7-Eleven, Inc. v. ZhangJian
Claim Number: FA2303002036555
Complainant is 7-Eleven, Inc. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is ZhangJian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <7-11-tw-com.online>, <7-11-tw-com.top>, <7-11-tw.fun>, <7-11-tw.online>, <7-11-tw.site>, <7-11-tw.space>, <7-11-tw.store>, <7-11-tw.tech>, <7-11-tw.top>, <7-11-tw.website>, <7-eleven-tw.fun>, <7-eleven-tw.online>, <7-eleven-tw.site>, <7-eleven-tw.space>, <7-eleven-tw.store>, <7-eleven-tw.tech>, <7-eleven-tw.top>, <7-eleven-tw.website>, <7eleven-tw.site>, and <tw-7-11.top>, (‘the Domain Names’) registered with Bizcn.com, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on March 20, 2023; Forum received payment on March 20, 2023.
On March 22, 2023, Bizcn.com, Inc. confirmed by e-mail to Forum that the <7-11-tw-com.online>, <7-11-tw-com.top>, <7-11-tw.fun>, <7-11-tw.online>, <7-11-tw.site>, <7-11-tw.space>, <7-11-tw.store>, <7-11-tw.tech>, <7-11-tw.top>, <7-11-tw.website>, <7-eleven-tw.fun>, <7-eleven-tw.online>, <7-eleven-tw.site>, <7-eleven-tw.space>, <7-eleven-tw.store>, <7-eleven-tw.tech>, <7-eleven-tw.top>, <7-eleven-tw.website>, <7eleven-tw.site>, and <tw-7-11.top> Domain Names are registered with Bizcn.com, Inc. and that Respondent is the current registrant of the names. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, 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 March 29, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of April 18, 2023 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-tw-com.online, postmaster@7-11-tw-com.top, postmaster@7-11-tw.fun, postmaster@7-11-tw.online, postmaster@7-11-tw.site, postmaster@7-11-tw.space, postmaster@7-11-tw.store, postmaster@7-11-tw.tech, postmaster@7-11-tw.top, postmaster@7-11-tw.website, postmaster@7-eleven-tw.fun, postmaster@7-eleven-tw.online, postmaster@7-eleven-tw.site, postmaster@7-eleven-tw.space, postmaster@7-eleven-tw.store, postmaster@7-eleven-tw.tech, postmaster@7-eleven-tw.top, postmaster@7-eleven-tw.website, postmaster@7eleven-tw.site, postmaster@tw-7-11.top. Also on March 29, 2023, the Chinese and English 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 April 25, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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 Names be transferred from Respondent to Complainant.
A. Complainant
The Complainant is the owner of the mark 7-ELEVEN trademark registered, inter alia, in the USA and Taiwan for grocery retail services with first use in commerce in the USA recorded as 1944.
The Domain Names all registered in 2023 or 2022 are confusingly similar to the Complainant’s trade mark incorporating it or a confusingly similar version of it in its entirety and adding hyphens, the country code for Taiwan ‘tw’, a gTLD and/or the generic abbreviation ‘com’ none of which prevents such confusing similarity.
The Respondent does not have any rights or legitimate interests in the Domain Names, is not commonly known by them and is not authorized by the Complainant.
Whilst the Domain Names no longer point to active web sites each and every one was pointed to identical content prominently displaying Complainant’s 7-ELEVEN trademark and logo that purportedly allowed visitors to sign into a commercial program in connection with online shopping creating the false impression that Respondent and its website were affiliated with, or operated by, the Complainant. The content contained various assurances and guarantees designed to lull Internet users into a false sense of security that the site was safe.
Phishing and impersonating a Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. It is fraudulent registration and use in opportunistic bad faith diverting Internet users for commercial gain and disrupting the Complainant’s business.
The Respondent has been the subject of a number of adverse decisions under the UDRP involving registration of domain names containing the trademarks of third parties and the large number of the Domain Names targeting the Complainant shows a pattern of bad faith activity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Language of Proceedings
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.
The Complainant is the owner of the mark 7-ELEVEN trade mark registered, inter alia, in the USA and Taiwan for grocery retail services with first use in commerce in the USA recorded as 1944.
