7-Eleven, Inc v. 柒一拾壹（中国）投资有限公司
Claim Number: FA2308002055770
Complainant is 7-Eleven, Inc (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is 柒一拾壹（中国）投资有限公司 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <7-eleven.xn--czr694b>, registered with WangJu Brands Management 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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on August 1, 2023; Forum received payment on August 1, 2023.
On August 17, 2023, WangJu Brands Management Co., Ltd. confirmed by e-mail to Forum that the <7-eleven.xn--czr694b> domain name is registered with WangJu Brands Management Co., Ltd. and that Respondent is the current registrant of the name. WangJu Brands Management Co., Ltd. has verified that Respondent is bound by the WangJu Brands Management 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 August 23, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of September 12, 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-eleven.xn--czr694b. Also on August 23, 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 September 13, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
Complainant has requested that the proceeding be conducted in the English language rather than Chinese which is the language of the registration agreement. Rule 11 provides that the proceeding will be conducted in the language of the registration agreement unless the circumstances show that another language is more appropriate. Complainant submits that English is the more appropriate language because:
(a) Respondent uses the English word “eleven” in the domain name and is therefore targeting Complainant, which is a United States company, and its famous 7-ELEVEN mark; thus, proceeding in English will not be prejudicial to the Respondent;
(b) Conducting the proceeding in Chinese would create a significant additional expense and delay for the Complainant due to the need to translate the evidence into Chinese;
(c) In all the circumstances, English would be the most appropriate language in which to conduct the proceeding.
The Panel has considered those arguments and agrees with them. Having regard to all the circumstances, the Panel finds, pursuant to Rule 11, that English is the more appropriate language in which to conduct the proceeding and it so orders.
A. Complainant
Complainant made the following contentions.
1. Complainant is a prominent United States company engaged in the industry of convenience stores and the provision of related goods and services.
2. Complainant submits that it has rights in the 7-ELEVEN Mark, registered by Complainant with the United States Patent and Trademark Office (“USPTO”) as registration number 2,685,684 on February 11, 2003, together with many other trademarks and service marks for 7-ELEVEN registered by Complainant and its predecessors-in-title and which have been used by Complainant since 1927 (collectively “the 7-ELEVEN mark”).
3. On October 31, 2016, Respondent registered the disputed domain name which converts from 7-eleven.xn—czr694b in PUNYCODE and translates into English as <7-eleven.trademark>.
4. Respondent has caused the disputed domain name to resolve to an inactive webpage which resolves to an error message constituting passive holding of the disputed domain name by Respondent.
5. The disputed domain name is confusingly similar to the 7-ELEVEN mark.
6. Respondent has no rights or legitimate interests in the disputed domain name and has registered and used the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in the industry of convenience stores and the provision of related goods and services.
2. Complainant has established it rights in the 7-ELEVEN mark, registered by Complainant with the USPTO as registration number 2,685,684 on February 11, 2003, together with many other trademarks and service marks for 7-ELEVEN registered by Complainant and its predecessors-in-title and which have been used by Complainant since 1927 (collectively “the 7-ELEVEN mark”).
3. Respondent registered the disputed domain name on October 31, 2016 and has caused it to resolve to an inactive webpage with an error message that the site cannot be reached, constituting passive holding of the domain name by Respondent.
4. The evidence shows that the disputed domain name is confusingly similar to the Complainant’s 7-ELEVEN mark.
5. The evidence shows that Respondent has no rights or legitimate interests in the disputed domain name and that it has registered and used it in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 first question that arises is whether Complainant has rights in a
trademark or service mark on which it may rely. Complainant has established its rights in the 7-ELEVEN mark through its registration of the mark with the USPTO as registration number 2,685,684 on February 11, 2003.
