DECISION
7-Eleven, Inc. v. xuxu / xuxu
Claim Number: FA2311002072475
PARTIES
Complainant is 7-Eleven, Inc. ("Complainant"), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is xuxu / xuxu ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <7-eleven99.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
PANEL
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on November 27, 2023; Forum received payment on November 27, 2023.
On November 28, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail message addressed to Forum that the <7-eleven99.com> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the name. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 December 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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-eleven99.com. Also on December 5, 2023, 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 December 28, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant is a global convenience store and gas station operator, with consumer outlets in 19 countries.
Complainant's offerings include financial goods and services.
Complainant holds a registration for the service mark 7-ELEVEN, which is on file with the United States Patent and Trademark Office ("USPTO") as Registry No. 5,105,141, registered December 20, 2016.
Respondent registered the domain name <7-eleven99.com> on or about May 7, 2023.
The domain name is confusingly similar to Complainant's 7-ELEVEN service mark.
Respondent has not been commonly known by the domain name.
Respondent is not affiliated with Complainant in any way.
Complainant has not licensed or otherwise authorized Respondent to use its 7-ELEVEN mark.
Respondent is not making either a bona fide offering of goods or services by means of the domain name or a legitimate noncommercial or fair use of it.
The domain name currently resolves to an inactive website displaying a "404" error code.
The domain name has been flagged by online security vendors as malicious and likely used in connection with the operation of fraudulent phishing schemes.
Respondent has registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
(1) The domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
DISCUSSION
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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Identical and/or Confusingly Similar
By virtue of its registration of the 7-ELEVEN service mark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. See, for example, Liberty Global Logistics, LLC v. damilola emmanuel / tovary svcs. Ltd., FA 1738536 (Forum Aug. 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
This is true without regard to whether Complainant's rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug.24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent's <7-eleven99.com> domain name is confusingly similar to Complainant's 7-ELEVEN service mark. The domain name incorporates the mark in its entirety, with only the addition of the digits "99," a hyphen (-), and the generic Top Level Domain ("gTLD") ".com." These alterations of the mark, made in creating the domain name, do not enable it to escape the realm of confusing similarity under the standards of the Policy. See, for example, Twentieth Century Fox Film Corp. v. Domain Admin, etc., FA 1652313 (Forum Jan. 19, 2016):
Complainant notes that the domain name contains the recognised acronym for its … mark, along with the number '24' … [T]he Panel finds that the domain name is confusingly similar to the … mark under Policy ¶ 4(a)(i).
See also Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (Forum July 20, 2015) (finding a domain name confusingly similar to the mark of a UDRP complainant because the only difference between the two was the addition of the numeral "1.").
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Finally, under this head of the Policy, the hyphen Respondent has added to Complainant's mark in forming the contested domain name is of no moment to our analysis of the question of confusing similarity. This is because a hyphen adds nothing to the meaning, nor does it change the phonetic character, of the result. See, for example, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens included in a domain name are irrelevant in an analysis of the question of confusing similarity Policy ¶ 4(a)(i)).
Rights or Legitimate Interests
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <7-eleven99.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum, Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent's failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent's failure to respond to a UDRP complaint allows a presumption that a complainant's allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <7-eleven99.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the 7-ELEVEN service mark for any purpose. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as "xuxu / xuxu," which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as "Bhawana Chandel," and nothing in the record showed that that respondent was authorized to use a UDRP Complainant's mark in any manner).
We next observe that complainant asserts, and Respondent does not deny, that Respondent has used the <7-eleven99.com> domain name to host a commercial website displaying both Complainant's 7-ELEVEN service mark and its familiar orange, red and green trade dress, to advertise what purport to be financial services, including online investments, while Complainant also markets financial services online.
This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example,
7-Eleven, Inc. v. Johna Borris, FA1854602 (Forum Sept.10, 2019):
Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services ... because Respondent uses the … domain names' resolving webpages to offer competing cryptocurrency services.
Complainant further alleges, again without objection from Respondent, that Respondent's <7-eleven99.com> domain name currently resolves to an inactive website displaying a "404" error code. Because this reflects no active use at all, it is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. Thus, no provision of Policy ¶ 4(c) offers shelter to Respondent on the point of any claim it might have made to rights to or legitimate interests in the domain name.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
We are persuaded by the evidence presented with Complainant's Complaint that Respondent has used the <7-eleven99.com> domain name to pass itself off as Complainant online in an effort to pursue illicit profits by purporting to offer goods and services in competition with the business of Complainant. This behavior is disruptive of Complainant's rights in its . Under Policy ¶4(b)(iv), it therefore stands as proof of Respondent's bad faith in registering and using the domain name. See, for example, 7-Eleven, Inc. v. Johna Borris, supra, finding bad faith registration and use of a challenged domain name where: "Respondent attempts to attract, for commercial gain, users to the disputed domain names where Respondent uses the … domain names' resolving webpage to sell competing cryptocurrency services."
As to Respondent's current inactive use of the domain name, given that Respondent's only active use of it was conducted in bad faith, and, inasmuch as we can conceive of no future use of the domain name which would not be likewise abusive of Complainant's rights in its 7-ELEVEN mark, we conclude that Respondent's current respite from active bad faith use of the domain name is also in bad faith. See, for example, Michelin North America v. Energie Media Group, FA 1451882 (Forum Aug. 7, 2012), finding registration and use of a contested domain name to have been in bad faith where a respondent's websites were inactive, and there was no evidence that the domain names were being used for any purpose.
The Panel thus finds that Complainant has met its obligations of proof under Policy¶4(a)(iii).
DECISION
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <7-eleven99.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 8, 2024
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