The Complainant is 7-Eleven, Inc., United States of America (“United States”), represented Saba & Co. IP, Lebanon.
The Respondent is Seyed Amir Shahab Soleimani, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name <7eleven.ir> (“Disputed Domain Name”) is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2020. On June 22, 2020, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Disputed Domain Name. On June 23, 2020, IRNIC 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 .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 July 1, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2020. The Response was filed with the Center on July 19, 2020, inquiring also about settlement options. Accordingly, the Center sent an email to the Parties regarding possible settlement on July 21, 2020. On July 23, 2020, the Complainant requested the proceeding to be suspended. The proceeding was suspended on the same day until August 22, 2020. Upon the Complainant’s request, the proceeding was reinstituted on August 25, 2020, and the Center notified the Parties that it was proceeding to panel appointment.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 8, 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 an international chain of convenience stores, headquartered in Dallas, United States, and there are now approximately 60,000 stores worldwide under its control. The Complainant also has an extensive online presence.
The Complainant and its predecessors have continually and exclusively used the 7-ELEVEN trademarks in the United States since 1946.
In addition, the Complainant owns countless trademark registrations for the term “7-Eleven”, including Iran. Among others:
- 7-ELEVEN Iran trademark Registration No. 195431, registered on October 10, 2012; and
- 7-ELEVEN (& Design) Iran Trademark registration No. 105283, registered on July 6, 2003.
The Disputed Domain Name was registered on March 25, 2010. The Disputed Domain Name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant contentions can be summarized as follows:
Identical or confusingly similar
The Complainant states that consumers will be confused as to the origin of the Disputed Domain Name, since it includes the Complainant’s well known trademark 7-ELEVEN.
The Disputed Domain Name solely incorporates the distinctive part of the Complainant’s trademark.
Rights or legitimate interests
The Complainant contends that the Respondent is not commonly known by the Disputed Domain Name nor its using it in connection with a bona fide offering of goods or services.
In addition, the Complainant has not authorized to use the 7-ELEVEN trademark in any way.
Finally, the Complainant states that consumers are likely to be confused that it is somehow associated with the Complainant or sponsored by them.
Registration or use in bad faith
The Complainant alleges that the Respondent registered the Disputed Domain in bad faith.
The Respondent used the Complainant’s trademark in the Disputed Domain Name in order to attract Internet users for commercial gain.
The Complainant further submits that the Respondent failed to respond to a warning sent by the Complainant, requesting the transfer of the Disputed Domain Name. B. Respondent
The Respondent claimed to be the CEO of Nano Money Net Computer Services Company at <24seven.ir> and this company has been active for about 10 years. The field of activities are “planning, investment, consulting, design and commissioning, and extensively computer services and related activities”.
The Respondent replied the Complaint and stated that he had not commercially abused the Disputed Domain Name, as he was only the guardian and trustee of the Disputed Domain Name. In addition, the Respondent contended that his aim was to cooperate and to get representation of the Complainant’s company. He further indicated that he would be interested in cooperating with the Complainant and to transfer the Disputed Domain Name to the Complainant.
Moreover, in the replay of the Complainant’s email, the Respondent alleged that he was ready to transfer the Disputed Domain Name to the Complainant but he indicated that “it cost him” USD 14,800 in terms of maintenance, protection and serving costs during 10 years. He further indicated that “he knew that this domain name belongs to the Complainant’s company and he kept it for the Complainant”. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name in this case:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark 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 or is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has trademark rights for 7-ELEVEN, as evidenced by the trademark registrations listed in the Complaint.
Based on the evidence submitted, the Panel finds that the Disputed Domain Name <7eleven.ir> is confusingly similar to the Complainant’s trademark 7-ELEVEN. The Disputed Domain Name wholly incorporates the Complainant’s trademark.
Furthermore, the Disputed Domain Name contains the Complainant’s 7-ELEVEN in its entirety; the addition of the country code Top-Level Domain (“ccTLD”) “.ir” does not change this finding, since the ccTLD is generally disregarded in such an assessment of confusingly similarity.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use its trademark in the Disputed Domain Name.
The name of the Respondent, Seyed Amir Shahab Soleimani, bears no similarity to the 7-ELEVEN mark or the Disputed Domain Name. Indeed, nothing in the Respondent’s WhoIs information, or website, or the record demonstrates that the Respondent is commonly known by the Disputed Domain Name.
In addition, this clearly demonstrates that the Respondent has no legitimate interests in the Disputed Domain Name.
As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered or Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered or used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered on March 25, 2010, while the Complainant’s Iranian trademark 7-ELEVEN (& Design) with the Registration No. 105283 was registered on July 6, 2003. This shows that the Respondent was well aware of the Complainant’s trademark at the time of registering the Disputed Domain Name and he proceeded with the registration of the Disputed Domain Name.
In addition, the Complainant’s 7-ELEVEN trademark is well known as it has been recognized by previous decisions under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) (see 7-Eleven, Inc. v. Profit Map,WIPO Case No. DCO2015-0023 and 7-Eleven, Inc. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Manishankar, 7Eleven Arthashastra Technology Pvt Ltd,WIPO Case No. D2020-0805). Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.
The Respondent’s subsequent behavior, in suggesting that the out-of-pocket expenses involved in holding the Disputed Domain Name for the amount of USD 14,800, further suggests that the Respondent registered the Disputed Domain Name in bad faith.
Accordingly, the Panel finds that the Respondent has registered or acquired the Disputed Domain Name in bad faith.
While it is not necessary to establish the bad faith use in this case under the .irDRP Policy, the Panel notes that while the Disputed Domain Name does not resolve to an active webpage, this would not prevent a finding of bad faith use under the doctrine of passive holding.
Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that there is bad faith in the use and registration of the Disputed Domain Name.
The third element of paragraph 4(a) of the Policy is, therefore, satisfied. 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 <7eleven.ir> be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Date: September 22, 2020
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