DECISION

 

7-Eleven, Inc. v. 1231231 / 31231 231

Claim Number: FA2409002115365

 

PARTIES

Complainant is 7-Eleven, Inc. ("Complainant"), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is 1231231 / 31231 231 ("Respondent"), Alabama, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <7elevenx.com>, registered with NameSilo, 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 September 12, 2024; Forum received payment on September 12, 2024.

 

On September 13, 2024, NameSilo, LLC confirmed by e-mail to Forum that the <7elevenx.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 September 16, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@7elevenx.com. Also on September 16, 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 October 8, 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. 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 Respondent's omission of the dash between "7" and "Eleven," the addition of the letter "x" at the end of Complainant's mark, and the inclusion of the ".com" gTLD are insufficient to dispel the finding of confusing similarity.

 

ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its 7-Eleven mark in the disputed domain name. Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Instead, the disputed domain name is used to impersonate Complainant through a fraudulent phishing scheme.

 

iii) Respondent registered and uses the disputed domain name in bad faith. The registration of a confusingly similar domain name that is obviously connected with a particular trademark owner by someone with no connection with the trademark owner supports a finding of bad faith. Providing false contact information in the Whois record is evidence of bad faith. Respondent has used the disputed domain name to both masquerade as Complainant and fraudulently solicit personally identifying information from Complainant' potential customers in an attempt to perpetuate a fraudulent scheme for commercial gain. Respondent's such activities should be considered use of the disputed domain name in connection with a phishing scheme. Respondent had actual knowledge Complainant's rights in Complainant's marks when it registered the disputed domain name.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on July 28, 2024.

 

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

 

3. Respondent uses the disputed domain name to impersonate Complainant (including providing a login page and a home page that both display the 7-Eleven marks and images of 7-Eleven stores).

 

4. Respondent's website includes a login page that invites users to input personal data such as phone numbers and passwords.

 

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, inter alia, 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 rights in the 7-Eleven  mark under Policy ¶ 4(a)(i).

 

Complainant next argues that the disputed domain name <7elevenx.com> is confusingly similar to the 7-Eleven mark because as the omission of the dash between "7" and "Eleven," the addition of the letter "x" at the end of Complainant's mark, and the inclusion of the ".com" gTLD are insufficient to dispel the finding of confusing similarity.

 

The Panel notes that the use of a mark in its entirety, with the mere addition of a letter, omission of a hyphen, and/or inclusion of a gTLD, is insufficient to sufficiently distinguish a disputed domain name for the purposes of Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.ORG aka dalok0kat Scripts, FA 286993 (Forum Aug. 4, 2004) ("The mere addition of a single letter to Complainant's mark does not remove Respondent's domain names from the realm of confusing similarity in relation to Complainant's mark pursuant to Policy ¶ 4(a)(i)"); Health Devices Corporation d/b/a Doc Johnson Enterprises v. Aspen S T C, FA 158254 (Forum July 1, 2003) ("The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i)."). 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 Section 2.1, WIPO Jurisprudential Overview 3.0 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

 

Complainant argues that Respondent has no rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use Complainant's mark, and Respondent is not affiliated with Complainant. Relevant information, such as WHOIS information, can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The Panel notes that the unmasked WHOIS data lists "1231231 / 31231 231" as the registrant, and there is no evidence in the record to suggest Respondent was authorized to use the mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant further argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Complainant specifically points out that the disputed domain name resolves to a website, which impersonates Complainant (including providing a login page and a home page that both display the 7-Eleven marks and images of 7-Eleven stores). The website associated with the disputed domain name includes a login page that invites users to input personal data such as phone numbers and passwords.

 

Where the respondent uses a disputed domain name to pass itself off as a complainant, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant's mark and various photographs related to the complainant's business).

 

Complainant provides screenshots of the disputed domain's website, showing: Respondent uses the disputed domain name to impersonate Complainant, including a login page and a home page displaying the 7-Eleven marks and images of 7-Eleven stores, where the login page invites users to input personal data such as phone numbers and passwords. The Panel finds that Respondent's fraudulent activities and impersonation do not qualify as use of the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor as legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Therefore, the Panel concludes that Respondent has not used the domain for a bona fide offering or for legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).

 

The Panel finds that Complainant has made a prima facie case based on these considerations. As Respondent has not filed a Response or rebutted this prima facie case, the Panel determines that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent disrupts Complainant's business and attempts to attract Internet users to its competing website for commercial gain. Where a respondent uses a disputed domain name to pass itself off as a complainant, the Panel may find bad faith disruption of a complainant's business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.").

 

As previously noted, Complainant provides screenshots of the disputed domain's website, showing: Respondent uses the disputed domain name to impersonate Complainant, including a login page and a home page displaying the 7-Eleven marks and images of 7-Eleven stores, where the login page invites users to input personal data such as phone numbers and passwords.

 

The Panel finds that Respondent disrupts Complainant's business by eventually redirecting Internet users to a webpage that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).

 

Next, Complainant argues that Respondent had actual knowledge of Complainant's rights in its marks when registering the disputed domain name, emphasizing that it is inconceivable Respondent lacked such knowledge. This is supported by Respondent's prominent display of the 7-Eleven marks, including the distinctive orange, green, and red trade dress. While constructive knowledge is insufficient to establish bad faith under Policy ¶ 4(a)(iii), actual knowledge of a complainant's trademark rights is sufficient. This can be demonstrated by Respondent's use of the disputed domain name to impersonate Complainant. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it."); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) ("[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.").

 

The Panel infers that, due to Respondent's passing off as Complainant by using Complainant's exact 7-Eleven marks and images of 7-Eleven stores, along with the notoriety of Complainant's 7-Eleven marks, Respondent had actual knowledge of Complainant's rights in the marks when registering the disputed domain name. Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

 

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 <7elevenx.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: October 9, 2024