7-Eleven, Inc. v. Lei Shi
Claim Number: FA2303002036734
Complainant is 7-Eleven, Inc. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Lei Shi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <7-elevenbenefit.com>, <7-elevenbenfits.com>, <7-elevenbenifits.com>, <m7-elevenbenefits.com>, <mt7-elevenbenefits.com>, <my7-elevenbebefits.com>, <my7-elevenbenefis.com>, <my7-elevenbenefts.com>, <my7-elevenbenifit.com>, <my7-elevenenefits.com>, <my77-elevenbenefits.com>, <my7elevenbenefit.com>, <my7elevenbenfits.com>, and <my7elevenbenifits.com>, registered with Cloud Yuqu LLC; Chengdu West Dimension Digital Technology Co., Ltd..
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on March 21, 2023; Forum received payment on March 21, 2023.
On March 23, 2023, Cloud Yuqu LLC; Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to Forum that the <7-elevenbenefit.com>, <7-elevenbenfits.com>, <7-elevenbenifits.com>, <m7-elevenbenefits.com>, <mt7-elevenbenefits.com>, <my7-elevenbebefits.com>, <my7-elevenbenefis.com>, <my7-elevenbenefts.com>, <my7-elevenbenifit.com>, <my7-elevenenefits.com>, <my77-elevenbenefits.com>, <my7elevenbenefit.com>, <my7elevenbenfits.com>, and <my7elevenbenifits.com> domain names are registered with Cloud Yuqu LLC; Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. Cloud Yuqu LLC; Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Cloud Yuqu LLC; Chengdu West Dimension Digital Technology Co., Ltd. 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 Written Notice of the Complaint in both English and Chinese, 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-elevenbenefit.com, postmaster@7-elevenbenfits.com, postmaster@7-elevenbenifits.com, postmaster@m7-elevenbenefits.com, postmaster@mt7-elevenbenefits.com, postmaster@my7-elevenbebefits.com, postmaster@my7-elevenbenefis.com, postmaster@my7-elevenbenefts.com, postmaster@my7-elevenbenifit.com, postmaster@my7-elevenenefits.com, postmaster@my77-elevenbenefits.com, postmaster@my7elevenbenefit.com, postmaster@my7elevenbenfits.com, postmaster@my7elevenbenifits.com. Also on March 29, 2023, the Chinese and English language 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 in both English and Chinese.
On April 25, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
Prior to discussing the three elements of the Policy, the Panel must decide on the language of the proceedings. The Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese.
Pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, having regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
In the present case, Respondent has received the Notice of Complainant and Commencement Notification in English and Chinese and has chosen not to respond to the Complaint. The resolving websites are in English. Pursuant to Rule 11(a), having regard to the circumstances of the case, the Panel determines that fairness and justice to both parties, and due expedition, are best satisfied by conducting the remainder of the proceedings in English. See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017); see also UBS AG v. ratzel laura, FA 1735687 (Forum July 14, 2017).
A. Complainant
Complainant states that it has been engaged in the business of, among other things, offering convenience store services and products, either directly or through its licensees, to the general public at various locations throughout the United States since at least as early as 1927. It has grown from the world’s first convenience store to over 70,000 stores in numerous countries around the world. Complainant has annually sold billions of dollars of products and services in the U.S. and beyond. Complainant asserts rights in the 7-ELEVEN mark based upon its registration in the United States in 1970. The mark is registered elsewhere around the world and it is famous.
Complainant alleges that the disputed domain names are confusingly similar to its 7-ELEVEN mark as they incorporate the mark in its entirety (sometimes omitting the hyphen) and merely add generic terms (sometimes misspelled) and the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain names since Respondent is not licensed or authorized to use Complainant’s 7-ELEVEN mark and is not commonly known by the disputed domain names. Respondent does not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the resolving websites display pay-per-click hyperlinks to products and services not related to Complainant. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent has been involved in prior adverse UDRP proceedings. Respondent uses the disputed domain names to host a parking page with commercial hyperlinks. Respondent uses the 7-ELEVEN mark despite lacking any connection to Complainant. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark 7-ELEVEN dating back to at least 1970 and uses it to offer convenience store services and products.
