arabic numerals and an English abbreviation in its domain name and Respondent’s website includes content in English. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English.) The Panel agrees that Respondent is proficient in English; thus, Respondent will not be prejudiced if the proceeding proceeds in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, 7-Eleven Inc., is engaged in the business of offering convenience store services and products. Complainant has rights in the 7-ELEVEN mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 896,654, registered Aug. 11, 1970).
2. Respondent’s <7-11bld.com>[i] domain name is confusingly similar to Complainant’s 7-ELEVEN mark because it merely replaces the word “eleven” with the Arabic number “11” and appends the generic abbreviation “bld” as well as the “.com” generic top-level domain (“gTLD”).
3. Respondent does not have rights or legitimate interests in the <7-11bld.com> domain name. Respondent is not authorized to use Complainant’s 7-ELEVEN mark and is not commonly known by the domain name.
4. Additionally, Respondent does not use the domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to pass off as Complainant in furtherance of fraud.
5. Respondent registered and uses the <7-11bld.com> domain name in bad faith. Respondent uses the domain name to impersonate Complainant for its own benefit.
6. Additionally, Respondent had actual knowledge of Complainant’s rights in the 7-ELEVEN when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the 7-ELEVEN mark. Respondent’s domain name is confusingly similar to Complainant’s 7-ELEVEN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <7-11bld.com> domain name and that Respondent registered and uses the 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 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”).
Complainant has rights in the 7-ELEVEN mark based upon the registration with the USPTO (e.g., Reg. No. 896,654, registered Aug. 11, 1970). Registration of a mark with the USPTO is generally sufficient to establish rights in the mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). As Complainant has provided evidence of registration of the 7-ELEVEN mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <7-11bld.com> domain name is confusingly similar to Complainant’s 7-ELEVEN mark because it merely replaces the word “eleven” with the Arabic number “11” and appends the generic abbreviation “bld” as well as the “.com” gTLD. Addition of a generic term and a gTLD to a mark is insufficient to overcome confusing similarity under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). Similarly, substitution of a number for its corresponding work does not negate confusing similarity. 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). Thus, the Panel finds that the <7-11bld.com> domain name is identical or confusingly similar to the 7-ELEVEN mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <7-11bld.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <7-11bld.com> domain name because Respondent is not authorized to use Complainant’s 7-ELEVEN mark and is not commonly known by the domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by a 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 constitutes 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 notes “Luozhinqiang” as the registrant and no information suggests that Complainant has authorized Respondent to use the 7-ELEVEN mark in any way. Thus, the Panel holds that Respondent is not commonly known by the <7-11bld.com> domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent doesn’t use the <7-11bld.com> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domain to pass off as Complainant in furtherance of fraud. Use of a domain name to impersonate a complainant is not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Complainant argues that Respondent’s website suggests an affiliation with Complainant and Respondent uses that confusion to trick prospective consumers and licensees into contacting Respondent for information about Complainant. Complainant provides a screenshot of the resolving webpage from the <7-11bld.com> domain. Thus, Respondent is not using the <7-11bld.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <7-11bld.com> domain name in bad faith because Respondent uses the domain name to impersonate Complainant for its own benefit. Use of a domain name to pass off as a complainant may be evidence of bad faith attraction of commercial gain under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant provides a screenshot of Respondent’s webpage and has shown that Respondent uses the <7-11bld.com> domain name to pass off as Complainant in order to spread misinformation to potential customers and licensees of Complainant. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the 7-ELEVEN when it registered the <7-11bld.com> domain name. Actual knowledge of a Complainant’s rights in a mark suggests bad faith under Policy ¶ 4(a)(iii) and may be shown by a respondent’s use of Complainant’s mark and information in connection with the domain name. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Respondent’s knowledge is evident from the use of Complainant’s mark and a photograph of one of Complainant’s stores on Respondent’s webpage. Thus, Respondent had actual knowledge of Complainant’s mark and the Panel therefore finds bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds 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 <7-11bld.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 29, 2020
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