DECISION

 

7-Eleven, Inc. v. NG YEOW LONG

Claim Number: FA2312002076806

 

PARTIES

Complainant is 7-Eleven, Inc. ("Complainant"), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is NG YEOW LONG ("Respondent"), Malaysia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <7eleven96.com>, ('the Domain Name') registered with Wix.com Ltd.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 27, 2023; Forum received payment on December 27, 2023.

 

On January 2, 2024, Wix.com Ltd. confirmed by e-mail to Forum that the <7eleven96.com> Domain Name is registered with Wix.com Ltd. and that Respondent is the current registrant of the name. Wix.com Ltd. has verified that Respondent is bound by the Wix.com 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 January 8, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 2024 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@7eleven96.com. Also on January 8, 2024, 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 January 30, 2024 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant is the owner of the mark 7-ELEVEN registered, inter alia, in the USA with first use in commerce for retail store services recorded as 1944. It offers gaming related services in its apps and gambling products such as lottery tickets.

 

The Domain Name registered in 2023 is confusingly similar to the Complainant's trade mark, deleting the hyphen, adding the number '96' and the gTLD .com none of which prevents such confusing similarity.

 

The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.

 

The Domain Name has been used for a site featuring the Complainant's mark in its logo form which offers competing gambling services which is not a bona fide offering of goods or services or a legitimate non commercial or fair use. It is registration and use in opportunistic bad faith diverting Internet users for commercial gain.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the mark 7-ELEVEN registered, inter alia, in the USA with first use in commerce for retail store services recorded as 1944. It offers gaming related services in its apps and gambling products such as lottery tickets.

 

The Domain Name registered in 2023 has been used for a site featuring the Complainant's mark in its logo form which offers competing gambling services.

 

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:

 

(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").

 

Identical and/or Confusingly Similar

The Domain Name consists of the Complainant's mark (registered in the USA for retail services with first use recorded as 1944) omitting the hyphen and adding the generic number '96' and the gTLD .com.

 

The omission of a hyphen in a protected mark is irrelevant when determining the confusing similarity of a disputed domain name. See MTD Products Inc v ICS Inc, FA 1721505 (Forum Apr. 18, 2017) (holding that "[t]he removal of the hyphen [from complainant's TROY-BILT mark in the disputed domain name] is, like most all embedded punctuation, insignificant"). 

 

Previous panels have found confusing similarity when a respondent merely adds a generic number to a Complainant's mark.  See Nintendo of Am., Inc. v. Lizmi, FA 94329 (Forum Apr. 24, 2000) 

 

A gTLD does not serve to distinguish a domain name from a Complainant's mark. 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 finds that the deletion of a hyphen and the addition of the generic number 96 and the gTLD .com to the Complainant's mark does not prevent confusing similarity between it and the Domain Name.

 

Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant's registered mark.

 

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of a sign confusingly similar to its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (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 Respondent has pointed the Domain Name to a site offering competing gambling services which are not connected with the Complainant, but which feature the Complainant's mark as a logo graphic. The usage of the Complainant's mark and logo which has a reputation for a wide variety of services including gaming services and gambling products in relation to similar services not connected with the Complainant is not fair, and confusing. As such it cannot amount to the bona fide offering of services or a non commercial legitimate or fair use. 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 real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services). 

 

The Respondent has not answered the Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein.

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

The use of the Complainant's logo on the Respondent's site offering competing services shows 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 its website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site or services offered on it 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).

 

Pointing a domain name containing the registered trade mark of a third party to drive traffic to an unconnected gambling site has also been held to be registration and bad faith use under the Policy. Qwest Comm'ns Int'l Inc. v. Ling Shun Shing, FA 187431 (Forum Oct. 6, 2003) ("Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to … gambling websites, and websites in competition with Complainant. Respondent's attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).").

 

In conclusion, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under 4(b)(iii) and (iv).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <7eleven96.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: January 30, 2024