7-Eleven, Inc. v. mgame mgame
Claim Number: FA2108001958009
Complainant is 7-Eleven, Inc. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is mgame mgame (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <7-eleven-pro.com>, registered with NameCheap, Inc.
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 August 3, 2021; the Forum received payment on August 3, 2021.
On August 3, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <7-eleven-pro.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 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-eleven-pro.com. Also on August 4, 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 August 26, 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 <7-eleven-pro.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the 7-ELEVEN trademark and service mark established by its ownership of the portfolio of registrations described below and the goodwill accrued in the mark by extensive, exclusive and continuous use by Complainant and its predecessors in the United States since 1927.
Complainant asserts that it has annually sold billions of dollars of products and services in the U.S. and beyond in its 7-ELEVEN stores under its 7-ELEVEN mark, and has annually spent millions of dollars advertising and promoting those products and services.
The 7-ELEVEN mark is displayed by Complainant and its licensees, among other places, on signage for its convenience stores and gas stations, on its website, and on its mobile apps used by customers. As a result, Complainant has developed goodwill, public recognition, and strong rights in the mark which consumers have come to know and trust as symbols of quality and value.
Complainant alleges that the disputed domain name is identical to its 7-ELEVEN trademark and service mark as it plainly misappropriates sufficient textual components from the mark that an ordinary Internet user who is familiar with the mark would believe that an affiliation exists between the disputed domain name and Complainant or its 7-ELEVEN mark.
Complainant adds that the addition of a generic term to a complainant’s mark does not distinguish the subject domain name from the mark as it has long been held that the addition of a generic word is irrelevant to the determination of whether the domain name is identical or confusingly similar to a complainant’s mark. Citing Bloomberg Finance L.P. v. Damien GRANGIENS, FA751444 (Forum Oct. 30, 2017) (the domain name bloomberg-pro.com was held confusing similar to the BLOOMBERG mark under the Policy because the addition of the generic term “pro” to the complainant’s BLOOMBERG mark failed to distinguish the disputed domain name from the complainant’s mark.).
Complainant further submits that the use of dashes or hyphens to separate Complainant’s mark from the generic term does not negate a finding of confusingly similarity under the Policy. Citing Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).
Complainant adds that the addition of a generic top-level domain (“gTLD”) name such as “.com” or “.net” to portions of the subject domain name is irrelevant to the confusingly similar analysis. Citing Dermalogica, Inc. and The Int’l Dermal Inst., Inc. v. Andrew Porter and Zen Day Spa, FA 1155710 (Forum Apr. 14, 2008).
Complainant then alleges that Respondent has no rights or legitimate interest in the subject domain name, arguing that Respondent is not known by the subject domain name, that Complainant has not licensed Respondent to use its 7-ELEVEN mark, nor does Respondent have any relationship with Complainant.
Referring to a screen capture submitted in an annex to the Complaint which shows that the disputed domain name Complainant does not even resolve to a website, but instead generates of a “403 Forbidden” message.
Complainant argues that such non-use and passive holding of the disputed domain name demonstrates that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i). 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 then alleges that the disputed domain name was registered and is being used in bad faith.
Complainant submits that the registration of the disputed domain name that is identical to Complainant’s famous 7-ELEVEN mark is itself evidence of bad faith registration as there is no conceivable good faith use of the disputed domain name.
Complainant further contends 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 registration and use. 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 adds that the registration of the disputed domain name in bad faith is confirmed by it being passively held by Respondent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant and its licensees manage an international chain of convenience stores and gas stations, for which it uses the 7-ELEVEN trademark and service mark and for which it owns a portfolio of trademark and service mark registrations including the following in the United States:
· United States registered 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 registered trademark 7-ELEVEN, registration number 1,702, 010, registered on the Principal Register on July 21, 1992 for goods in international class 30;
· United States registered service mark 7-ELEVEN, registration number 2,152,474, registered on the Principal Register on April 21, 19998, for services in international class 36;
· United States registered 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 registered trademark 7-ELEVEN registration number 2,765, 976, registered on the Principal Register on September 23, 2003 for goods in international classes 8, 9, 14, 16, 18, 24, 25 and 28;
· United States registered service mark 7-ELEVEN, registration number 2,914, 788, registered on the Principal Register on December 28, 2004 for goods in international class 4;
· United States registered 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 registered 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 extensive international reputation including an established Internet presence with a website at <www.7-eleven.com>.
The disputed domain name was registered on November 24, 2020 and is being passively held by Respondent, resolving to a message stating “404 Forbidden”.
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WHOIS, 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.
Respondent has availed of a privacy service to conceal its identity and the Registrar has confirmed that Respondent is the registrant of the disputed domain name.
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 adduced convincing and uncontested evidence that it has rights in the 7-ELEVEN trademark and service mark established by its ownership of the portfolio of registrations described above and the goodwill accrued in the mark by extensive, exclusive and continuous use by Complainant and its predecessors in the United States since 1927 growing to an international enterprise with an established Internet presence.
The disputed domain name <7-eleven-pro.com>, consists of Complainant’s 7-ELEVEN mark in combination with a hyphen, the word “pro” and the Top Level Domain (“gTLD”) extension <.com>.
Complainant’s 7-ELEVEN mark is the initial, dominant and only distinctive element in the disputed domain name. The hyphen, the generic word “pro” contribute no distinguishing character to the domain name and in the circumstances of this Complaint the gTLD <.com> extension may be ignored for the purposes of comparison.
This Panel finds that therefore 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 an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name alleging that:
· Respondent is not known by the subject domain name;
· Complainant has not licensed Respondent to use its 7-ELEVEN mark nor does Respondent have any relationship with Complainant;
· the screen capture submitted in an annex to the Complaint shows that the disputed domain name Complainant does not even resolve to a website, but instead generates of a “403 Forbidden” message;
· such non-use of the disputed domain name demonstrates that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i).
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 domain name in issue, the burden of production shifts to the respondent to prove the existence of such rights or interests.
Respondent has failed to discharge the burden of production and therefore this Panel must find that on the balance of probabilities 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 dominant element of the disputed domain name is Complainant’s 7-ELEVEN mark.
The 7-ELEVEN mark is not only distinctive, but it is also widely known due to the long and extensive use of the mark by Complainant and its predecessors in title.
Given the distinctive character of Complainant’s mark and the extent of its use and reputation, it is inconceivable that the disputed domain name was chosen and registered without knowledge of Complainant’s mark.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant’s mark in mind with the intention of creating the false and misleading impression that there is an association between the disputed domain name, Complainant and the 7-ELEVEN mark.
This Panel also finds that Respondent’s passive holding and failure to make any active use of the disputed domain name raises the inference that the disputed domain name is being used in bad faith.
Having considered the distinctiveness and extensive reputation of Complainant’s 7-ELEVEN mark, Respondent’s failure to submit a response, Respondent’s failure to provide any evidence of actual or contemplated good-faith use of the disputed domain name, Respondent’s use of a privacy service to conceal its identity and that it is implausible that the disputed domain name could be put to any good faith use, this Panel finds that by passively holding the disputed domain name, Respondent is using the disputed domain name in bad faith.
Complainant has therefore succeeded in the third element of the test in 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-eleven-pro.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: August 30, 2021
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