DECISION

 

7-Eleven, Inc. v. Domain Privacy / Domain Name Privacy Inc.

Claim Number: FA2502002142314

 

PARTIES

Complainant is 7-Eleven, Inc. ("Complainant"), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Domain Privacy / Domain Name Privacy Inc. ("Respondent"), Cyprus.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <7-eleven.world>, registered with CommuniGal Communication Ltd.

 

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, 2025; Forum received payment on February 26, 2025.

 

On February 28, 2025, CommuniGal Communication Ltd. confirmed by e-mail to Forum that the <7-eleven.world> domain name is registered with CommuniGal Communication Ltd. and that Respondent is the current registrant of the name. CommuniGal Communication Ltd. has verified that Respondent is bound by the CommuniGal Communication 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 March 4, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 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@7-eleven.world. Also on March 4, 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 25, 2025, 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 providing convenience store services and products since 1927. It asserts rights in the 7-ELEVEN mark, inter alia, through registration with the USPTO (e.g., Reg. No. 896,654, registered August 11, 1970). The disputed domain name is confusingly similar to Complainant's 7-ELEVEN mark, as Respondent's addition of the gTLD ".world" fails to dispel the overall impression of 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. Respondent is not making use of the domain name in connection with any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Instead, Respondent is using the disputed domain name to dynamically redirect visitors to various commercial websites, including a website that presents a false "warning" that the visitor's computer has been infected with viruses and induces the visitor to renew a license to McAfee Total Protection. At other times, the disputed domain name redirects to a commercial parking page featuring a number of "related searches" links that direct visitors to advertisements and third-party websites. The disputed domain name has been flagged by several security vendors as malicious and for use in connection with phishing.

 

iii) Respondent registered and uses the disputed domain name in bad faith. The use of a domain name confusingly similar to Complainant's trademark to mislead Internet users and expose them to malware constitutes clear evidence of bad faith. The use of the disputed domain name that is identical or confusingly similar to Complainant's mark to redirect to advertisements or other commercial websites is also indicative of bad faith. The disputed domain name has been flagged by several security vendors for malicious use relating to phishing. Further evidence of Respondent's bad faith under the Policy lies in Respondent's registration of additional domain names that infringe the rights of other distinctive trademark owners. The registration of the disputed domain name, which is confusingly similar to Complainant's mark and bears no legitimate connection to the trademark owner, supports a finding of bad faith under the Policy.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on October 10, 2024.

 

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

 

3. Respondent is using the disputed domain name to dynamically redirect Internet users to various commercial websites, including a deceptive site that displays a false warning regarding malware infections and attempts to induce users to renew a license for McAfee Total Protection.

 

4. Respondent also uses the disputed domain name to host a commercial parking page that features sponsored links, including links related to "Convenience Stores," "24 Hour Shopping," and "Quick Snacks."

 

5. The disputed domain name has been identified by multiple security vendors as malicious and associated with phishing-related activities.

 

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. 896,654, registered August 11, 1970). A registration with the USPTO is ordinarily sufficient to establish rights in a mark for purposes of Policy ¶ 4(a)(i). Since Complainant provides evidence of its trademark registration for the 7-ELEVEN mark, the Panel finds that Complainant has established rights in the 7-ELEVEN mark under Policy ¶ 4(a)(i).

 

Complainant further argues that the disputed domain name <7-eleven.world> is confusingly similar to Complainant's 7-ELEVEN mark, as Respondent's addition of the gTLD ".world" fails to dispel the overall impression of similarity. The Panel concurs and finds that the disputed domain name is confusingly similar to Complainant's 7-ELEVEN mark within the meaning of Policy ¶ 4(a)(i).

 

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 "Domain Privacy / Domain Name Privacy Inc." 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 contends 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 notes that Respondent is using the disputed domain name to dynamically redirect Internet users to various commercial websites, including a deceptive site that displays a false warning regarding malware infections and attempts to induce users to renew a license for McAfee Total Protection.

 

The Panel observes that Respondent additionally uses the domain name to host a commercial parking page featuring sponsored links, including those related to "Convenience Stores," "24 Hour Shopping," and "Quick Snacks." The Panel further notes that the disputed domain name has been identified by multiple security vendors as malicious and associated with phishing-related activities. In view of this evidence, the Panel finds that Respondent's conduct—redirecting Internet users seeking Complainant to competing or unrelated third-party websites, including deceptive sites that display false malware warnings and attempt to induce license renewals—does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).

 

Accordingly, the Panel finds that Complainant has established a prima facie case. As Respondent has failed to submit a Response or otherwise rebut the prima facie showing, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant asserts that Respondent registered and is using the disputed domain name in bad faith by disrupting Complainant's business and attempting to attract Internet users to its website for commercial gain. Where a respondent uses a disputed domain name to impersonate a complainant, such conduct may constitute bad faith under Policy ¶ 4(b)(iii) as a disruption of the complainant's business, and under Policy ¶ 4(b)(iv) as an attempt to attract users for commercial gain. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith under 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 discussed, Complainant has submitted screenshots of the website to which the disputed domain name resolves, showing sponsored links related to "Convenience Stores," "24 Hour Shopping," and "Quick Snacks," as well as a deceptive site that displays false malware warnings and attempts to induce users to renew a license for McAfee Total Protection.

 

Based on the totality of the record, the Panel finds that Respondent has disrupted Complainant's business by redirecting Internet users—who are presumably seeking Complainant—to unrelated or competing third-party websites, including deceptive destinations featuring false malware alerts and attempts to elicit license renewals. Accordingly, the Panel concludes that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(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 <7-eleven.world> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: March 26, 2025