The Complainant is 7-Eleven, Inc., United States of America (“United States”), represented by Archer & Angel, India.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Manishankar, 7Eleven Arthashastra Technology Pvt Ltd, India. 2. The Domain Name and Registrar
The disputed domain name <7eleventech.com> is registered with Good Domain Registry Pvt Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2020. On April 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 3, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 3, 2020. The Center received an email communication from the Respondent on April 3, 2020.
The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2020. The Center received another email communication from the Respondent on April 7, 2020.
The Center appointed Antony Gold as the sole panelist in this matter on April 30, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a substantial international operator, franchisor, and licensor of convenience stores. It was founded in 1927 and there are now approximately 67,000 stores worldwide under its control. The Complainant changed its brand name to “7-ELEVEN” in 1946 and has registered and owns a large number of trade marks in over 90 jurisdictions to protect this trading style. These include, by way of example only, Indian trade mark, application no. 633639, for 7-ELEVEN, registered on July 12, 1994, in class 16. The extent of the Complainant’s activities under the 7-ELEVEN mark is such that the mark has been acknowledged to be well known by courts and trade mark offices in a number of jurisdictions.
The Complainant owns a large number of domain names which comprise or include its 7-ELEVEN trade mark. These include <7-eleven.com>, which resolves to its principal website.
The disputed domain name was registered on May 31, 2013. It resolves to a website which offers services in the field of website design. The website is branded with a logo, the principal textual elements of which read, in large font and all capital letters, “7ELEVEN” and then, in much smaller font underneath, the words “ARTHASHASTRA TECHNOLOGY” in all capital letters.
Between December 16, 2019 and March 7, 2020, correspondence was exchanged between the Complainant’s representatives and the Respondent in relation to the Respondent’s registration of the disputed domain name. This is referred to in greater detail below.
On April 3, 2020, in response to an email from the Center concerning the approaching renewal date for the registration of the disputed domain name, the Respondent sent an email to the Center stating that the disputed domain name was still active. On April 7, 2020, following notification by the Center of the commencement of these proceedings, the Respondent sent a further email to the Center, the material parts of which read; “This domain name is used for the past 7 years now for our software business. Our business is legally registered under the Indian government act” and, later; “We are planning to start our digital marketing by next month”. 5. Parties’ Contentions A. Complainant
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights. It draws attention to its many trade marks for 7-ELEVEN, the details of one of these marks having been set out above. The disputed domain name incorporates the Complainant’s 7-ELEVEN trade mark in its entirety, including the representation of the number seven in numeral form and the number eleven in word form, with merely the hyphenation missing. To this has been added the descriptive word “tech”, as a suffix. This word is incapable of lending the disputed domain name any distinctiveness or of reducing its similarity with the Complainant’s well-known 7-ELEVEN mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to make use of its 7-ELEVEN mark. The inclusion of the term “7eleven” as a predominant part of both the disputed domain name and the Respondent’s corporate name establishes that the intention of the Respondent has been to deceive the public into believing that some association or commercial nexus exists between the Complainant and the Respondent. The Complainant enjoys exclusive rights in the mark 7-ELEVEN, which is a coined mark and does not indicate the nature of the goods or services relating to its business. As such, the Complainant’s mark is inherently distinctive. The Respondent is using the disputed domain name, for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s 7-ELEVEN trade mark. Accordingly, the Respondent is not making a legitimate noncommercial or fair use of, and has no rights or legitimate interests in, the disputed domain name. Once a prima facie case has been made out by a complainant, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name.
Lastly, the Complainant says that the disputed domain name was registered and is being used by the Respondent in bad faith. The Respondent’s usage of the Complainant’s trade mark 7-ELEVEN in conjunction with the descriptive word “tech” is likely to create confusion in the minds of the public. It is probable that consumers searching for the Complainant’s 7-ELEVEN stores and services online will perceive the disputed domain name to be an India-specific venture of the Complainant. This is the Respondent’s desired outcome and is evidence of its bad faith intentions.
The correspondence between the parties makes it evident that the Respondent was aware of the Complainant’s rights in its 7-ELEVEN Marks and hence registration of the disputed domain name was with the intent to derive and extract monetary benefits from the Complainant. The disputed domain name was adopted by the Respondent subsequent to the Complainant’s adoption and use of the 7-ELEVEN marks, and despite it being aware of the Complainant’s rights and goodwill attached to them. Such conduct of the Respondent points to a dishonest intent.
