7-Eleven, Inc. v. Wen positive Zhang
Claim Number: FA2103001936902
Complainant is 7-Eleven, Inc. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Wen positive Zhang (“Respondent”), Taiwan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <7-11.co>, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 17, 2021; the Forum received payment on March 17, 2021.
On March 18, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <7-11.co> 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 March 24, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 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@7-11.co. Also on March 24, 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 14, 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 right in the 7-ELEVEN mark acquired through its ownership of its portfolio of trademark and service mark registrations described below and its extensive and continuous use in its retail business over a period of 70 years, now having 72,000 7-ELEVEN branded stores in over 17 countries.
Complainant submits the disputed domain name is confusingly similar to its 7-ELEVEN mark, merely replacing the word “Eleven” in the mark with the Arabic number “11.”
Complainant submits that the replacement of the word “eleven” with the equivalent Arabic number “11” does not distinguish the disputed domain name from its mark under Policy ¶ 4(a)(i). Citing 7-Eleven, Inc. v. luozhiqiang, FA909325 (Forum Sept. 29, 2020) (“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)”).
Claimant adds that the country code Top Level Domain (“ccTLD”) extension should be viewed as irrelevant to the confusingly similar analysis both under the Policy and under the United States Anti-Cybersquatting law, 15 U.S.C. 1125(d), because the TLD string contains no source identifying properties. See Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1055 (9th Cir.1999) (observing that the differences between the mark “MovieBuff” and the domain name “moviebuff.com” are “inconsequential in light of the fact that … the ‘.com’ top-level domain signifies the site’s commercial nature”); also The Forward Association, Inc., v. Enterprises Unlimited, FA 095491 (Forum Oct. 3, 2000) (“neither the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance”).
Complainant alleges Respondent has no right or legitimate interests in the disputed domain name. Complainant submits that Respondent’s disclosed name as registrant of the disputed domain name is different from the disputed domain name itself.
Complainant asserts that it has not licensed Respondent to use its famous 7-ELEVEN mark and states that Respondent had no legal relationship with Complainant that would permit it to use its mark. 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).
Referring to a screen capture of the website to which the disputed domain name resolves, Complainant submits that it is being used to host a webpage featuring pornographic photographs which merely link to online advertisements.
Complainant submits that such use does not constitute a bona fide offering of goods or services, nor is it constitute a legitimate non-commercial or fair use of the disputed domain name which is confusingly similar to Complainant’s mark.
Complainant then proceeds to allege that the disputed domain name was registered and has been used in bad faith. Complainant submits 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 supports a finding of bad faith under the Policy. 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 refers to the above-mentioned screen capture of Respondent’s website and submits that it illustrates that the disputed domain name, <7-11.co> which is confusingly similar to Complainant’s famous 7-ELEVEN mark, and a derivation of Complainant’s own <7-11.com> gTLD domain name, is being used to misleadingly divert consumers searching for Complainant, and to improperly suggest an affiliation with Complainant thus tarnishing Complainant’s famous 7-ELEVEN marks. Complainant alleges that such use of the disputed domain name evidences Respondent’s bad faith.
Complainant further alleges that Respondent has also configured the disputed domain name <7-11.co> domain for email, referring to a screen capture of a Unix computer session showing the domain name configured for email. Complainant submits that this is further evidence of Respondent’s bad faith use of the disputed domain name. See The HLT Group Limited trading as Holborn College v. Jerome Years, D2001-0377 (WIPO Jan. 6, 2001) (Further, by operating an e-mail on the address the Respondent has been receiving e-mail meant for the Complainant sent by Internet users confused into thinking that e-mail sent to <holborncollege.com> would be received by the Complainant.”)
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of 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 presence and is owner of the generic Top Level Domain name <7-11.com> which it uses to interact with consumers including by email.
The disputed domain name was registered on November 9, 2016. It resolves to a website displaying pornographic images with links to third party websites and it has been configured for use as an email address.
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WhoIs on which the identity of the registrant is redacted privacy, and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name. The Registrar confirmed that Respondent is the registrant.
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 that it has rights in the 7-ELEVEN mark acquired through its ownership of its portfolio of trademark and service mark registrations described above and the reputation and goodwill that it has established in its mark through its long, extensive and continuous use in its business growing to have a presence in 72,000 7-ELEVEN branded stores in over 17 countries across the world.
The disputed domain name is almost identical to Complainant’s 7-ELEVEN mark, as it merely substitutes the Arabic number “11” for the word “eleven”.
In the circumstances of this case the country code Top Level Domain (“ccTLD”) extension may be ignored as irrelevant the purposes of making an analysis to determine confusing similarity because it would be considered to be merely a technical necessity for domain name by Internet users.
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 is made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that:
· the disclosed name of the registrant, i.e. Respondent, is different from the disputed domain name. Complainant has not licensed Respondent to use its famous 7-ELEVEN mark;
· Respondent had no legal relationship with Complainant that would permit it to use its mark.
· The screen capture of the website to which the disputed domain name resolves, provided in the annex to the Complaint shows that the disputed domain name is being used to host a webpage featuring pornographic photographs which merely link to online advertisements;
· such use of the domain name which is confusingly similar to Complainant’s distinctive trademark and its <7-11.com> gTLD domain name does not constitute a bona fide offering of goods or services, nor does it constitute a legitimate non-commercial 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 interests in a disputed domain name, the burden of production shifts to that respondent to prove such rights or interests. Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name and Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant further alleges that the disputed domain name was registered and has been used in bad faith. Complainant submits 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 supports a finding of bad faith under the Policy. 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).
Given the similarity between the disputed domain name and Complainant’s 7-ELEVEN mark, and that it is identical to the second level domain in Complainant’s <7-11.com> gTLD domain name, it is totally implausible to imagine that the disputed domain name was registered other than with full knowledge of Complainant, its name, trademark, gTLD domain name, reputation and goodwill. This Panel finds that undeveloped of probabilities the disputed domain name was registered with Complainant’s mark in mind with the intention of taking predatory advantage of Complainant’s goodwill and reputation.
Complainant has shown that the disputed domain name is being used to resolve to a website which displays pornographic images linking to third-party websites. Causing, permitting or allowing the disputed domain name, which is confusingly similar to Complainant’s mark, to resolve to a website with pornographic content is clearly tarnishing the 7-ELEVEN mark. On the balance of probabilities therefore Respondent is making commercial gain from these links.
This Panel finds therefore that Respondent is using the disputed domain name in bad faith to divert Internet traffic intended for Complainant in order to make financial gain by taking predatory advantage of Complainant’s goodwill and reputation.
There is also evidence that Respondent may be using the domain name for the purposes of sending emails, without the license or authority of Complainant, which is further supporting evidence of bad faith use.
As this Panel has found that the disputed domain name was both registered and is being used in bad faith, Complainant has also succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <7-11.co> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: April 16, 2021
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