DECISION

 

7-Eleven, Inc. v. lyndon yeates / Artisan Services

Claim Number: FA2502002140129

 

PARTIES

Complainant is 7-Eleven, Inc. ("Complainant"), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is lyndon yeates / Artisan Services ("Respondent"), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <7elevencanna.com>, <7elevencannabis.com>, <7elevencbd.com>, and <7elevenhydrogen.com> (collectively "Domain Names"), registered with GoDaddy.com, LLC.

 

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.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 13, 2025; Forum received payment on February 13, 2025.

 

On February 13, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the <7elevencanna.com>, <7elevencannabis.com>, <7elevencbd.com>, and <7elevenhydrogen.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 February 17, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 2025 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@7elevencanna.com, postmaster@7elevencannabis.com, postmaster@7elevencbd.com, and postmaster@7elevenhydrogen.com. Also on February 17, 2025, 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 11, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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 Names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Since as early as 1927 Complainant has offered convenience stores and related products under the 7-ELEVEN mark and has developed a significant global reputation in the mark. Complainant asserts rights in the 7-ELEVEN mark based upon registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 896,654, registered August 11, 1970) and IP Australia. Respondent's <7elevencanna.com>, <7elevencannabis.com>, <7elevencbd.com>, and <7elevenhydrogen.com> domain names are identical or confusingly similar to Complainant's 7-ELEVEN mark as they incorporate the mark (other than the hyphen) while adding the generic terms or abbreviations "cannabis", "canna", "cbd" or "hydrogen" along with the ".com" generic top-level domain ("gTLD").

 

Respondent lacks rights and legitimate interests in the Domain Names.  Respondent is not commonly known by the Domain Names, nor has Complainant authorized or licensed Respondent to use its 7-ELEVEN mark in the Domain Names. Respondent does not use the Domain Names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead has resolved the Domain Names to its website which advertises cannabis products, inactive pages or pages hosting pay-per-click advertisements for services unrelated to the meaning of the Domain Names. Respondent has also sought to offer the Domain Names for sale to Complainant for a sum greater than any likely out-of-pocket costs incurred in the registration of the Domain Names.

 

Respondent registered and uses the Domain Names in bad faith. Respondent acknowledges that it had had actual knowledge of Complainant's rights in the 7-ELEVEN mark at the time of registration and offers the Domain Names for sale to Complainant for a sum greater than any likely out-of-pocket costs.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the 7-ELEVEN mark. The Domain Names are confusingly similar to Complainant's 7-ELEVEN mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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:

 

(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 has rights in the 7-ELEVEN mark through its registration with the USPTO (e.g., Reg. No. 896,654, registered August 11, 1970). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, "Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.").

 

The Panel finds that each of the Domain Names is confusingly similar to the 7-ELEVEN mark as they each incorporate the 7-ELEVEN mark (other than the hyphen, the omission being de minimus) while adding generic terms or abbreviations ("cannabis" and "cbd" for example) and the ".com" gTLD.  Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis.  See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant's entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names."). The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the 7-ELEVEN mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS lists "lyndon yeates / Artisan Services" as the registrant of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).

 

The Domain Names resolve or have resolved to inactive webpages, pay-per-click pages with hyperlinks unconnected to any descriptive meaning of the Domain Name, or a website maintained by Respondent advertising cannabis products. Furthermore, in response to a letter of demand from Complainant, Respondent has refused to transfer the Domain Names, but offered to sell them for a "donation" greater than the "WIPO fees" (being a reference to the fees for filing a UDRP proceeding at the World Intellectual Property Organization). None of these uses are a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA 1533324 (Forum Jan. 17, 2014) ("Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).") see also Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA 1620342 (Forum July 1, 2015) ("Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.");  see also Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) ("Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent's unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that at the time Respondent registered the Domain Names, (July 2023 or July 2024 respectively), Respondent had actual knowledge of Complainant's 7-ELEVEN mark. In its communications with Complainant, Respondent has acknowledged its awareness of the Complainant and its products. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant's 7-ELEVEN mark for commercial gain by using the confusingly similar Domain Names to resolve to Respondent's own website or websites containing advertisements and or its own website for commercial gain.  Use of a confusingly similar domain name to redirect Internet users to a website containing advertisements for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant's business).

 

Furthermore, in response to a letter of demand from Complainant, Respondent has offered to sell them for a "donation" specifically greater than a filing fee to commence a proceeding under the Policy with a provider. Absent any other explanation, this indicates that the Domain Names were registered for the purpose of selling it to the Complainant or a third party, for a sum in excess of any out-of-pocket costs that could have been incurred by Respondent. An offer to sell a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(i).  See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) ("A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i)."). 

  

The Panel finds Complainant has satisfied 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 <7elevencanna.com>, <7elevencannabis.com>, <7elevencbd.com>, and <7elevenhydrogen.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: March 11, 2025