7-Eleven, Inc. v. daves crab
Claim Number: FA2103001936038
Complainant is 7-Eleven, Inc. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is daves crab (“Respondent”), Republic of Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <7elevem.com>, registered with NameSilo, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2021; the Forum received payment on March 9, 2021.
On March 10, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <7elevem.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 March 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 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@7elevem.com. Also on March 10, 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 April 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the 7-ELEVEN mark acquired through its ownership of its portfolio of trademark and service mark registrations described below and its long and extensive use of the mark in retail services. Complainant asserts that since it was established in 1927, it has grown from the world’s first convenience store to having a presence in over 70,000 stores in numerous countries around the world.
Complainant submits that the disputed domain name is confusingly similar to its 7-ELEVEN trademark and service mark as it merely omits the hyphen and replaces the letter the “n” in the mark with an “m” in the domain name.
Complainant adds that replacing the letter “n” with the letter “m” takes advantage of a common spelling error resulting from the close location of the “N“ key and “M” key on a keyboard.
Complainant contends that the addition or removal of a hyphen in a subject domain name does not impact the analysis of confusing similarity, citing U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (spaces, punctuation, and gTLDs do not impact a Policy ¶ 4(a)(i) determination), and further contending that the addition of the generic Top-Level Domain (“gTLD”) extension <.com> is irrelevant to the confusingly similar analysis.
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by the disputed domain name and there is nothing either in the WhoIs data or on the website to which the disputed domain name resolves to indicate that Respondent is known by the disputed domain name.
Complainant adds that it has not given Respondent permission to use its 7-ELEVEN mark and so Respondent’s unauthorized use of Complainant’s famous mark shows a lack of rights and legitimate interests in the disputed domain name. Citing Solstice Marketing Corp. v. Marc Salkovitz d/b/a Image Media, LLC, FA 040087 (Forum Aug. 31, 2007) (respondent was not commonly known by the disputed domain name because, in part, respondent lacked authorization to use complainant’s registered service mark).
Complainant submits that Respondent is engaged in passive holding of the disputed domain name and therefore is not using it to make a bona fide offering of goods or services. In this regard Complainant refers to a screen capture of the web page to which the disputed domain name resolves which contains only a message to the effect that the account has been suspended. Citing Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum Aug. 7, 2012) where the panel found that inactive use, or “passive holding,” of the disputed domain name by a respondent “permits the inference that [the respondent] lacks rights and legitimate interests in the domain names.”
Complainant adds that such passive holding cannot be categorized as a legitimate noncommercial or fair use under ¶ 4(c)(iii) under the Policy.
Complainant further alleges that the disputed domain name was registered and is being used in bad faith.
Complainant contends that because the 7-ELEVEN mark is so obviously connected with Complainant, and the disputed domain name so clearly references Complainant’s 7-ELEVEN mark, the unauthorized registration and use by Respondent, who has no connection with Complainant, amounts to bad faith.
Complainant adds that it is well settled that the registration of a confusingly similar domain name that is obviously connected with a particular trademark owner by someone with no connection with the trademark owner suggests bad faith. See Household Int’l, Inc. v. Cyntom Enters., FA 096784 (Forum Nov. 7, 2000) (inferring that the respondent registered a well-known business name with hopes of attracting the complainant’s customers).
Complainant contends that there is no conceivable use of the subject domain name by Respondent that would be legitimate. See Indymac Bank v. Ebeyer, FA 175292 (Forum Sept. 19, 2003) (finding respondent registered the domain names indymax.com among others in bad faith and holding “there is no conceivable way [r]espondent could use the disputed domain names such that they would not infringe on [c]omplainant’s INDYMAC mark, and therefore it is illogical to await [r]espondent’s use of the domain names to find bad faith use.”).
