WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Darden Concepts, Inc. v. Registration Private, Domains By Proxy, LLC / Steven Williams

Case No. D2021-2460

1. The Parties

Complainant is Darden Concepts, Inc., United States (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.

Respondent is Registration Private, Domains By Proxy, LLC, United States / steven williams, United States.

2. The Domain Name and Registrar

The disputed domain name <seasons52.restaurant> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2021. On July 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 2021, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on August 12, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 12, 2021.

The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on August 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 10, 2021.

The Center appointed Scott R. Austin as the sole panelist in this matter on September 20, 2021. 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 following facts appear from the Complaint (as amended) and its Annexes, which have not been contested by Respondent.

Complainant Darden Concepts, Inc., its corporate parent Darden Corporation, and its corporate parent Darden Restaurants, Inc., a holding company publicly traded on the New York Stock Exchange (collectively for purposes of this decision “Complainant”) own and operate among their more than 1,800 restaurants some of the most recognizable brands in full service dining, including 44 restaurants in the United States under the trademark SEASONS 52 (the “SEASONS 52 Mark”). The first restaurant using the SEASONS 52 Mark opened in 2003 in Orlando, Florida, featuring a casually sophisticated fresh grill and wine bar that offers an international collection of wines, including 52 wines available by the glass, as well as signature handcrafted cocktails.

By and through the subsidiaries and affiliated entities comprising it, Complainant owns numerous trademark registrations worldwide that consist of or contain the SEASONS 52 Mark for restaurant services in International Class 43, such as United States Registration No. 2,898,636, SEASONS 52, registered on November 2, 2004, and claiming a first use date of February 24, 2003; United Kingdom Trademark Registration No. UK00906353577, SEASONS 52, registered on July 25, 2008; and Republic of Korea Trademark Registration No. 4102840410000, SEASONS 52, registered on March 25, 2014.

Complainant is the registrant of many domain names, including <seasons52.com>, created on October 11, 2002, which Complainant uses in connection with its website for its restaurants operated under the SEASONS 52 Mark.

The disputed domain name was created on March 23, 2018 and redirects Internet users to a website featuring pornographic content, containing a large number of explicit sexual videos and images.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the present dispute based upon the Complaint (as amended), notwithstanding the failure of any person to lodge a substantive formal Response in compliance with the Rules. Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.

Where no substantive Response is filed, however, Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. To succeed, Complainant must demonstrate that all 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 Complainant has rights;

(ii) 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 will address each of these requirements in turn.

The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.

A. Identical or Confusingly Similar

Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of valid and subsisting trademark registrations for the SEASONS 52 Mark long prior to the registration of the disputed domain name. As such, Complainant has the trademark rights required under the Policy. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.

With Complainant’s rights in the SEASONS 52 Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (disregarding the Top-Level Domain (“TLD”) “.restaurant” which is functionally necessary for the disputed domain name to be registered) is identical or confusingly similar to Complainant’s SEASONS 52 Mark. See Research in Motion Limited v Thamer Ahmed Alfarshooti, WIPO Case No. D2012-1146 (.TLD irrelevant for confusing similarity determination); WIPO Overview 3.0, section 1.11 (“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”).

Similarly, prior UDRP panels have held the fact that a disputed domain name omits spaces found in the involved trademark, such as the space between the words “seasons” and “52” in the SEASONS 52 Mark, is irrelevant for purposes of the Policy because “the addition or substitution of spaces or punctuation marks is equally inconsequential in determining identity or confusing similarity”. Six Continents Hotels, Inc. v. Finlaw Agency and ResSystem.com, Inc., WIPO Case No. D2002-1159.

Respondent incorporates Complainant’s SEASONS 52 Mark in its entirety as the only second-level term for comparison in the disputed domain name, with no change in the SEASONS 52 Mark’s appearance or pronunciation. The SEASONS 52 Mark is clearly recognizable in the disputed domain name, and the term appended as the TLD that follows, is irrelevant for purposes of determining confusing similarity under the Policy. The disputed domain name, therefore, is identical to Complainant’s registered SEASONS 52 Mark. See Icebug AB v. Domain Administrator, WIPO Case No. D2013-1823.

Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Respondent has not come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c).

Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, it is clear from the record submitted that Respondent has no affiliation, association, sponsorship, or connection with Complainant. Complainant also asserts that Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the SEASONS 52 Mark in any manner, including the registration of the disputed domain name (much less the registration of a domain name to access a pornographic website). Prior UDRP panels have found the fact that a respondent is not authorized to register or use a complainant’s mark, “on its own, can be sufficient to prove the second criterion [of the Policy]”. Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272.

