7-Eleven, Inc. v. Tarek gad
Claim Number: FA2210002018099
Complainant is 7-Eleven, Inc. (“Complainant”), USA, represented by David J. Steele of Tucker Ellis, LLP, California. Respondent is Tarek gad (“Respondent”), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <m7-rewards.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on October 28, 2022; Forum received payment on October 28, 2022.
On October 28, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <m7-rewards.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 October 31, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 2022 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@m7-rewards.com. Also on October 31, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) Complainant has been engaged in the business of offering convenience store services and products since 1927. Complainant claims rights in the 7REWARDS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,921,021, registered March 22, 2016). The disputed domain name is confusingly similar to Complainant’s 7REWARDS mark as it wholly incorporates the mark and merely adds an extra letter “m,” a hyphen and “.com” gTLD.
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its 7REWARDS mark in the disputed domain name. Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Respondent used the disputed domain name to offer competing services with Complainant.
iii) Respondent registered and uses the disputed domain name in bad faith by attempting to confuse consumers as to the source and/or ownership of the disputed domain to capitalize on Complainant’s 7REWARDS mark. Respondent uses the subject domain name in connection with its purported rewards program. Respondent’s website appears to offer several popular gift cards for sale, directly competing with Complainant’s own sale of a variety of gift cards under its 7-Eleven mark and 7REWARDS mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on April 3, 2021.
2. Complainant has established rights in the 7REWARDS mark through its registration with the USPTO (e.g., Reg. No. 4,921,021, registered March 22, 2016).
3. The disputed domain name’s resolving webpage offers a rewards program, which is competing with Complainant.
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 claims rights in the 7REWARDS mark through its registration with the USPTO (e.g., Reg. No. 4,921,021, registered March 22, 2016). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). As Complainant provides evidence of its trademark registration for the 7REWARDS mark, the Panel finds Complainant has rights in the 7REWARDS mark under Policy ¶ 4(a)(i).
Complainant next argues that the disputed domain name <m7-rewards.com> is confusingly similar to the 7REWARDS mark because it incorporates the mark in its entirety and merely adds an extra letter “m,” a hyphen and the “.com” gTLD. Moreover, the addition of the letter “m” before a domain name often indicates that the website is a corresponding site formatted for mobile users.
The Panel notes that the use of a mark in its entirety with the mere addition of a letter, a hyphen and/or a gTLD fails to sufficiently distinguish a disputed domain name for the purposes of Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.ORG aka dalok0kat Scripts, FA286993 (Forum August 4, 2004) (“The mere addition of a single letter to Complainant’s mark does not remove Respondent’s domain names from the realm of confusing similarity in relation to Complainant’s mark pursuant to Policy ¶ 4(a)(i)”); Health Devices Corporation d/b/a Doc Johnson Enterprises v. Aspen S T C, FA158254 (Forum July 1, 2003) (“The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i)”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s 7REWARDS mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 argues that Respondent lacks rights or legitimate interests in the disputed domain name because Respondent has not been sponsored or endorsed by, or authorized or licensed to use its 7REWARDS mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the Whois information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel notes that the unmasked Whois information for the disputed domain name lists the registrant as “Tarek gad.” Additionally, there is no evidence to suggest that Respondent was authorized to use Complainant’s mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Complainant specifically points out that the disputed domain name resolves to a website, which offers its purported rewards program. Respondent’s website appears to offer several popular gift cards for sale, directly competing with Complainant’s own sale of a variety of gift cards under its 7-Eleven mark and 7REWARDS mark. The Panel finds that the use of the disputed domain name to offer competing services with Complainant does not constitute a bona fide offering of goods or services, or any legitimate non-commercial or fair use.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent registered and uses the disputed domain name in bad faith by attempting to confuse consumers as to the source and/or ownership of the disputed domain to capitalize on Complainant’s 7REWARDS mark.
The Panel notes that the registration and commercial use of a confusingly similar domain name, to create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the respondent’s website, thereby taking advantage of the complainant’s mark for a respondent’s commercial gain, supports a finding of bad faith under Policy ¶ 4(b)(iv). See 7-Eleven, Inc. v. Meng Hao Luei / helpme.sg;itguy.sg;talkcock.sg, FA919121 (Forum December 2, 2020) (finding bad faith because respondent’s website offered competing products).
Complainant has provided the Panel with screenshots of the disputed domain name’s resolving webpage where Respondent offers a rewards program and sells competing products with Complainant. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii) or (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 <m7-rewards.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: November 30, 2022
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