The Domain Names all registered in 2023 or 2022 have all pointed to identical content prominently displaying the Complainant’s 7-ELEVEN trademark and logo inviting users to log in for competing online shopping services and creating the false impression that the Respondent and its website were affiliated with, or operated by, the Complainant. The Respondent has been the subject of adverse decisions under the UDRP involving other trademarks of third parties.
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”).
The Domain Names consist of the Complainant’s 7-ELEVEN mark (registered, inter alia, in the USA and Taiwan and used since at least 1944 in the USA for grocery retail services) or an abbreviation version of it, 7ELEVEN, or a numeric version of it, 7-11, the generic term ‘tw’ indicating Taiwan, additional hyphen(s), a gTLD and in the case of <7-11-tw-com.online> and <7-11-tw-com.top> the generic abbreviation ‘com’ indicating commerce.
Replacing the word for a number with a numeral in a Complainant’s mark does not prevent confusing similarity. See Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (Forum July 20, 2015) (finding the <pandora1.com> domain name to be confusingly similar to Complainant’s PANDORA ONE mark due to the similarity between the word ONE and the numeral 1 in meaning and sound.)
Adding a generic or geographical term to a Complainant's mark does not prevent confusing similarity between it and a domain name. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). See also Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). Nor does the addition or removal of a hyphen or hyphens. See Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003). Accordingly the Panel agrees that the addition of the generic term ‘tw’ and/or the generic abbreviation ‘com’ and the addition or removal of a hyphen or hyphens to the Complainant's mark does not prevent confusing similarity between the Domain Names and the Complainant's trade mark pursuant to the Policy.
A gTLD does not serve to distinguish any of the Domain Names from the Complainant’s mark, which is the distinctive component of the Domain Names. See Red Hat Inc v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are all confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by any of the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 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 use of the Domain Names is commercial and so cannot be legitimate non-commercial or fair use.
The web sites attached to the Domain Names used the Complainant's logo as a masthead to purport to offer online shopping services and did not make it clear that there was no commercial connection with the Complainant. The Panel finds this use is deceptive at best and phishing at worst. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise services which competed with the Complainant's business did not constitute a bona fide use of goods and services.); See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (“a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”).
The Respondent has not answered this Complaint or rebutted the prima facie case put forward by the Complainant.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in any of the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the Panel the use made of the Domain Names in relation to the Respondent’s sites was deceptive and disruptive in that visitors to the Respondent’s sites might reasonably have believed they were connected to or approved by the Complainant as the Complainant’s logo was used without permission as a masthead for competing online shopping services. Given the use of the Complainant’s logo the Panel finds that the Respondent had actual knowledge of the Complainant and its rights, business and services.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his websites by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web sites or services offered on them likely to disrupt the business of the Complainant. See Asbury Auto Group Inc v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use). See Allianz of AM. Corp v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use where the respondent was diverting Internet users searching for the complainant to its own website). The use is deceptive and, therefore, also may be seen as phishing. Phishing conduct is evidence of bad faith registration and use within the Policy 4(a)(iii). See Klabzuba Oil & Gas, Inc v. LAKHPAT SINGH BHANDARI, FA 1506001625750 (Forum July 17, 2015).
The Respondent has been subject to a number of adverse decisions under the Policy and has registered a large amount of Domain Names containing the Complainant’s mark or signs confusingly similar thereto suggesting a pattern of conduct under Policy 4 (b)(ii). See The Toronto-Dominion Bank v. Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administratory / Fundacion Private Whois / Domain Admin / Whois Privacy Corp, FA1408001576648 (Forum Jan. 12, 2015) (“The Panel determines that Respondent’s documented history of adverse UDRP rulings, as well as Respondent’s multiple registrations relating to Complainant’s marks, are independently sufficient to constitute a pattern as described by Policy ¶ 4(b)(ii).”)
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were all registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(ii),(iii) and (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 <7-11-tw-com.online>, <7-11-tw-com.top>, <7-11-tw.fun>, <7-11-tw.online>, <7-11-tw.site>, <7-11-tw.space>, <7-11-tw.store>, <7-11-tw.tech>, <7-11-tw.top>, <7-11-tw.website>, <7-eleven-tw.fun>, <7-eleven-tw.online>, <7-eleven-tw.site>, <7-eleven-tw.space>, <7-eleven-tw.store>, <7-eleven-tw.tech>, <7-eleven-tw.top>, <7-eleven-tw.website>, <7eleven-tw.site>, and <tw-7-11.top> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: May 11, 2023
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