The Complainant is 7-Eleven, Inc. of Dallas, Texas, United States of America, represented by Griffith Hack, Australia.
The Respondent is Profit Map of Pyrmont, New South Wales, Australia, represented by Musicoz Foundation Limited, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2015. On July 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2015. The Response was filed with the Center on August 24, 2015.
The Center appointed Adam Samuel as the sole panelist in this matter on September 4, 2015. 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 operates, franchises and licenses convenience stores worldwide including over 600 in Australia where it first opened a store in 1977. It owns US trademark number 0896654 for 7-ELEVEN which was registered on August 11, 1970 and an Australian trademark number 1350427, registered on March 12, 2010. The disputed domain name was first registered on July 20, 2010. The Complainant has registered a number of domain names, notably on July 1, 1998. 5. Parties’ Contentions A. Complainant
The Complainant owns trademark registrations for 7-ELEVEN in more than 100 countries, including Australia where the Respondent is located.
The exclusion of the hyphen between the number “7” and the word “eleven” and the addition of “.co” in the disputed domain name does not differentiate the disputed domain name from the Complainant’s well-known 7-ELEVEN trademark.
The Respondent has not at any time been commonly known by the disputed domain name and has no trade marks to the Complainant’s knowledge that are similar to the disputed domain name. The respondent is not making legitimate noncommercial or fair use of the disputed domain name.
One can infer bad faith on the part of the Respondent from the similarity between the disputed domain name and the Complainant’s world renowned trademark. The Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its trademark in a domain name that includes the generic descriptor “.co”. The Respondent has refused to transfer the disputed domain name to the Complainant in return for its out-of-pocket costs but has sought payment of a considerably higher amount. B. Respondent
The Respondent has owned the disputed domain name for over five years and parked it and so has not used it in bad faith or for an unlawful purpose. The Complainant first contacted the Respondent about the disputed domain name on June 24, 2015. The Respondent operates businesses significantly different from that of the Complainant. The Respondent is a music charity and never represents itself in any way as connected with the Complainant. The Complainant does not own all the domain names using the 7-ELEVEN name. The Australian trademarks do not cover music or cultural activities in which the Respondent engages. The Complainant in bringing the Complaint is acting outside Australian trademark law.
The Respondent has undertaken not to infringe the Complainant’s trademark. There is no evidence that consumers are confused by the disputed domain name. The Complainant has acted in bad faith in offering first nothing and then USD 100 for the disputed domain name allied to threats to take the disputed domain name away via the current proceedings without payment to the Respondent. USD 7,450 represents the Respondent’s reasonable out-of-pocket expenses including seeking legal advice in connection with these proceedings. The Complainant has not replied to this offer. Instead, a month after receiving the offer, it brought this complaint. In doing so, it acted in bad faith since the costs involved will exceed the offer made.
The Respondent has trademark law rights which this complaint infringes and has not infringed any trademark rights of the Complainant. After five years, without any confusion or trademark infringement, the Complainant is now seeking to take ownership of the disputed domain name without paying the costs for securing, owning and managing the disputed domain name during the period concerned. Any transfer should only be ordered in exchange for a payment of USD 7,450. The matter should be addressed through the Australian courts. 6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it 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.
It should be noted that the Respondent in registering the disputed domain name undertook, in the Registration Agreement, to be bound by the Policy and submit itself to these proceedings. It follows from this that two of its arguments must fail. First, it cannot argue that the Panel should decline jurisdiction in favour of the Australian courts. Second, the Panel must apply the Policy, not Australian law. A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant’s trademark without the hyphen between “7” and “eleven” and the addition of “.co”. The Complainant’s trademark is known worldwide. The disputed domain name is so similar to the Complainant’s trademark that it is confusingly similar viewed objectively. There is no need for the Complainant to prove actual confusion for this purpose. If the Policy intended to impose such a requirement on the Complainant, it would have said so. The disputed domain name only needs to be similar in a confusing way to the Complainant’s trademark for the first test of the Policy to be met. For this reason, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Respondent accepts that it has no connection to the Complainant or permission from the Complainant to use its trademarks. The Respondent has not used the disputed domain name since registering it and does not have a name which is similar to it. Essentially, the Respondent has registered a domain name knowing that it is very similar to the Complainant’s trademark and done nothing with it. The Respondent argues that it is entitled to register the disputed domain name because it is not infringing the Complainant’s trademark rights in doing so. That, though, is not the test here. The Policy only requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The test is whether the Respondent has rights or a legitimate interest in the name “7eleven”. The evidence shows that the Respondent has no such rights. For these reasons, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Respondent clearly knew of the Complainant’s 7-ELEVEN mark when it registered the disputed domain name, well after the Complainant’s first registration of the mark and many years after it opened its first convenience stores using the 7-ELEVEN name in Australia. The Respondent has not explained why it registered the disputed domain name.
In this Panel’s view, one is left with three possible motives for the Respondent’s decision to register the disputed domain name: to disrupt the Complainant’s relationship with its customers or potential customers, attempt to attract Internet users for commercial gain or persuade the Complainant to buy the disputed domain name from it for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith. The Respondent’s motivation may have been more than one of these and perhaps all three.
The Respondent’s subsequent behaviour, in suggesting that the out-of-pocket expenses involved in registering and holding a domain name on a parking page amount to USD 7,450, suggests that the Respondent is not using the disputed domain name in good faith. The Panel has experience of domain name ownership over a similar length of time and from that experience finds it very likely that the Respondent’s assertion about its costs made repeatedly both to the Complainant in correspondence and in the Response to the Complaint is not credible and thus is itself evidence of the Respondent’s bad faith in using the disputed domain name.
The Respondent argues that the Complainant did nothing over five years to retrieve the disputed domain name and that this somehow bars a claim under the Policy. This runs counter to the terms of the Policy which do not require the Complainant to act with any speed in enforcing its rights under the Policy.
The Respondent also argues that the Complainant has shown bad faith in seeking the transfer of the disputed domain name without paying its reasonable out-of-pocket costs and threatening to obtain that transfer without making any payment to the Respondent. The Complainant is entitled to rely on its rights under the Policy to obtain transfer of the disputed domain name if it can prove the three elements set out above. It is under no obligation to make any payment to the Respondent under the Policy if this Panel finds that it has proved the three elements. The Complainant’s threat to bring these proceedings was entirely in line with its rights under the Policy and the Respondent’s objection to it unfounded under the Policy.
For these reasons, the Panel concludes that the disputed domain name was 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 be transferred to the Complainant.
Adam Samuel
Sole Panelist
Date: September 5, 2015
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