Complainant asserts that it is well settled that the non-use of a domain name that is confusingly similar to a complainant’s mark constitutes use in bad faith. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding the mere holding of an infringing domain name without active use satisfies the bad faith requirement of the Policy); Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (finding non-use of a confusingly similar domain name for over seven months constituted bad faith registration and use).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides convenience store services and products, directly and through its licensees and is the owner of a portfolio of registered trademarks for the 7-ELEVEN mark including the following United States registrations:
· United States service mark 7-ELEVEN, registration number 896, 654, registered on the Principal Register on August 11, 1970 for services in international class 35;
· United States service mark 7-ELEVEN, registration number 1, 702, 010, registered on the Principal Register on July 21, 1992 for services in international class 30;
· United States service mark 7-ELEVEN, registration number 2,152 473, registered on the Principal Register on April 21, 1998 for services in international class 36;
· United States service mark 7-ELEVEN, registration number 2, 685, 684, registered on the Principal Register on February 11, 2003 for services in international class 35;
· United States trademark and service mark 7-ELEVEN, registration number 2, 765, 976, registered on the Principal Register on September 23, 2003 for services in international classes 8.9.14, 16, 18, 24, 25 and 28;
· United States trademark 7-ELEVEN, registration number 2,914, 788, registered on the Principal Register on December 28, 2004 for goods in international class 4;
· United States service mark 7-ELEVEN, registration number 3.338.512, registered on the Principal Register on November 20, 2007 for services in international class 36;
· United States service mark 7-ELEVEN, registration number 5, 105,124, registered on the Principal Register on December 20, 2016 for services in international class 41.
Complainant has an established Internet presence including on its main website at <www.7-eleven.com> and mobile applications.
The disputed domain name was registered on October 15, 2020 and resolves to a white label notice which states that the account is suspended: “This Account has been suspended. Contact your hosting provider for more information.”
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs, which confirms that he is the registrant of the disputed domain name and the further confirmation provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name in the course of this proceeding.
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 provided clear, convincing and uncontested evidence of its rights in the 7-ELEVEN mark acquired through its ownership of its portfolio of trademark and service mark registrations described above and its long and extensive use of the mark in retail services since 1927.
The disputed domain name <7elevem.com>, consists of the number “7” and the term “elevem” in combination with the gTLD <.com> extension.
The term “elevem” has no meaning in itself, but in combination with the number “7” it is an almost identical to Complainant’s trademark omitting only the hyphen and replacing the letter the “n” in the mark with an “m” in the domain name.
Neither the removal of the hyphen, nor the replacement of the letter the “n” in the mark with an “m” in the domain name contribute any distinguishing character to the disputed domain name.
For the purposes of comparison under the Policy, the gTLD <.com> extension may be ignored in the present case as it would be considered to be a necessary technical requirement.
This Panel finds therefore that the disputed domain name is confusingly similar to the 7-ELEVEN mark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name alleging that
· Respondent is not commonly known by the disputed domain name;
· there is nothing either in the WhoIs data or on the website to which the disputed domain name resolves to support that Respondent is known by the disputed domain name;
· Complainant has not given Respondent permission to use its 7-Eleven mark and so Respondent’s unauthorized use of Complainant’s famous mark supports a lack of rights and legitimate interests in the disputed domain name;
· the screen-capture of the web location to which the disputed domain name resolves, which contains merely a statement to the effect that “the account is suspended” illustrates that Respondent is engaged in passive holding of the disputed domain name;
· such passive holding is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interest in a domain name, the burden of production shifts to the respondent to prove such rights or interests.
Respondent has failed to discharge the burden of production and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii)
The disputed domain name has no inherent meaning, but it is almost identical to Complainant’s 7-ELEVEN mark. This Panel is of the view that the similarity of the disputed domain name to Complainant’s mark goes beyond coincidence and it is improbable that the registrant of the disputed domain name was unaware of Complainant, its business, its 7-ELEVEN mark, its main website at <www.7-eleven.com> , and its goodwill and reputation when the disputed domain name was chosen and registered.
In fact on the balance of probabilities the disputed domain name was chosen and registered in an act of typosquatting, omitting the hyphen and substituting the letter “n” in the mark with the letter “m” in the domain name. This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainants mark in mind with the intention of taking predatory advantage of Complainant’s reputation and goodwill.
Complainant has shown in the screen-capture of the white-label message to which the disputed domain name resolves, that Respondent is passively holding the disputed domain name which it appears is presently is not associated with any active account. In the circumstances of the present case and in particular the fact that the registration of the disputed domain name is so clearly an exercise in typosquatting, this Panel finds that such passive holding amounts to bad faith use of the disputed domain name.
As this Panel has found that the disputed domain name was both registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the relief requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <7elevem.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: April 5, 2021
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