7-Eleven International LLC (7IN) v Wu Yu

WIPO Case No. D2023-1985

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

7-Eleven International LLC (7IN) v. Wu Yu

Case No. D2023-1985

1. The Parties

The Complainant is 7-Eleven International LLC (7IN), United States of America (“United States”), represented by Archer & Angel, India.

The Respondent is Wu Yu, China.

2. The Domain Name and Registrar

The disputed domain name <7eleven.coupons> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2023. On May 4, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2023, 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 (Redacted for Privacy), and contact information in the Complaint. The Center sent an email communication to the Complainant on May 10, 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 May 11, 2023.

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 May 17, 2023. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2023.

The Center appointed Alistair Payne as the sole panelist in this matter on June 26, 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.

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4. Factual Background

The Complainant together with its parent / affiliated companies i.e., Seven-Eleven Japan Co., Ltd. and 7- Eleven, Inc., operate, franchise, and license convenience stores under the brand name ‘7-ELEVEN’ with over 79,000 stores around the world. Originally founded in 1927, the Complainant has operated using the

7- ELEVEN name and mark since 1946 and owns numerous trade mark registrations worldwide for its
7-ELEVEN mark including United States trade mark registration No. 896654 for 7-ELEVEN registered in
relation to the international class 35, on August 11,1970. The Complainant owns numerous domain names
that incorporate its 7-ELEVEN mark including <7elevencoupons.com> and <7-eleven.com> from which it
operates its main international website.

The disputed domain name was registered on December 3, 2022, and resolves to a “pay-per-click” (“PPC”) website that hosts links for “Business Card”, “Franchising”, and “Business Franchise Opportunities” and is advertised as being for sale on the Sedo platform. It formerly resolved to a PPC website with links to various commercial operations including retail stores and was also advertised as being for sale from that website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights, as set out above, for its 7-ELEVEN mark and that this trade mark with the exception of the hyphen is wholly incorporated into the disputed domain name. As a consequence, it says that the disputed domain name is identical or confusingly similar to its registered trade mark right for 7-ELEVEN.

The Complainant says that it is clear that the Respondent is neither actively using the disputed domain name
in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair
use of the disputed domain name, as is evident from the fact that it resolves to a PPC parking page and is
also being offered for sale as a premium domain, presumably says the Respondent, at prices that are likely
to far exceed the Respondent’s reasonable out-of-pocket expenses in connection with the original acquisition
of the disputed domain name. The Complainant also submits that it has not assigned, granted, licensed,
sold, transferred or in any way authorised the Respondent to register or make use of its distinctive and
protected 7- ELEVEN trade mark and that there are no circumstances in which the Respondent can claim to
be making a legitimate noncommercial or fair use of the disputed domain name.

The Complainant asserts that its 7-ELEVEN mark has been used and registered long before the registration of the disputed domain name. It says that its 7-ELEVEN mark is extremely well-known internationally and that the Respondent has purposefully registered it in order to create confusion in the minds of Internet users with the Complainant’s business and trade marks. It says that the Respondent is using the website to which the disputed domain name resolves as a PPC webpage advertising services that compete with the Complainant’s core business related to retail and convenience stores and that the disputed domain name, which is also a premium domain name, is being held by the Respondent only with an intent to re-sell it at an exorbitant price.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered trade mark rights in the 7-ELEVEN mark and in

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particular United States trade mark registration No. 896654 for 7-ELEVEN registered on August 11,1970.
The disputed domain name wholly incorporates this mark without any other element before the generic
Top-Level Domain (“gTLD”) and is therefore identical to the Complainant’s registered trade mark.

Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s registered trade mark for 7-ELEVEN and that the Complaint succeeds under the Policy.

B. Rights or Legitimate Interests

The 7-ELEVEN trade mark is extremely well reputed internationally. The Complainant has submitted that it is clear that the Respondent is neither actively using the disputed domain name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the disputed domain name, as is evident from the fact that it resolves to a PPC parking page and is also being offered for sale as a premium domain name, likely at a substantial uplift to its registration costs. The Complainant has also submitted that it has not assigned, granted, licensed, sold, transferred, or in any way authorised, the Respondent to register or make use of its distinctive and protected 7- ELEVEN trade mark and that there are no circumstances in which the Respondent can claim to be making a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to rebut the Complainant’s case or to explain its and for these reasons and for those set out under Section 6C C below the Panel finds that the Complaint also succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered in 2022, many decades after the Complainant registered and first used its 7- ELEVEN trade mark. The Complainant’s mark is distinctive and very well reputed internationally having, as it notes, over 79,000 owned or franchised stores worldwide and a substantial online presence.

For these reasons and for the reasons set out below, the Panel finds it most likely that the Respondent was well aware of the Complainant’s mark and business when it registered the disputed domain name.

Under paragraph 4(b)(iv) of the Policy there is evidence of registration and use of the disputed domain name in bad faith where a Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website.

The disputed domain name initially resolved to a PPC parking page with links to various commercial
operations including retail stores and resolves to a PPC page that hosts links for “Business Card”,
“Franchising”, and “Business Franchise Opportunities”. Both pages have advertised the disputed domain
name as being available for sale and featured a link to the appropriate website page which is currently the
Sedo platform.

The Panel finds that the Respondent’s use of the disputed domain name incorporating the Complainant’s distinctive and extremely well reputed 7-ELEVEN mark in the .coupons gTLD space is intended to attract and confuse internet users searching for the Complainant’s websites or for offers relating to the

Complainant’s business and to redirect them to the links at the relevant PPC pages (which have included some links to competing retail businesses) from which the Respondent most probably derives commercial revenue.

The fact that each of the PPC pages also contains links to a page offering the disputed domain for sale and
that it has been promoted by the broker concerned as a “premium” domain name, reinforces the Panel’s
view that the Respondent registered the disputed domain name and is using it for its own commercial benefit
and advantage. Although there is no evidence of the sale price, the Panel infers that the cost of a domain
name when classed as “premium” is very likely to be priced well beyond the original registration costs.

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Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith and that the Complaint also succeeds under this element of the Policy.

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.coupons> be transferred to the Complainant.

/Alistair Payne/
Alistair Payne
Sole Panelist
Date: July 10, 2023