The disputed domain names were registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving websites display pay-per-click advertising links to products and services not related to Complainant. Respondent has engaged in a pattern of bad faith registration and use of domain names.
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 disputed domain names incorporate Complainant’s 7-ELEVEN mark in its entirety (sometimes omitting the hyphen) and merely add generic terms (sometimes misspelled) and the “.com” generic top-level domain (“gTLD”). When a disputed domain name wholly incorporates another’s mark, additional terms, whether misspelled or not, and the addition of omission of hyphens, have been found insufficient to defeat a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Milliman, Inc v. Domain Administrator, See PrivacyGuardian.org/Zhichao Yang, D2018-2178 (WIPO, Nov. 17, 2018) (finding that the addition of “benefis”, “bennefits”, “bnefits”, and “benefits” does not distinguish a disputed domain name from the complainant’s trademarks and ordering the transfer of <millimanbenefis.com>, <millimanbennefits.com>, <millimanbnefits.com>, and <millimannbenefits.com>); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Thus the Panel finds that the disputed domain names confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its 7-ELEVEN mark. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1408001574905 (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). Here, the WHOIS information for the disputed domain names lists the registrant as “Lei Shi”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
The disputed domain names resolve to parked pages with pay-per-click advertising hyperlinks to products and services not related to Complainant. Previous Panels have found that where a respondent’s disputed domain name is used to host commercial hyperlinks or advertisements, there is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Thus the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, the resolving websites host unrelated commercial hyperlinks. A respondent’s use of a disputed domain name for a parked page with unrelated hyperlinks has been used as evidence of bad faith attraction for commercial gain. See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). Thus the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Further, Complainant provides citations of several UDRP cases involving Respondent which resulted in transfer of the domain names. Panels have found that if a respondent has been a participant in previous adverse UDRP proceedings, it may show a pattern of bad faith registration and use and therefore bad faith pursuant to Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA 1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Thus the Panel finds bad faith registration and use under Policy ¶ 4(b)(ii).
Finally, Respondent registered multiple domain names containing Complainant’s mark. This can substantiate an argument that a respondent registered and uses a disputed domain name in bad faith per Policy ¶ 4(b)(ii). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Angie Arendt / DIAHOST .CO / keith mosley, FA1805001789701 (Forum July 2, 2018) (finding that Respondent engaged in a pattern of bad faith and registration by registering multiple domain names that contain Complainant’s famous CATERPILLAR mark); see also Radisson Hotels Internation, Inc. v. Yue Mei Wang / Wang Yue Mei aka Pei Jun Gan / Gan Pei Jun / Jun Yu He / He Jun Yu / Denliyan, FA1504001615349 (Forum June 1, 2015) (“The Panel agrees that Respondent’s registration of the <radissonbluplazachongqing.com>, <radissonbluchongqingshapingba.com>, <radissonplazahoteltianjin.com>, and <radissonbluhotelshanghai.com> domain names, which all infringe on Complainant’s mark, constitutes bad faith under Policy ¶ 4(b)(ii).”); see also Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1520008 (Forum Nov. 7, 2013) (respondent’s registration of multiple infringing domain names established a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Thus the Panel finds, on this ground also, that Respondent registered the disputed domain names in bad faith per Policy ¶ 4(b)(ii).
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-elevenbenefit.com>, <7-elevenbenfits.com>, <7-elevenbenifits.com>, <m7-elevenbenefits.com>, <mt7-elevenbenefits.com>, <my7-elevenbebefits.com>, <my7-elevenbenefis.com>, <my7-elevenbenefts.com>, <my7-elevenbenifit.com>, <my7-elevenenefits.com>, <my77-elevenbenefits.com>, <my7elevenbenefit.com>, <my7elevenbenfits.com>, and <my7elevenbenifits.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill Panelist
Dated: April 26, 2023
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