WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Darden Concepts, Inc. v. Virginia Mcewing
Case No. D2021-4385
1. The Parties
Complainant is Darden Concepts, Inc., United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondent is Virginia Mcewing, United States.
2. The Domain Name and Registrar
The disputed domain name <dardenrestuarantinc.com> (the “Domain Name”) is registered with eNom, LLC (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 Domain Name. On December 28, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 29, 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 December 29, 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 January 6, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 28, 2022.
The Center appointed R. Eric Gaum as the sole panelist in this matter on February 7, 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
Complainant is the owner of the following trademarks registered with the United States Patent and Trademark Office: DARDEN RESTAURANTS, Registration No. 2,217,020, registered on January 12, 1999; DARDEN RESTAURANTS, Registration No. 2,240,043, registered on April 20, 1999; and DARDEN (and design), Registration No. 3,766,865, registered on March 30, 2010. These registered marks are in use by Complainant and the first registration is registered for “promoting the sale of gift certificates for use with incentive award programs” and the second and third registrations are registered for “restaurant services”.
On November 16, 2021, Respondent registered the Domain Name <dardenrestuarantinc.com>. The Domain Name does not resolve to an active website, however, Complainant has provided evidence that the Domain Name has been used in connection to a fraudulent email scheme impersonating the Complainant.
5. Parties’ Contentions
Complainant Darden Concepts, Inc., is the owner of the DARDEN trademark in the United States and a wholly owned subsidiary of Darden Corporation (owner of the DARDEN trademark in Malaysia), which is responsible for restaurant administration and business management and is a wholly owned significant subsidiary of Darden Restaurants, Inc., a holding company. 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. Complainant (via Darden Restaurants, Inc.) is the registrant of many domain names, including <darden.com>, which was created on March 11, 1997, and which Complainant uses in connection with its company website for its restaurant brands.
Respondent is using the Domain Name in connection with a spear-phishing email scam impersonating Complainant in an apparent attempt to engage in fraudulent business transactions.
The Domain Name is confusingly similar to the DARDEN trademark. The relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “dardenrestaurantinc”), as it is well-established that the Top-Level Domain (“TLD”) (i.e., “.com”) may be disregarded for this purpose. The Domain Name contains the DARDEN trademark in its entirety. Further, where, as here, a disputed domain name contains a complainant’s trademark plus “inc” (an abbreviation of the word “incorporated” – which appears in Complainant’s corporate name), “the addition of the suffix ‘inc’ in the Domain Name does not avoid a finding of confusingly similarity for the purposes of the Policy” and instead “shows that Respondent was clearly aware of Complainant’s Mark and its website when registering the Domain Name”. The fact that the Domain Name omits the letter “s” in the word “restaurant,” rendering it singular instead of plural, is irrelevant for purposes of confusing similarity under the Policy. Finally, of course, the fact that the Domain Name does not contain a space between the words “darden” and “restaurant” (as in the relevant DARDEN RESTAURANTS trademark) is irrelevant.
Respondent has no rights or legitimate interests in the Domain Name. Complainant has never assigned, granted, licensed, sold, transferred, or in any way authorized Respondent to register or use the DARDEN trademark in any manner. By using the Domain Name in connection with a phishing scam to impersonate Complainant, Respondent clearly has not used the Domain Name “in connection with a bona fide offering of goods or services”. To Complainant’s knowledge, Respondent has never been commonly known by the Domain Name and has never acquired any trademark or service mark rights in the Domain Name.
The Domain Name should be considered as having been registered and used in bad faith by Respondent. By using the Domain Name as part of a phishing scam to impersonate Complainant, Respondent has acted in bad faith by “register[ing] the domain name primarily for the purpose of disrupting the business of a competitor”) and by “intentionally attempt[ing] to attract, for commercial gain, Internet users [...] by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] product or service [...]”.
As shown in an email from Respondent using an email address associated with the Domain Name (annexed to the Complaint), Respondent has included Complainant’s logo (protected by United States Reg. No. 3,766,865) in the body of the email to enhance its fraudulent impersonation of Complainant. By “displaying a logo similar to the Complainant’s trade mark, giving appearance of false association with the Complainant,” Respondent has acted in bad faith.
Further, given Complainant’s established rights in the DARDEN trademark and the fact that the Domain Name is “so obviously connected with” Complainant given Complainant’s registration of the DARDEN trademark for more than 22 years, Respondent’s actions suggest “opportunistic bad faith” in violation of the Policy.
A further indication of bad faith is that all of Complainant’s registrations for the DARDEN trademark were registered before Respondent’s registration of the Domain Name, including Complainant’s oldest registration, United States No. 2,217,020, which was registered more than 22 yearsbefore Respondent’s registration of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules, establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center forwarded notification of the Complaint to Respondent via email and the written notice of the proceeding via courier in accordance with the contact details found in, inter alia, the appropriate WhoIs database and as confirmed by the Registrar. The Center also forwarded notification of default to Respondent via email.
Based on the methods employed to provide Respondent with notice of the proceeding the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent. The Panel also finds that the failure of Respondent to furnish a reply is not due to any omission by the Center.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) the respondent’s 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 domain name; and
(iii) the respondent’s domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements is present. As Respondent has failed to submit a response to the Complaint, the Panel may accept as true all of the reasonable allegations of the Complaint (see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
Based upon the registered trademarks for DARDEN RESTAURANTS and DARDEN and design, and the continuous use of the marks, Complainant clearly has rights in the marks. The Panel agrees with Complainant that the Domain Name is confusingly similar with Complainant’s marks in which Complainant has rights.
The Domain Name includes Complainant’s registered marks DARDEN RESTAURANT and the dominant portion of the registered mark DARDEN and design, with the only exceptions being that restaurant is singular instead of plural and the additional term “inc”. The Panel also notes that the word “restaurant” in the Domain Name is misspelled as “restuarant”. The Domain Name is otherwise confusingly similar to these registered marks.
The Panel finds that the Domain Name is confusingly similar to the DARDEN RESTAURANTS and related trademarks owned by Complainant pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the panel shall demonstrate the respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant has not licensed or authorized Respondent to use its trademarks in any manner and there has never been any relationship between them.
There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the Domain Name within the meaning of paragraph 4(c) of the Policy, or otherwise. Respondent has not come forward to assert any rights or legitimate interests in the Domain Name.
Furthermore, use of a domain name for illegal or fraudulent purposes, such as is the case here, can never confer rights or legitimate interests on a respondent.
The Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists several circumstances, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
(i) circumstances indicating that you [respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The Domain Name was clearly registered and used in bad faith by Respondent. By using the Domain Name as part of a phishing scam to impersonate Complainant, Respondent acted in bad faith by registering the Domain Name primarily for the purpose of disrupting Complainant’s business and/or by intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s product or service. As shown in Respondent’s email sent from an email address associated with the Domain Name, Respondent copied Complainant’s logo (protected by United States Reg. No. 3,766,865) into the body of the email to fraudulently impersonate Complainant. By displaying a logo similar to Complainant’s trademark, Respondent was trying to give the appearance of false association with Complainant. Respondent has clearly acted in bad faith.
The Panel finds that Respondent’s registration and use of the Domain Name, to impersonate Complainant and solicit payment of fraudulent invoices, establishes Respondent’s registration and use of the Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <dardenrestuarantinc.com> be transferred to Complainant.
R. Eric Gaum
Date: February 17, 2022