DECISION

 

7-Eleven, Inc. v. Translation Failed Translation Failed

Claim Number: FA2402002085570

 

PARTIES

Complainant is 7-Eleven, Inc. ("Complainant"), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Translation Failed Translation Failed ("Respondent"), Taiwan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <7-11.app>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 26, 2024; Forum received payment on February 26, 2024.

 

On February 26, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <7-11.app> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 4, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 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@7-11.app. Also on March 4, 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 March 26, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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

i) Complainant has been engaged in the business of offering convenience store services and products since 1927. As a result of its extensive use, Complainant has created in its 7-Eleven mark one of the most famous and distinctive marks in the world. Complainant claims rights in the  7-Eleven mark, inter alia, through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 0,896,654, registered August 11, 1970). The disputed domain name is confusingly similar to Complainant's  7-Eleven mark as it merely replaces the word "Eleven" in Complainant's 7-Eleven mark with the Arabic number "11" adding the ".app" gTLD.

 

 ii) Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not known by the disputed domain name. Nothing in the Whois data for the domain name or displayed at the disputed domain name supports that Respondent is known by the domain name. Additionally, Complainant is not aware of Respondent being known by the disputed domain name. Complainant also has not licensed Respondent to use Complainant's famous 7-Eleven mark, nor does Respondent have any legal relationship with Complainant that would entitle Respondent to use the 7-Eleven mark. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead has configured the disputed domain name with email exchange records (MX records), to enable delivery of email communications.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Setting up a disputed domain name with MX record to enable delivery of email is evidence of bad faith. Respondent's passive holding of the disputed domain name that is confusingly similar to Complainant's mark constitutes use in bad faith. The registration of the disputed domain name that is confusingly similar to Complainant's mark by Respondent with no connection with Complainant suggests bad faith. Respondent's bad faith is further indicated by the fact that the domain name was registered using false contact information. Respondent has failed to respond to Complainant's attempts to initiate contact.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on May 8, 2018.

 

2. Complainant has established rights in the  7-Eleven mark through its registration with the USPTO (e.g., Reg. No. 0,896,654, registered August 11, 1970).

 

3. The disputed domain name resolves to an error message.

 

4. Respondent has configured the disputed domain name with MX records, to enable delivery of email communications.

 

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

Complainant claims rights in the  7-Eleven mark through its registration with the USPTO (e.g., Reg. No. 0,896,654, registered August 11, 1970). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). As Complainant provides evidence of its trademark registration for the  7-Eleven mark, the Panel finds Complainant has established rights in the 7-Eleven mark under Policy ¶ 4(a)(i).

 

Complainant next argues that the disputed domain name <7-11.app> is confusingly similar to the 7-Eleven mark because it merely replaces the word "Eleven" in Complainant's 7-Eleven mark with the Arabic number "11" adding the ".app" gTLD. The Panel agrees and finds that replacing the word "Eleven" in Complainant's mark with the equivalent Arabic number "11" does not distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). The disputed domain name plainly misappropriates sufficient textual components from Complainant's 7-Eleven mark that Internet users are highly likely to associate the disputed domain name with Complainant or its 7-Eleven mark. See 7-Eleven, Inc. v. Wen positive Zhang, FA 1936902 (Forum Apr. 16, 2021) (finding 7-11.co confusingly similar to Complainant's 7-Eleven Marks). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's 7-Eleven mark.

 

Rights or Legitimate Interests

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 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)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.").

 

Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the 7-Eleven mark. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Baker & Hostetler LLP v. davis jemar, FA 2068624 (Forum Nov. 26, 2023) (finding that under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. Additionally, lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed domain name.). Here, the unmasked WHOIS information identifies Respondent as "Translation Failed Translation Failed."  There is no evidence or reason to suggest Respondent is, in fact, commonly known by the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Additionally, Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domain resolves to an error message. Failure to make active use of a disputed domain name indicates a respondent does not use the domain for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) ("both Domain Names resolve to a web site that shows the words, 'Not Found, The requested URL / was not found on this server.' Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii)."). Complainant provides a screenshot showing the disputed domain name resolves to an error message. Therefore, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant argues Respondent registered and uses the disputed domain name in bad faith. Complainant specifically points out that setting up the disputed domain name with MX record to enable delivery of email is evidence of bad faith; and Respondent's passive holding of the disputed domain name that is confusingly similar to Complainant's mark constitutes use in bad faith. Complainant provides a screenshot showing the disputed domain name resolves to a webpage with an error message as well as a screen capture showing the MX records for the disputed domain name. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy.  See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent's behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent's passive holding amounts to acting in bad faith).

 

The particular circumstances of this case that the Panel has considered are:

 

i) Established in 1927, Complainant has grown from the world's first convenience store to over 84,000 stores in numerous countries around the world. Complainant and its predecessors have continuously and exclusively used the 7-Eleven mark in the United States since 1927. Complainant has annually sold billions of dollars of products and services across the globe in its 7-Eleven stores under its 7-Eleven marks and has annually spent millions of dollars advertising and promoting those products and services under the 7-Eleven marks. As a result of Complainant's continuous and widespread use and promotion of the 7-Eleven marks, the 7-Eleven mark has become well known and widely recognized by consumers throughout the world to indicate the source of Complainant's goods and services;

 

ii) The disputed domain name has active mail exchangers ("MX") records, indicating that it is configured to enable delivery of email communications and could be used for fraudulent activity, particularly because Complainant's own employees use the similar domain name <7-11.com> for email communication; and

 

iii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.

 

Taking into account all of the above, the Panel concludes that Respondent's passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent registered and uses the disputed domain name in bad faith.

 

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 <7-11.app> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: March 31, 2024