Complainant also asserts that to the best of its knowledge Respondent is not commonly known by the disputed domain name. Nothing in the record shows that Respondent is commonly known by the disputed domain name because the original Respondent listed in the WhoIs record submitted with the initial Complaint is “Registration Private, Domains By Proxy, LLC”. The Registrar disclosed the underlying registrant, “steven williams” of the United States, who has been added to the amended Complaint. Accordingly, Respondent does not bear any resemblance to the disputed domain name whatsoever. These facts, combined with the lack of evidence in the record to suggest otherwise, allows this Panel to find that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy paragraph 4(c)(ii). See Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel, WIPO Case No. D2004-0246 (“given the Complainant’s established use of its […] marks, it is unlikely that the Respondents are commonly known by any of these marks”).

A respondent not commonly known by the disputed domain name supports a finding of a lack of rights or legitimate interests. See World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642. Since there is no evidence here, including the WhoIs record for the disputed domain name, suggesting that Respondent is commonly known by the disputed domain name, Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of 4(c)(ii). See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049.

It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.

Most importantly, Complainant contends Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services because, as Complainant’s Annex evidence of web page printouts shows, the disputed domain name redirects Internet users to a website used to commercially advertise and distribute pornographic content employing pay-per-click (“PPC”) links. From the evidence submitted it is reasonable for the Panel to infer that the PPC links present on the website to which the disputed domain name points not only prove that Respondent’s interest in the disputed domain name is a commercial one, but that it is pointed to a pornographic website to increase the threat of reputational harm to Complainant, thereby increasing the value and urgency of Complainant to purchase the disputed domain name from Respondent. Wal-Mart Stores, Inc. v. Urfin Juice, WIPO Case No. D2004-0028 (finding no rights or legitimate interests where the disputed domain name “diverted Complainant’s customers to a website with links to inappropriate sites offering pornography […] which in turn tarnish the Complainant’s well-established image”).

Prior UDRP panels have held that while an adult-oriented website is not illegitimate per se, using a domain name that is confusingly similar to a complainant’s trademarks to attract users to a respondent’s commercial site is not a bona fide offering of services. See VKR Holding A/S v. cui jian jun, WIPO Case No. D2016-1385.

The Panel notes that evidence submitted in the Annexes to the Complaint persuasively supports this inference because it shows Respondent’s website prominently features such adult material while using Complainant’s SEASONS 52 Mark in the disputed domain name to suggest an affiliation with or sponsorship by Complainant. Based on these facts the Panel finds Respondent’s actions are clearly not legitimate and clearly are misleading and, therefore, Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy. See Six Continents Hotels Inc. v. “m on”, WIPO Case No. D2012-2525.

The Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that because Respondent has created a domain name that is identical to Complainant’s SEASONS 52 Mark, it is implausible to believe that Respondent was not aware of Complainant’s widely-known SEASONS 52 Mark when it registered its identical disputed domain name. Complainant argues persuasively and this Panel finds that Complainant’s SEASONS 52 Mark is well known, as the evidence submitted shows that the mark is protected by numerous trademark registrations worldwide, including the jurisdiction where Respondent is located, the oldest registration issued almost 17 years ago, and the SEASONS 52 Mark is in use by Complainant, a publicly traded company with annual revenue of USD 2.28 billion and one of the 50 largest private employers in the United States. Prior UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a widely-known trademark by an unaffiliated entity can by itself be evidence of registration and use in bad faith. See, WIPO Overview 3.0, section 3.1.4; see also, Pancil, LLC v. Jucco Holdings, WIPO Case No. D2006-0676.

Bad faith use is also clear from Respondent’s illegitimate conduct as discussed in detail in section 6.B. above, configuring the disputed domain name to redirect Internet users to a pornographic website, tarnishing Complainant’s reputation and SEASONS 52 Mark for Respondent’s commercial gain. See Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale, WIPO Case No. D2005-0755; see also Bakeca S.P.A., Time for Now Limited v. Constantina-Geanina Panainte, Cristian- Anton Vasile, WIPO Case No. D2015-1053.

For these reasons, the Panel finds bad faith registration and use, and Complainant has met its burden under paragraph 4(a)(iii) 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 <seasons52.restaurant> be transferred to Complainant.

Scott R. Austin
Sole Panelist
Date: October 4, 2021