7-Eleven, Inc. v. shi lei
Claim Number: FA2108001960736
Complainant is 7-Eleven, Inc. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is shi lei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <7elevenservice.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 August 23, 2021; the Forum received payment on August 23, 2021.
On August 23, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <7elevenservice.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 August 24, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@7elevenservice.com. Also on August 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 September 16, 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its portfolio of registered trademarks described below, claiming rights in the 7-ELEVEN which it asserts has been used by Complainant and its predecessors in the United States since 1927. Complainant submits that it has grown from being the world’s first convenience store to having over 77,000 stores in over 17 countries. around the world.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s 7-ELEVEN mark as it consists of the mark, albeit without the dash between “7” and “ELEVEN”. together with the generic word “service”.
Complainant argues that the disputed domain name plainly misappropriates sufficient textual components from Complainant’s 7-ELEVEN mark, that an ordinary Internet user who is familiar with Complainant’s mark and goods would, upon seeing the disputed domain name, think an affiliation exists between the disputed domain name and Complainant or its mark. Citing Awesome Kids LLC v. Selavy Comm., D2001-0210 (WIPO Apr. 16, 2001) (the domain name misappropriate sufficient textual components from the mark such that an ordinary Internet user who is familiar with the goods or services distributed under the mark would upon seeing the domain name likely think that owing to the visual and/or phonetic similarity between the mark and the domain name that an affiliation exists between the site identified by that domain name and the owner or licensed user of the mark).
Complainant also contends that the addition of the generic term “service” does not distinguish the subject domain name from the mark.
Further, Complainant argues that the omission of the dash between the two elements of its trademark, does not impact the analysis of confusing similarity. 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).
Complainant then alleges that Respondent has no rights or legitimate interests in the disputed domain name, referring to a screen capture of the webpage to which the disputed domain name resolves and the WhoIs data associated with the disputed domain name, which has been adduced in evidence in an annex to the Complaint.
Complainant argues that nothing in the WhoIs data for the disputed domain name or displayed on Respondent’s website indicates that Respondent is known by the disputed domain name. The Registrar’s verification of the registration details for the disputed domain name state that Respondent is known as Shi Lei. Moreover, <7elevenservice.com> is not a common name, or even a nickname, for a person, and therefore it is extremely unlikely that a Respondent would be commonly known by “7elevenservice.”
Additionally, Complainant asserts that it carefully monitors use of its famous 7-ELEVEN mark and is not aware of Respondent being known by the subject domain name.
Complainant further asserts that it has not licensed Respondent to use its famous 7-ELEVEN mark, nor does Respondent have any legal relationship with Complainant that would entitle Respondent to use the mark.
Complainant adds that Respondent has no legitimate reason for using the 7-ELEVEN mark within the disputed domain name.
Moreover Complainant argues that the abovementioned evidence shows that Respondent is using the disputed domain name to host a commercial parking page with goods and services directly related to those provided by Complainant. The screen capture shows that the sponsored links include “Gas Card” and “Store” among other categories of goods and services.
Complainant asserts that it would never authorize such use. Complainant contends that It is well settled that the use of a domain name to host a parking page populated by pay per click advertisements does not constitute a bona fide offering of goods or services. Citing Hard Rock Café International (USA), Inc. v. Ryhan Estate Vineyards, FA 35573 (Forum Jan. 14, 2009) (use of a confusingly similar domain name to resolve to a website displaying third-party links to unrelated websites is not a “a bona fide offering of goods and services”).
Arguing that the disputed domain name was registered and is being used in bad faith, Complainant submits that it is well settled that the use of a domain name that is identical or confusingly similar to a complainant’s mark to host a parking page is evidence of bad faith. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant adds that it is also well settled that, as in this case, 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).
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 a long, extensive goodwill and international reputation with an established Internet presence hosting its principal website at <www.7-eleven.com>.
The disputed domain name was registered on December 2, 2020 and resolves to a commercial parking page providing links to goods and services some of which directly relate to those provided by Complainant.
