WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION National Restaurant Association Educational Foundation v. C / Bernard Darcy Case No. D2010-0691 1. The Parties
The Complainant is National Restaurant Association Educational Foundation of Chicago, Illinois, United States of America, represented by Marzouk & Parry, United States of America.
The Respondents are C of Toronto, Ontario, Canada, and Bernard Darcy of Quincy, Massachusetts, United States of America. 2. The Domain Names and Registrars
The disputed Domain Name is registered with Domain-It!, Inc. dba Domain-It! and the disputed Domain Name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2010. On May 3, 2010, the Center transmitted by email to the registrars a request for registrar verification in connection with the disputed Domain Names. On May 3, 2010, the registrars transmitted by email to the Center their verification responses confirming that the Respondent Bernard Darcy is the listed registrant of the Domain Name and the beneficial owner of the registration of the Domain Name through a domain privacy service, the Respondent C, and providing the respective 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 26, 2010.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 1, 2010. 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 is an Illinois not-for-profit corporation headquartered in Chicago, Illinois. The Complainant provides training and testing programs on food service safety. Since 1990, according to the Complaint, the Complainant and its licensees have used the Complainant's SERVSAFE mark (without an “e” at the end of the first word comprising the mark) in association with its educational programs and related training manuals, brochures, books, magazines, and videos. The Complainant holds several United States trademark registrations comprised of, or incorporating, “SERVSAFE,” including the following:
MARK US REG. NO. REG. DATE
SERVSAFE
1640839
Apr. 9, 1991
SERVSAFE
2214434
Dec. 29, 1998
SERVSAFE (words and design)
3051389
Jan. 24, 2006
SERVSAFE ALCOHOL
3163214
Oct. 24, 2006
SERVSAFE ALCOHOL (words and design)
3165729
Oct. 31, 2006
SERVSAFE STARTERS
3648484
June 30, 2009
The Complainant operates a website at “,” with a redirect as well from “.”
The Domain Name was registered on September 15, 2001 in the name of Bernard Darcy of Quincy, Massachusetts.
The Domain Name was registered on January 12, 2010 using the registrar's domain privacy service. Following notice of this UDRP proceeding, the registrar identified the registrant as Bernard Darcy of Quincy, Massachusetts, showing his organization as “DCS Associates.” Accordingly, the Panel will refer to Bernard Darcy as “the Respondent” in this proceeding, with respect to both Domain Names.
Screen shots of the website associated with the Domain Name in March and April 2008, available through the Internet Archive's Wayback Machine at “,” show links to information about the Complainant's “Servsafe” classes, as well as links to food safety resources, certifications, and recipes from third parties.
In July 2008 the Complainant's representative left messages by telephone and email for the registrant of the Domain Name . This prompted an email reply from “dcsseminars” soliciting an offer for the Domain Name.
The Complainant furnished screen shots of the website associated with both of the Domain Names in April 2010, which simply advertised the Domain Name for sale, with the following text:
“This domain is currently for sale. I will be accepting offers in the preliminary stage. Offers can be sent via email to dcs@.”
Both Domain Names currently resolve to identical web pages displaying a globe graphic and a title message reading, “This site is undergoing maintenance.” 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Names are confusingly similar to its SERVSAFE marks and that the Respondent has no rights or legitimate interests in the Domain Names. The Complainant infers that the Respondent registered the Domain Names in bad faith because of their potential to mislead Internet users and argues that the Respondent has made no productive use of the Domain Names apart from attempting to sell them to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, a Complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
The Complainant indisputably holds registered SERVSAFE trademarks and service marks. Disregarding the nondistinctive top-level domain names “.com” and “.net,” the Domain Names are each identical to the intentionally misspelled SERVSAFE mark except for the addition of the letter “e.”
Overall, the Domain Names are visually and phonetically similar to the marks, and the Panel finds that they are confusingly similar for purposes of the first element of the Complaint. B. Rights or Legitimate Interests
The Complainant asserts, without contradiction, that the Complainant has not authorized the Respondent's use of the Complainant's SERVSAFE mark.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could nevertheless demonstrate rights or legitimate interests in the Domain Names, including the following:
“(i) before any notice to you 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.”
The Respondent did not submit a Response, and in earlier correspondence with the Complainant's representative, the Respondent offered no reason for selecting the Domain Names. There is no evidence that the Respondent is known by a corresponding name or uses a corresponding name in a business, which is evidently called “DCS” or “DCS Seminars.” The website associated with the Domain Names formerly advertised food safety resources and recipes from the Complainant and third parties and later simply offered the Domain Name for sale. This is apparently a commercial use, but not one in which the Respondent advertises or operates its own business.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing (as it has in this case). See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Respondent has not submitted a Response or provided any evidence or arguments in this proceeding, and the Panel therefore concludes that the Complainant has established the second element of the Complaint. C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), sets out a non-exhaustive list of circumstances evidencing bad faith in the registration and use of a domain name, including the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Respondent does not explain why it chose Domain Names nearly identical to the long-established and distinctive SERVSAFE mark. The apparently commercial website formerly associated with the earlier of the two Domain Names, , prominently featured a link to the Complainant's classes, as well as to third-party sources of food safety and food preparation resources, indicating that the Respondent was aware of the Complainant, its distinctive mark, and its industry. Moreover, by placing the link to the Complainant's classes first, the Respondent reinforced the initial misleading effect of a Domain Name confusingly similar to the Complainant's mark.
In correspondence with the Complainant, the Respondent offered no legitimate reason for registering and so using the Domain Name . Instead, it tried to sell the Domain Name to the Complainant. It subsequently registered the second Domain Name, , based on the same mark, fully aware of the Complainant's trademark claims.
The Panel finds this pattern of conduct indicative of bad faith, and the Respondent has not offered any evidence in rebuttal of this reasonable inference. Hence, the Panel finds that the third element of the Complaint has been established. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names and be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Dated: June 15, 2010
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