7-Eleven, Inc. v. Rahul Kaushik / 7 Elevan Mart
Claim Number: FA2101001930421
Complainant is 7-Eleven, Inc. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Rahul Kaushik / 7 Elevan Mart (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <7-elevenmart.com>, registered with GoDaddy.com, LLC.
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 January 29, 2021; the Forum received payment on January 29, 2021.
On February 1, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <7-elevenmart.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 2021 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-elevenmart.com. Also on February 8, 2021, 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 3, 2021, 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 been engaged in the business of, among other things, offering convenience store services and products, either directly or through its licensees, to the general public at various locations throughout the United States since at least as early as 1927. Complainant has rights in the 7-ELEVEN trademark through Complainant’s registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No 896,654, registered August 11, 1970). Respondent’s domain name <7-elevenmart.com> is identical or confusingly similar to Complainant’s 7-ELEVEN trademark as it merely adds the generic term “mart” and the generic top-level domain “.com” to Complainant’s trademark.
Respondent lacks rights or legitimate interests in the <7-elevenmart.com> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the 7-Eleven trademark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name to pass off as Complainant.
Respondent registered and uses the <7-elevenmart.com> domain name in bad faith. Additionally, Respondent had actual knowledge of Complainant’s rights to the 7-Eleven trademark prior to registering the disputed domain name as Respondent passes off as Complainant.
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 intl class 35
- No. 1,702,010 7-ELEVEN (word), registered July 21, 1992 for goods in intl class 30
- No. 2,152,472 7-ELEVEN (word), registered April 21, 1998 for services in intl class 36
- No. 2,685,684 7-ELEVEN (word), registered February 11, 2003 for services in intl class 35
- No. 2,765,976 7-ELEVEN (word), registered September 23, 2003 for goods in intl classes 8, 9, 14, 16, 18, 24, 25 and 28
- No. 2,914,788 7-ELEVEN (word), registered December 28, 2004 for goods in intl class 4
- No. 3,338,512 7-ELEVEN (word), registered November 20, 2007 for services in intl class 36, and
- No. 5,105,124 7-ELEVEN (word), registered December 20, 2016 for services in intl class 41.
The Complainant is also the owner of the following Indian (the home country of the Respondent) national trademark registrations:
- No. 633639 7-ELEVEN (word), registered July 12, 1994 for goods in intl class 16
- No. 633640 7-ELEVEN (word), registered July 12, 1994 for goods in intl class 29
- No. 633642 7-ELEVEN (word), registered July 12, 1994 for goods in intl class 32
- No. 2463697 7-ELEVEN (word), registered January 21, 2013 for goods in intl class 30
- No. 2463286 7-ELEVEN (word), registered January 21, 2013 for goods in intl classes 29 and 32
- No. 1703689 7-ELEVEN (word), registered June 25, 2008 for goods and services in intl classes 16, 25 and 42.
The disputed domain name <7-elevenmart.com> was registered on September 21, 2020.
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 asserts rights in the 7-ELEVEN trademark through its registration of the trademark with the USPTO (e.g. Reg. No. 896,654, registered August 11, 1970), as well as from the Government of India Trade Mark Registry (e.g. Reg. No. 633639, registered July 12, 1994). Registration of a trademark with a National Trademark Authority, such as the USPTO or IP INDIA is sufficient to demonstrate rights in the trademark per Policy ¶ 4(a)(i). 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).”). Therefore, the Panel finds Complainant has demonstrated rights in the 7-ELEVEN trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <7-elevenmart.com> domain name is identical or confusingly similar to Complainant’s 7-ELEVEN trademark as it merely adds the generic term “mart” and the generic top-level domain “.com” to Complainant’s trademark. Adding a generic term and a gTLD fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). In this case, the added term “mart” is also describing/connecting to the business of the Complainant, “mart” being a short form for “market”, originating from the old Dutch word “markt”. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark per 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”).
Complainant contends that Respondent lacks rights or legitimate interests in the <7-elevenmart.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed to Respondent any rights in the 7-ELEVEN trademark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Where a respondent appears to be commonly known by a disputed domain name, the Panel may still find the respondent lacks rights or legitimate interest in the disputed domain name if the respondent lacks authorization to use the complainant’s trademark and the respondent fails to provide affirmative evidence in support of this identity. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. 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). In the present case, the WHOIS information for the disputed domain name lists the registrant as “RAHUL KAUSHIK/7 ELEVAN MART.” However, there is no other evidence to suggest that Respondent was authorized to use the 7-ELEVEN trademark, especially as the Respondent’s registered name is not including 7-ELEVEN but rather an obvious misspelling of the said trademark: “7 ELEVAN” which is not including in the disputed domain name. Further, Respondent has provided no additional evidence of its identity. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <7-elevenmart.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to pass off as Complainant. Using a confusingly similar domain name to pass off as a complainant, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant argues that Respondent uses the subject domain name to impersonate the Complainant. Specifically, Respondent uses the subject domain name to impersonate Complainant and trick prospective consumers – who will believe they are purchasing goods from Complainant – into purchasing goods from Respondent. The Complainant highlights that the webpage also hosts a store called “7 Elevan Mart,” which is not only a clear derivation textually of the famous 7-ELEVEN trademark, but is also stylized to appear confusingly similar to the famous 7-ELEVEN trademark. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Complainant contends that Respondent registered and uses the disputed <7-elevenmart.com> domain name in bad faith as Respondent passes off as Complainant. Using a confusingly similar domain name to pass off as a complainant can show bad faith per Policy ¶ 4(b)(iv). See Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant’s MACHINERY TRADER mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). As noted above, Complainant argues that Respondent’s resolving website hosts a store called “7 Elevan Mart,” which is not only a clear derivation textually of the famous 7-ELEVEN trademark, but is also stylized to appear confusingly similar to the famous 7-ELEVEN trademark. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent registered and uses the disputed domain name <7-elevenmart.com> in bad faith as Respondent registered the domain name with actual knowledge of Complainant’s rights to the 7-ELEVEN trademark as Respondent uses the disputed domain name to pass off as Complainant. Using a disputed domain name to pass off as a complainant can definitely demonstrate actual knowledge and show bad faith per Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Again, as noted above, Respondent’s resolving website hosts a store called “7 Elevan Mart,” which is not only a clear derivation textually of the famous 7-ELEVEN trademark, but is also stylized to appear confusingly similar to the famous 7-ELEVEN trademark. Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
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-elevenmart.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: March 15, 2021
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