At the time of registration of the disputed domain name, the Complainant had been known by its 7-ELEVEN trade mark for over 70 years. Even so, the Respondent chose to register the disputed domain name so as to misappropriate the Complainant’s goodwill in an unabashed and unauthorised manner and in order to secure compensation from the Complainant. B. Respondent
Paragraph 5(a) of the Rules provides that within 20 days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider. Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Whilst the Respondent did not provide any response to the Complaint, paragraph 10(b) of the Rules provides that the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Accordingly, where appropriate, the Panel refers below to the assertions made by the Respondent in its communications to the Complainant’s advisors between December 2019 and March 2020 and in its emails to the Center in April 2020. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided details of the many registered trade marks it owns for 7-ELEVEN, including the mark in respect of which details are set out above. It has thereby established its rights in them.
For the purpose of considering whether the disputed domain name is identical or similar to the Complainant’s trade marks, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration. The absence of the hyphen between “7” and “eleven” is of no significance. The addition of the word “tech” at the end of the disputed domain name does not prevent it from being found to be confusingly similar to the Complainant’s trade mark. In this respect, see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Complainant’s 7-ELEVEN trade mark is recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:
(i) before any notice of the dispute, it can show use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) it can show that it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The third circumstance is inapplicable; the use made of the disputed domain name is clearly commercial in character.
Whether the Respondent has used the disputed domain name in connection with a bona fide offering of goods and services / is known by a name related to the disputed domain name is a more complex question in respect of which two issues, in particular, require consideration.
First, is the Respondent’s business a sham, that is a fake business created in order to create a purported justification for the registration and continued use of the disputed domain name? If it is, then it will not comprise a bona fide offering of goods and services. The Complainant has not made any allegation that the Respondent is not, in fact, operating a physical business and it is not for the Panel to explore an issue that the Complainant itself has not raised. The Panel therefore proceeds on the premise that the Respondent’s business is not a sham. There does however remain a question of why the Respondent apparently chose a name that corresponds to a mark that has been determined as having famous / well-known status by a number of trademark offices including that where the Respondent is located.
Second, even if the Respondent is providing an offering of goods and services, is that choice of name and related offering truly bona fide within the meaning usually ascribed to this expression in the context of paragraph 4(c)(i) of the Policy? Answering this question requires consideration of why the Respondent chose the disputed domain name for its business. Intent is relevant because if the Respondent registered the disputed domain name in an attempt to derive an advantage from the association that Internet users might be prone to make between it and the Complainant, its offering of goods and services will not be considered bona fide. See, by way of example; The Dannon Company Inc., Compagnie Gervais Danone v. Muhammad Bashir Ibrahim,WIPO Case No. D2016-2270, and also Victoria’s Secret Stores Brand Management, Inc. v. Maria Rosana dos Santos / Maria Dos Santos,WIPO Case No. D2017-1115, in which the panel commented that “While the Respondent is using the Disputed Domain Name in connection with her business, the Respondent selected the business name and registered the Disputed Domain Name long after the Complainant began operating (and had registered trade mark rights) in the United Kingdom. The Panel does not accept the Respondent’s explanation as to why she selected a business name which wholly incorporates a world-famous brand, and considers it more likely that she did so with the intention of trading off the Complainant’s reputation in the Trade Mark. Such use is not legitimate”.
The available evidence as to the Respondent’s intent is supportive of the Complainant’s assertions. First, the sole objective of the Respondent, in its dialogue with the Complainant’s advisors was to seek compensation in return for a transfer to the Complainant of the disputed domain name. The Panel considers that the more natural and most likely reaction of a registrant which had genuinely built up a legitimate business unaware of the Complainant and its mark would be to insist that it wished to retain the disputed domain name for use in its self-proclaimed legitimate business rather than immediately to seek to monetize its asset.
Second, the Respondent’s own explanation for its registration of the disputed domain name is implausible. The Respondent’s position was set out in an email to the Complainant’s advisors dated December 31, 2019, the material part of which was in the following terms “I just want to confirm you that, we are not aware of your client company name or brand. [‘]7Eleven[’] is a globally used common name to show the double shift timings a person work in a day”.