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 his identity and the Registrar has disclosed 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 provided uncontested and convincing evidence that it has rights in the 7-ELEVEN mark established through its portfolio of registrations described above and its long, extensive and expanding goodwill and reputation acquired by use directly or through its licensees, providing goods and services to the general public at over 77,000 7-ELEVEN branded stores in over 17 countries.
The initial, dominant and only distinctive element of the disputed domain name <7elevenservice.com> is Complainant’s 7-ELEVEN mark, albeit without the hyphen between the number “7” and the word “eleven”. The omission of the hyphen does not distinguish the disputed domain name from Complainant’s mark, particularly in the context of an Internet domain name where users come to expect that words and phrases are simplified.
The word “service” is generic and lacks any distinctive or distinguishing characteristic in the context of the disputed domain name.
Additionally in the context of this proceeding, the generic Top-Level Domain (“gTLD”) extension <.com> may be ignored for the purposes of comparison as it would be considered a necessary technical element for a domain name by Internet users.
Complainant has therefore shown 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 submitting that:
· nothing in the WhoIs data for the disputed domain name registration or displayed on Respondent’s website indicates that Respondent is known by the disputed domain name as shown by the screen capture of the webpage to which the disputed domain name resolves and the WhoIs data that have been adduced in evidence;
· <7elevenservice.com> is not a common name, or even a nickname, for a person, and therefore it is extremely unlikely that a Respondent would be commonly known by “7elevenservice”;
· Complainant carefully monitors use of its 7-ELEVEN mark is not aware of Respondent being known by the disputed domain name;
· Complainant has not licensed Respondent to use its 7-ELEVEN mark;
· Respondent has no legal relationship with Complainant that would entitle Respondent to use the mark;
· the disputed domain name plainly misappropriates sufficient textual components from Complainant’s 7-ELEVEN mark, that an ordinary Internet user who is familiar with Complainant’s mark and goods would, upon seeing the disputed domain name, think an affiliation exists between the disputed domain name and Complainant or its mark;
· Respondent has no legitimate reason for using the 7-ELEVEN mark within the disputed domain name;
· The evidence shows that Respondent is using the disputed domain name to host a commercial parking page with goods and services directly related to those provided by Complainant and the screen capture adduced in evidence shows that the sponsored links include among other goods and services links to categories including “Gas Card” and “Store.”
· Complainant asserts that it would never authorize such use and such use of a domain name to host a parking page populated by pay per click advertisements does not constitute a bona fide offering of goods or services.
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 at issue, the burden of production shifts to the respondent to prove such rights or interests.
Respondent has failed to discharge the burden of production and so this Panel must find that the Complainant has proven on the balance of probabilities 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).
Complainant has shown that it had established a long, extensive international reputation in the use of the 7-ELEVEN mark long prior to the date on which the disputed domain name was chosen and registered.
7-ELEVEN, being the dominant and distinctive element of the disputed domain name, has no significance other than as Complainant’s trademark and service mark and it is most improbable that anyone would select and registered the disputed domain name without knowledge of Complainant’s name and mark.
On the balance of probabilities, given Complainant’s prior rights and extensive reputation, the distinctiveness and strength of the 7-ELEVEN mark and the fact that Respondent has not responded to this Complaint, this Panel finds that on the balance of probabilities the disputed domain name was registered in bad faith with the intention of taking predatory advantage of Complainant’s reputation and goodwill in the 7-ELEVEN mark.
The evidence adduced shows that Respondent is using the disputed domain name, which is confusingly similar to Complainant’s mark, to host a parking page with what are on the balance of probabilities pay-per-click links to third party websites, some of which compete with Complainant’s goods and services.
This Panel finds therefore that by using the disputed domain name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site or location.
This activity is intended to confuse and misdirect Internet users to Respondent’s webpage and present them with links to offers of goods and services available through links to third party websites.
Respondent is therefore 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 <7elevenservice.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: September 16, 2021
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