WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Darden Concepts, Inc. v. Privacy Service Provided by Withheld for Privacy ehf / John Kenny

Case No. D2021-4384

1. The Parties

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

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / John Kenny, United States.

2. The Domain Name and Registrar

The disputed domain name <darden-inc.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2021. On December 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 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 the Complainant on January 4, 2022, 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 amendment to the Complaint on January 4, 2022.

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 the Respondent of the Complaint, and the proceedings commenced on January 7, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2022.

The Center appointed Gregory N. Albright as the sole panelist in this matter on February 10, 2022. 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, directly or via its parent company Darden Corporation, is the owner of 13 trademark registrations in the United States and Malaysia that consist of or contain the term “Darden” for use in connection with restaurant services (the “DARDEN Trademarks”).

The Complainant’s registrations for the DARDEN Trademarks include the following registrations in the

United States for restaurant services in International Class 043:

The disputed domain name was created on November 9, 2021.

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of registrations issued by the United States Patent and Trademark Office for the DARDEN Trademarks shown above. The Complainant is also a wholly owned subsidiary of Darden Corporation, which owns certain DARDEN Trademarks in Malaysia. Darden Corporation is a wholly owned subsidiary of Darden Restaurants, Inc., a publicly-traded holding company. The “Complainant” as used herein refers to Darden Concepts, Inc. and its affiliated companies.

The Complainant owns and operates more than 1,800 restaurants, including some of the most recognizable and successful brands in full-service dining: Seasons 52, Olive Garden, LongHorn Steakhouse, Cheddar’s Scratch Kitchen, Yard House, The Capital Grille, Bahama Breeze, and Eddie V’s. The Complainant is one of the 50 largest private employers in the United States, employing nearly 160,000 team members. The Complainant serves more than 320 million guests annually in hundreds of communities across North America.

The Complainant (through Darden Restaurants, Inc.) has registered many domain names, including <darden.com.> (created on March 11, 1997), which the Complainant uses in connection with its company website for its restaurant brands.

The Respondent is using the disputed domain name in connection with a “spear-phishing” email scam, impersonating the Complainant in an apparent attempt to engage in fraudulent business transactions. Annexed to the Complaint is an example, in which the author of the email is purportedly “Procurements <[…]@darden-inc.com>. The email is addressed to “Sales” at the email address of a potential supplier. The email is ostensibly from the Complainant’s Director of Procurement and, at the bottom, includes the Complainant’s design and word mark, which is the subject of United States Registration No. 3,766,865. The Complainant asserts that this email is an instance of “spear-phishing” that falsely identifies the sender as an employee of the Complainant.

The disputed domain name is identical or confusingly similar to the DARDEN Trademarks. The disputed domain name contains the word component of the Complainant’s DARDEN Trademarks (i.e., “Darden”) in its entirety. The Top-Level Domain (i.e., “.com”) may be disregarded. The addition of the suffix “inc” in the disputed domain name does not avoid a finding of confusingly similarity, and instead shows the Respondent was aware of the Complainant’s mark and its website when registering the disputed domain name. The hyphen in the disputed name does not avoid a finding of confusing similarity either.

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the DARDEN Trademarks in any manner. Using the disputed domain name as part of a phishing scam to impersonate the Complainant is not a use in connection with a bona fide offering of goods or services, and cannot confer upon the Respondent rights or legitimate interests with respect to the disputed domain name. To the Complainant’s knowledge, the Respondent has never been commonly known by the disputed domain name, and has never acquired any trademark or service rights in the disputed domain name.

The Respondent registered the disputed domain name in bad faith. The Complainant established trademark rights in the DARDEN Trademarks long before the Respondent registered the disputed domain name, and it is therefore likely that the Respondent knew of the Complainant’s mark at the time of registering the disputed domain name, and sought to obtain commercial benefit by attracting Internet users based on confusion. The Respondent is also using the disputed domain name in bad faith as part of a phishing scam to impersonate the Complainant. The Respondent’s bad faith is also shown by use of the Complainant’s word and design mark in the body of the phishing email annexed to the Complaint, which falsely suggests that the email originated with the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that: (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.

Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the disputed domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.

A. Identical or Confusingly Similar

Under Paragraph 4(a) of the Policy, a complainant must prove that (1) the complainant has rights in a trademark or service mark; and (2) the disputed domain name is identical or confusingly similar to the complainant’s mark.

The first element is a question of standing. SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 (“It is well accepted that the first element functions primarily as a standing requirement.”). The Complainant’s website at “www.darden.com/our-company” states that it was founded by Bill Darden. A personal name registered as a trademark provides standing for a complainant to file a UDRP case. SeeWIPO Overview 1.5.1. Here, the Complainant holds service mark registrations for the DARDEN Trademarks in the United States and Malaysia, including Reg. No. 2,217,020 for the mark DARDEN RESTAURANTS, issued by the United States Patent and Trademark Office on January 12, 1999.

The Panel also finds that the disputed domain name is identical or confusingly similar to the DARDEN Trademarks. The disputed domain name incorporates “Darden” in its entirety. SeeWIPO Overview 3.0, section 1.7 (“While each case is judged on its merits, in cases where a domain name incorporates the entirety of a trademark, … the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”). The addition of “inc” to the disputed domain name does not avoid a finding of confusing similarity for purposes of the Policy. See Bausch & Lomb Inc. v. Domain Protection Services, Inc. / Darnell Mckissack, WIPO Case No. D2021-3087. And punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity.” See Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656.

The first element of paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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.” WIPO Overview 3.0, section 2.1.

Here, the Complainant asserts that it has not granted the Respondent any license or other authority to use the DARDEN Trademarks. The Complainant has also made out a prima facie case that the Respondent does not have any other rights or legitimate interests in respect of the disputed domain name. Specifically, the Complainant has submitted evidence that the Respondent is using the disputed domain name to impersonate the Complainant in connection with spear-phishing. SeeWIPO 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., … phishing,… impersonation / passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”).

In addition, the Respondent has not responded to the Complaint to assert any rights or legitimate interests in respect to the disputed domain name. There is no evidence that “Darden” is the Respondent’s personal name, or that the Respondent is known by, or has acquired any trademark rights in the terms “darden” or “darden-inc.”

The second element of paragraph 4(a) of the Policy is satisfied.

C. Registered and Used in Bad Faith

The Panel finds sufficient evidence that the Respondent registered the disputed domain name in bad faith. It may be inferred that the Respondent registered the disputed domain name with knowledge of the Complainant and its DARDEN Trademarks, because (i) the Complainant has used the DARDEN Trademarks in commerce for more than 22 years, (ii) the Complainant’s own domain name –<darden.com> – was registered in 1997, and (iii) the disputed domain name was registered on November 9, 2021. In addition, including “inc” in the disputed domain name appears calculated to create a false impression of approval by, or affiliation with, the corporate owners of the DARDEN Trademark registrations.

The Complainant has also shown that Respondent has used the disputed domain name as part of a spear-phishing email scam, impersonating an employee of the Complainant, in which the Respondent incorporated the Complainant’s composite word and design mark without authority. This is quintessential bad faith. SeeWIPO Overview 3.0, section 3.1.4 (“use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing … is manifestly considered evidence of bad faith”).

The third element of paragraph 4(a) of the Policy is 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 <darden-inc.com> be transferred to the Complainant.

Gregory N. Albright
Sole Panelist
Date: February 24, 2022