WIPO Domain Name Decision D2023-2916 for 7-elevenshop.vip, 7-elevenshop8.vip

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION 7-Eleven International LLC v. ee rr Case No. D2023-2916 1. The Parties The Complainant is 7-Eleven International LLC, United States of America ("United States"), represented by Archer & Angel, India. The Respondent is ee rr, United States. 2. The Domain Names and Registrar The disputed domain names <7-elevenshop.vip> and <7-elevenshop8.vip> (the "Disputed Domain Names") are registered with Gname.com Pte. Ltd. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 7, 2023. On July 7, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On July 10 and 11, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent (Gname.com Pte. Ltd, REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 12, 2023 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 amended Complaint on July 13, 2023, removing one domain name from its original filing. The Center verified that the Complaint together with the amended 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 July 17, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 7, 2023. page 2 The Center appointed Lynda M. Braun as the sole panelist in this matter on September 1, 2023. 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, together with its parent/affiliated companies, i.e., Seven-Eleven Japan Co., Ltd. and 7Eleven, Inc., operates, franchises, and licenses convenience stores under the brand name 7-ELEVEN with over 79,000 stores worldwide. Originally founded in 1927, the Complainant has operated using the 7- ELEVEN name and trademark in commerce since 1946 and has rights in numerous trademark registrations worldwide for its 7-ELEVEN trademark in 90 jurisdictions worldwide, such as United States Registration for 7-ELEVEN, no. 1702010, registered on July 21, 1992, and other jurisdictions such as Australia, Bangladesh, Brazil, Canada, China, the European Union, France, Hong Kong, China, India, Italy, New Zealand, the Republic of Korea, the Russian Federation, Singapore, Spain, Sweden, Switzerland, Thailand, the United Arab Emirates, and the United Kingdom. The aforementioned trademarks will hereinafter collectively be referred to as the "7-ELEVEN Mark". The Complainant and its affiliated companies also own numerous domain names that incorporate its 7ELEVEN Mark, including <7-eleven.shop>, <7elevens.com>, and <7-eleven.com> from which it operates its principal international website. The Disputed Domain Names were registered on January 9, 2023, and each currently resolves passively to an error landing page with no substantive content. According to the Complaint, the Disputed Domain Names formerly resolved to a page which operated a payment portal allowing customers to withdraw and transfer funds through a downloadable software application titled "7-Eleven", which prominently used the 7-ELEVEN Mark. 5. Parties' Contentions A. Complainant The following are the Complainant's contentions: - the Disputed Domain Names are confusingly similar to the Complainant's 7-ELEVEN Mark; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; - the Disputed Domain Names were registered and are being used in bad faith; and - the Complainant seeks the transfer of the Disputed Domain Names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and page 3 (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names were registered and are being used in bad faith. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires a two-fold inquiry: a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. The Panel concludes that in the present case, the Disputed Domain Names are confusingly similar to the 7-ELEVEN Mark as explained below. It is uncontroverted that the Complainant has established rights in the 7-ELEVEN Mark based on its years of use, its fame worldwide, and the registered trademarks for the 7-ELEVEN Mark in the United States and jurisdictions worldwide. The registration of a mark satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. As stated in section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), "[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case". Thus, the Panel finds that the Complainant satisfied the threshold requirement of having rights in the 7-ELEVEN Mark. The Disputed Domain Name <7-elevenshop.vip> wholly incorporates the Complainant's 7-ELEVEN Mark, followed by the term "shop", and then followed by the generic Top-Level Domain ("gTLD") ".vip". The Disputed Domain Name <7-elevenshop8.vip> wholly incorporates the Complainant's 7-ELEVEN Mark, followed by the term "shop" and the number "8", and then followed by the gTLD ".vip". Where the trademark is recognizable in the Disputed Domain Name, as the 7-ELEVEN Mark here, the addition of a term, such as "shop" or "shop8" does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8 ("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 presence of the 7-ELEVEN Mark in the Disputed Domain Names in its entirety is sufficient to establish confusing similarity between the Disputed Domain Names and the Complainant's mark. Finally, the addition of a gTLD such as ".vip" in a domain name is a technical requirement. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11.1. Thus, the Panel concludes that the Disputed Domain Names are confusingly similar to the Complainant's 7-ELEVEN Mark. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Names. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant's 7-ELEVEN Mark. There is also no evidence that the Respondent is commonly known by the Disputed Domain Names or by any similar names, nor has the Respondent made any demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services. page 4 Moreover, the Complainant does not have any business relationship with the Respondent and based on the current use made of the Disputed Domain Names to resolve to an inactive error page, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Names. According to the Complaint, the Disputed Domain Names formerly resolved to a page which operated a payment portal allowing customers to withdraw and transfer funds through a downloadable software application titled "7-Eleven", which prominently used the 7-ELEVEN Mark. Such use does not constitute a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Names either. In sum, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy. First, the Panel finds that the Respondent's registration and use of the Disputed Domain Names indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its 7-ELEVEN Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 ("[t]he only plausible explanation for Respondent's actions appears to be an intentional effort to trade upon the fame of Complainant's name and mark"). Second, the Disputed Domain Names were registered years after the Complainant first began using its 7ELEVEN Mark. Therefore, the Panel finds that the Respondent had the Complainant's trademark in mind when registering the Disputed Domain Names, an indication of bad faith registration. The Respondent was seeking to drive traffic from the Complainant's website and disrupt the Complainant's business, because the Disputed Domain Names formerly resolved to a page which operated a payment portal allowing customers to withdraw and transfer funds through a downloadable software application titled "7-Eleven", which prominently used the 7-ELEVEN Markase. Third, inactive or passive holding of the Disputed Domain Names by the Respondent does not prevent a finding of bad faith use. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615; and Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry - Succession Saint Exupéry - D'Agay v. Perlegos Properties, WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without a legitimate Internet purpose may indicate that the disputed domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; see also WIPO Overview 3.0, section 3.3 (the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding). Finally, the fame of the 7-ELEVEN Mark, which was used by the Complainant decades in advance of the Respondent's registration of the Disputed Domain Names, renders it wholly implausible that the Respondent created the Disputed Domain Names independently, also noting the previous use of the Disputed Domain Name as described above. Moreover, where a disputed domain name is so obviously connected with a wellknown name, product or service, its use by someone with no connection to the name, product or service indicates bad faith. Therefore, the Panel concludes that the Respondent had actual knowledge of the Complainant's rights in the 7-ELEVEN Mark, and this constitutes bad faith under the Policy, paragraph 4(a)(iii). It therefore strains credulity to believe that the Respondent had not known of the Complainant or its 7-ELEVEN Mark when registering the Disputed Domain Names. page 5 Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Names <7-elevenshop.vip> and <7-elevenshop8.vip> be transferred to the Complainant. /Lynda M. Braun/ Lynda M. Braun Sole Panelist Date: September 15, 2023


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