7-Eleven International LLC v Gross Moe

WIPO Case No. D2023-3007

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
7-Eleven International LLC v. Gross MOE

Case No. D2023-3007

1. The Parties

The Complainant is 7-Eleven International LLC, United States of America, represented by Archer & Angel,

India.

The Respondent is Gross MOE, United States of America.

2. The Domain Name and Registrar

The disputed domain name <7-elevenvip.com> is 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 13, 2023. On connection with the disputed domain name. On July 17, 2023, 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 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on August 1, 2023. In accordance with the Rules, paragraph 5,
the due date for Response was August 21, 2023. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on August 25, 2023.

The Center appointed Evan D. Brown as the sole panelist in this matter on September 18, 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.

page 2

4. Factual Background

The Complainant and its related companies operate a large convenience store chain. The Complainant has rights0F1 in the 7-ELEVEN mark, such mark being the subject of registration in many jurisdictions around the

world, including the United States of America (Reg. No. 0896654, registered on August 11, 1970).

According to the WhoIs records, the disputed domain name was registered on June 5, 2023. The Complainant asserts that the Respondent used the disputed domain name to operate a website in furtherance of a fraudulent business that used the Complainant’s marks.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (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. The Panel finds that all three of these elements have been met in this case.

A. Identical or Confusingly Similar

This first element functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on whether the disputed domain name is identical or confusingly similar to that mark.

Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. This element requires the

A registered trademark provides a clear indication that the rights in the mark shown on the trademark
certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde
Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the

7-ELEVEN mark by providing evidence of relevant registrations.

The disputed domain name incorporates the 7-ELEVEN mark in its entirety with the term “vip”, which does
not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s
7-ELEVEN mark. See WIPO Overview 3.0, section 1.8. The 7-ELEVEN mark remains recognizable for a

page 3

showing of confusing similarity under the Policy.

Accordingly, the Panel finds that the Complainant has established this first element under the Policy.

B. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant). See WIPO Overview 3.0, section 2.1; AXA SA v. Huade Wang, WIPO Case No. D2022-1289.

On this point, the Complainant asserts, among other things, that: (1) it has not assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or make use of the 7-ELEVEN mark, (2) the disputed domain name was not being used in connection with a bona fide offering of goods or services, and (3) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Instead, the Respondent has apparently used the disputed domain name to set up a website in furtherance of fraudulent activities.

The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent’s favor. Furthermore, given the evidence of use of the disputed domain name, the Panel finds that such fraudulent use can never confer rights or legitimate interests upon the Respondent. See WIPO Overview 3.0, section 2.13.

Accordingly, the Panel finds that the Complainant has established this second element under the Policy.

C. Registered and Used in Bad Faith

The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [the respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or a product or service on [the respondent’s] web site or location”.

Because the Complainant’s 7-ELEVEN mark is so well-known, it is implausible to believe that the fraudulent business. Accordingly, the Panel finds that the Complainant has successfully met this third UDRP element.

Respondent was not aware of that mark when it registered the disputed domain name. In the circumstances
of this case, such a showing is sufficient to establish bad faith registration of the disputed domain name.
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 <7-elevenvip.com> be transferred to the Complainant.

/Evan D. Brown/
Evan D. Brown
Sole Panelist
Date: October 4, 2023
1 The Complainant in this proceeding is 7-Eleven International LLC. The Complainant asserts that it is owned by 7, Eleven Inc (“SEI”)

(50%) and SEJ Asset Management & Investment Company, a Japan company, (“SAM”) (50%). SEI is wholly owned by SAM. SAM is wholly controlled by Seven-Eleven Japan Co., Ltd., a Japan company, (“SEJ”). SEJ is wholly owned by Seven & i Holdings Co., Ltd., a Japan company, (“S&IH”). Therefore 7IN, SEI, SAM, SEJ and S&IH appear to be all related entities with common ownership. Though the Complainant does not directly state that it is a licensee of rights in the 7-ELEVEN mark, the Panel is satisfied that the circumstances

of the asserted ownership structure of the various entities establish the Complainant’s rights in the mark for purposes of the Policy. The
Respondent has not challenged the Complainant’s asserted rights in the 7-ELEVEN mark.