The Panel finds these claims too dubious to accept. No evidence has been produced by the Respondent to support its assertion that “7Eleven” is “a globally used common name to show the double shift timings a person work in a day”, whether with the specific combination of number and word used by the Respondent or in any other form, and this assertion is accordingly rejected. Moreover, the Respondent’s comments do not in any way explain its selection of precisely the same (and unusual) combination used by the Complainant as the components of its trading style, that is the number “7” followed by the word “eleven”. Lastly, in the light of the Complainant’s evidence of its worldwide repute, including in India, it is highly improbable that the Respondent was unaware of the Complainant and that it registered the disputed domain name, substantially incorporating the Complainant’s distinctive mark, by happenstance.
The Panel therefore concludes, on a balance of probabilities, that even if the Respondent is conducting a genuine business, its registration of the disputed domain name (and apparent business naming choice) was motivated by a desire in some way to be associated with the Complainant and to derive some commercial benefit from that association. This applies notwithstanding that the Respondent is operating in a separate area of commerce to that of the Complainant. This is because all indications are that its intention from the outset in registering the disputed domain name is likely to have been to use the association that many Internet users will make between it and the repute of the Complainant in its “7-ELEVEN” brand in order to attract Internet users to the website to which the disputed domain name resolves. Such use would not support a claim to be known by the domain name, nor is it bona fide within the meaning of paragraph 4(c)(i) of the Policy.
In this respect, it should be noted that section 2.5.1 of the WIPO Overview 3.0, in the specific context of paragraph 4(c)(iii) of the Policy but of more general application, explains that “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”.
Lastly, the Respondent has not formally replied to the Complaint. This does not have the consequence that the Complainant’s submissions are therefore accepted without evaluation but the failure to make any attempt to rebut the Complainant’s allegations is a factor which the Panel can, and does, take into account. Moreover, as explained at section 2.1 of the WIPO Overview 3.0, once a complainant has put forward a prima facie case in relation to the second element, the burden of production 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.
Here, the Panel would also observe that upon visiting the website at the disputed domain name, none of the pictures in the “About Us / Team” tab are active, and that the “Press Room” and “Certifications” tabs display placeholder “Lorem Ipsum” text and the latter moreover refers to a company called “STMX” and not the Respondent’s claimed name.
The Complainant has made out a prima facie case in relation to the second element and, in the absence of any response from the Respondent, the Panel finds that it has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant has established that its 7ELEVEN brand is very well-known worldwide, including in India where the Respondent is based. For the reasons outlined above, the Panel rejects the Respondent’s assertion in its correspondence with the Complainant’s advisors that it conceived of the “7eleven” component of the disputed domain name without any awareness of the Complainant. The more likely explanation is that the Respondent registered the disputed domain name well-aware of the Complainant’s marks and intending, in some way, to take advantage of them. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the Complainant’s trade mark registration amounts to bad faith”.
It is unlikely that many Internet users, on visiting the website to which the disputed domain name resolves, will believe that it is directly operated by the Complainant, although some may consider the Complainant’s activities to be sufficiently diversified that the Complainant might have an indirect association with it. However, the use of the Complainant’s distinctive 7-ELEVEN trade mark as the primary component of the disputed domain name is prone to encourage Internet users to visit the website to which it resolves under the mistaken apprehension that it will have some connection with the Complainant. The fact that, at least some of those Internet users will conclude, when arriving at the Respondent’s website, that this is not the case does not negate the fact that the Respondent will intentionally have sought to attract / attracted visitors to it because of the similarities between the disputed domain name and the Complainant’s 7-ELEVEN mark. This form of initial interest confusion has been found by other URDP panels to be sufficient to establish bad faith use (see, for example Philip Morris USA Inc. v. Arren Babayani,WIPO Case No. D2017-0724) and a similar view is taken by the Panel.
The Respondent’s use of the disputed domain name falls within the example of bad faith registration and use set out in paragraph 4(b)(iv) of the Policy, in 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 mark as to the source, sponsorship, affiliation, or endorsement of its website. It is possible that the Respondent’s registration and use of the disputed domain name may also fall within the circumstancesf set out at paragraph 4(b)(i) of the Policy in that (in summary) the Respondent registered the disputed domain name because it knew, sooner or later, that it was likely to have the opportunity to attempt to sell it to the Complainant at substantially more than its cost of acquisition. However, in the light of the finding already made in relation to paragraph 4(b)(iv) of the Policy, it is unnecessary to make a formal finding to this effect.
The Panel accordingly finds that the disputed domain name has been registered and is being used in bad faith 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <7eleventech.com> be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: May 14, 2020
Full & Egal Universal Law Academy