In addition, the Complainant has provided detailed records of many other and earlier registrations of the 7-ELEVEN mark with the USPTO. Registration of a trademark with a recognized authority such as the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Since Complainant has registered and has established its rights in the 7-ELEVEN mark through its extensive registration of the mark over many years and its widespread use and clearly famous nature, the Panel finds that Complainant has established its rights in the 7-ELEVEN mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s 7-ELEVEN mark. Complainant argues that Respondent’s disputed domain name is confusingly similar to the 7-ELEVEN mark because it consists of the mark itself, to which has been added only the generic Top Level Domain which translates into English as “.trademark”. The Panel agrees with the Complainant’s submission. Under Policy ¶ 4(a)(i), such an addition to a trademark does not negate the confusing similarity between a domain name and a trademark, as it is necessary for all domain names to have such an extension and as its presence does not sufficiently distinguish the domain name from the trademark. Taken as a whole, the domain name can only mean and would be interpreted by internet users to mean that it is invoking the Complainant’s 7-ELEVEN mark and asserting that it is associated with it. It is also regularly accepted in domain name arbitration that adding a generic Top Level Domain cannot negate a confusing similarity that is otherwise present, as it is in this case. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). In the present case, it is therefore established that the domain name is similar to the trademark and confusingly so. The Panel therefore finds that Respondent’s domain name is confusingly similar to Complainant’s 7-ELEVEN mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 such 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)).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s 7-ELEVEN mark and
to use it in its domain name, adding only the “.trademark” gTLD” which does not negate the confusing similarity between the domain name and the mark, and which generates the clear impression that it is referring to and is associated with the 7-ELEVEN mark;
(b) Respondent registered the disputed domain name on October 31, 2016;
(c) The evidence shows that Respondent has caused the disputed domain name to resolve to an inactive webpage with an error message that the site cannot be reached, constituting passive holding of the domain name by Respondent. There is no way in which such a use of a domain name could be described as legitimate or that it gives rise to any right of the Respondent in the domain name. There are many prior UDRP decisions to that effect;
(d) Such a use of the domain name also shows that it is not being used “in connection with a bona fide offering of goods or services” within the meaning of Policy 4(c)(i). It does not offer any goods or services and the use cannot be bona fide when it is based on the unauthorized use of a trademark which is how the Respondent comes to be using the trademark in the present case. Such a use is known as passive holding and there are many UDRP decisions to the effect that passive holding cannot give rise to a right or legitimate interest in a domain name;
(e)The evidence is that the Respondent is not commonly known by the domain name within the meaning of Policy 4(c)(ii) and it is inconceivable that the unauthorized registrant could be commonly known by such a famous and well established brand and mark. There is no evidence that it is commonly known by the domain name and the only inference that can be drawn from the evidence is that it is not commonly known by the domain name;
(f) It would also be impossible to argue that the use of the domain name established by the evidence in this case was “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The high probability is that the use was intended to be an illegal one to produce a financial benefit for the Respondent and by means of unfair and misleading conduct.
(g) Respondent has engaged in these activities without the consent or approval of Complainant;
(h) Complainant has cited several prior UDRP decisions that support the foregoing propositions.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that bad faith may also be shown by conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that a respondent’s bad faith may be demonstrated by the presence of any of the circumstances set out in Policy ¶ 4(b). The Panel agrees. The specific circumstance relied on by the Complainant is that set out in Policy ¶ 4(b)(iv), namely that the Respondent has created confusion in the minds of internet users between the 7-ELEVEN mark and the Respondent’s webpage. That is clearly the case here. The evidence therefore shows that Respondent has been engaged in the registration and use of the disputed domain name in breach of Policy ¶ 4(b)(iv) and thus in bad faith.
Secondly, the evidence shows that the Respondent has registered a domain name that is confusingly similar to a trademark and has not put it to active use. Such conduct is widely recognized as giving rise to a finding of bad faith and the Panel so finds in the present case. The 7-ELEVEN mark is world-famous and is uniquely associated with the owner of that trademark and the provision of its equally world-famous services in convenience shopping under the mark. In contrast, the Respondent has no connection with the Complainant, but has simply helped itself to the trademark and then engaged in registering the domain name and cybersquatting on it. That clearly constitutes bad faith registration and use.
Finally, as the Policy provides that the circumstances listed in Policy ¶ 4(b) are evidence of bad faith registration and use “in particular but without limitation”, the Panel finds that Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
Complainant has cited several prior UDRP decisions that support the foregoing contentions.
Complainant has thus made out the third of the three elements that it must establish.
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.xn--czr694b> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: September 18, 2023
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