7-elevenpay.com

The timeline behind 7-elevenpay.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION 7-Eleven, Inc. v. Gerder li Claim Number: FA2409002115486 PARTIES Complainant is 7-Eleven, Inc. ("Complainant"), represented by David J. Steele of Tucker Ellis LLP, California. Respondent is Gerder li ("Respondent"), Singapore. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <7-elevenpay.com>, registered with GoDaddy.com, LLC. 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 September 13, 2024; Forum received payment on September 13, 2024. On September 16, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <7-elevenpay.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 23, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2024 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-elevenpay.com. Also on September 23, 2024, 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 October 16, 2024, 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 engaged in the business of offering convenience store services and products since 1927. Complainant claims rights in the 7-Eleven mark, inter alia, through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 0,896,654, registered August 11, 1970). The disputed domain name is confusingly similar to Complainant's 7-Eleven mark, as Respondent's addition of the generic term "pay" at the end of Complainant's mark and the addition of the gTLD ".com" is insufficient to avoid a finding of confusing 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 in the disputed domain name. Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Instead, Respondent uses the domain name in connection with phishing. The disputed domain name also directs to an inactive webpage showing an error message. iii) Respondent registered and uses the disputed domain name in bad faith. Respondent's failure to actively use the domain name shows bad faith. Respondent's bad faith is further evidenced by the fact that the disputed domain name has been flagged by security vendors for phishing or other malicious uses. B. Respondent Respondent did not submit a Response in this proceeding. FINDINGS 1. The disputed domain name was registered on November 5, 2023. 2. Complainant has established rights in the 7-Eleven mark, inter alia, through its registration with the USPTO (e.g., Reg. No. 0,896,654, registered August 11, 1970). 3. The disputed domain name has been flagged by security vendors for phishing or other malicious uses. 4. The disputed domain name resolves to an inactive webpage. 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. 0,896,654, registered August 11, 1970). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). As Complainant provides evidence of its trademark registration for the 7-Eleven mark, the Panel finds Complainant has rights in the 7-Eleven mark under Policy ¶ 4(a)(i). Complainant next argues that the disputed domain name <7-elevenpay.com> is confusingly similar to the 7-Eleven mark because Respondent's addition of the generic term "pay" at the end of Complainant's mark and the addition of the gTLD ".com" is insufficient to avoid a finding of confusing similarity between the subject domain name and Complainant's 7-Eleven marks. The addition of a generic and/or descriptive term and a gTLD to a complainant's mark does not sufficiently differentiate a disputed domain name from the mark under Policy ¶ 4(a)(i). See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) ("Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant's mark under Policy ¶ 4(a)(i)."); see also MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD."). The Panel thus finds that the disputed domain name is confusingly similar to the 7-Eleven mark under 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 "Gerder li" 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 further argues 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, as the disputed domain name has been used by Respondent for phishing, and the hosted website merely displays an error message. Complainant provides evidence of the disputed domain name resolving to an inactive webpage displaying an error message. The Panel finds that the use of the disputed domain name for phishing and passive holding fails to constitute a bona fide offering of goods or services, or a legitimate non-commercial or fair use. Therefore, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate non-commercial or fair use under Policy ¶ 4(c)(i) or (iii). The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Registration and Use in Bad Faith Complainant contends that Respondent's failure to actively use the domain name demonstrates bad faith. Respondent's bad faith is further evidenced by the fact that the disputed domain name has been flagged by security vendors for phishing or other malicious uses. The Panel notes that the disputed domain name resolves to an inactive webpage. Complainant provides a screenshot showing that the disputed domain name resolves to an inactive webpage. The Panel observes that the inactive use of a domain name does not necessarily prevent a finding of bad faith use under the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that when considering whether the passive holding of a domain name, following its bad faith registration, satisfies the requirements of paragraph 4(a)(iii), the panel must carefully assess all the circumstances of the respondent's behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent's passive holding amounts to acting in bad faith). The particular circumstances of this case that the Panel has considered are: i) Established in 1927, Complainant has grown from the world's first convenience store to over 84,000 stores in numerous countries around the world. Complainant and its predecessors have continuously and exclusively used the 7-Eleven mark in the United States since 1927. Complainant has annually sold billions of dollars' worth of products and services across the globe in its 7-Eleven stores under its 7-Eleven marks and has annually spent millions of dollars advertising and promoting those products and services under the 7-Eleven marks. As a result of Complainant's continuous and widespread use and promotion of the 7-Eleven marks, the 7-Eleven mark has become well-known and widely recognized by consumers throughout the world as an indicator of the source of Complainant's goods and services; ii) The disputed domain name has been flagged by security vendors for phishing or other malicious uses; and iii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name. Taking into account the above circumstances, the Panel concludes that Respondent's inactive use of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii), and that Respondent is using the disputed domain name in bad faith. 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-elevenpay.com> domain name be TRANSFERRED from Respondent to Complainant. Ho-Hyun Nahm, Esq., Panelist Dated: October 17, 2024 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.