Ray Marks Co. LLC v. Rachel Ray Techniques Pvt. Ltd.
Claim Number: FA1004001319966
PARTIES
Complainant is Ray Marks Co. LLC (“Complainant”), represented by Elizabeth
A. Jaffe, of Golenbock, Eiseman,
Assor, Bell & Peskoe, LLP,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <rachelray.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
James A. Carmody, Michael A. Albert and Dennis A. Foster (chair) as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 19, 2010.
On April 19, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <rachelray.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that the Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@rachelray.com. Also on May 4, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Respondent submitted Requests for Extension of Time to Respond to Complaint forms pursuant to the National Arbitration Forum’s Supplemental Rule 6(a)(i) on May 18, 2010 and May 28, 2010. The Forum granted the extension requests. A timely Response was received and determined to be complete on June 14, 2010.
Complainant’s Additional Submission was received on June 21, 2010 in compliance with Supplemental Rule 7. On June 24, 2010, Respondent sent to the Forum an Additional Submission, which was also in compliance with Supplemental Rule 7. The Panel has considered both Additional Submissions in rendering the decision below.
On June 23, 2010, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed James
A. Carmody, Michael A. Albert and Dennis A. Foster (Chair) as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
- Rachael Ray is an American television host and author who has written over twenty cookbooks, the last eight of which have been included on the New York Times bestseller list. Complainant is a limited liability company formed by Ms. Ray.
- Complainant owns United States Patent and Trademark Office (“USPTO”) registrations for the marks: RACHAEL RAY 30 MINUTE MEALS (first used in 1999), EVERY DAY WITH RACHAEL RAY, and RACHAEL RAY. Complainant has been using its marks in connection with the provision of goods and services for over ten years.
- The disputed domain name, <rachelray.com>, is virtually identical to Complainant’s registered mark, RACHAEL RAY. The slight variation in spelling causes no change phonetically, and thus the name is at least confusingly similar to the mark.
- The disputed domain name was registered and is being used in bad faith. The initial website found at the name offered products such as “Rachel Ray Acai Pure" and "Rachel Ray Colon Cleanse", while falsely advising Internet users that those offerings are endorsed or sponsored by Ms. Ray. Respondent is attempting to misappropriate the goodwill associated with Ms. Ray for Respondent’s benefit.
- Complainant sent Respondent a cease and desist letter on February 24, 2009, to which Respondent failed to respond. As of now, the disputed domain name is used to redirect customers to a website that offers “Rachael Ray” cookware and even includes an unauthorized picture of Ms. Ray. Respondent’s website redirection attempts ultimately to obtain personal contact information about Internet users undoubtedly looking for the Complainant’s website, which can be sold by Respondent to other businesses or marketing companies.
- Respondent has no rights or legitimate interests in the disputed domain name. The name is not used in a bona fide offering of goods or services.
- Respondent uses the disputed domain name for the purpose of attracting consumers to its websites for commercial gain by creating a likelihood of confusion with Complainant’s marks as to source, sponsorship, affiliation or endorsement of Respondent’s websites.
B. Respondent
- Respondent, Rachel Ray Techniques
Private Limited, is a company incorporated in
- Respondent was unaware of any trademarks owned by Complainant, and the products offered by Respondent would fall in a different class than that covered by Complainant’s registrations in any case. Moreover, Respondent is not familiar with any books authored by Ms. Rachael Ray.
- The disputed domain name is not
virtually identical to Complainant’s trademark, but is identical to
Respondent’s company name. Furthermore,
Respondent is not attempting to trade on goodwill created by Complainant, as
Respondent offers completely different products in a completely different
geographical area (
- The Complaint misstates the date of the cease and desist letter. It was sent on February 24, 2010, not February 24, 2009. This is an attempt by Complainant to mislead the Panel by creating the impression that the letter was sent prior to Respondent’s incorporation on July 23, 2009.
- Respondent is commonly known by the name “Rachel Ray Techniques” which corresponds directly to the disputed domain name, <rachelray.com>. There is plenty of evidence that Respondent uses this name in the course of its business, including in its articles of association and incorporation, in listings in various Indian telephone directories, in advertisements in various Mumbai newspapers, in its business invoices and bank checks and in Indian governmental documents. One of the latter notes the date of April 10, 2007.
- Before any notice of this dispute, Respondent was operating the disputed domain name in connection with a bona fide offering of goods and services.
- Respondent did not register and is not using the disputed domain name in bad faith. None of the criteria listed in paragraph 4(b) of the Policy apply to Respondent’s conduct with respect to the disputed domain name.
- Complainant was aware of Respondent’s legitimacy as early as April 2010, as evidenced by a notice sent by Complainant to Respondent then, and is guilty of reverse domain name hijacking in this case.
C. Complainant’s Additional Submission
- Respondent has not explained why it uses the name “Rachel Ray” for its business. No one associated with Respondent’s business possesses a similar name. Respondent’s first purported use of its business name occurred some eight years after Complainant began using its trademark, RACHAEL RAY, in commerce. Thus, Respondent has no legitimate interest in the disputed domain name.
- It is no coincidence that Respondent selected “Rachel Ray” as its business name. Respondent cannot steal a name and a mark and then claim it has a legitimate interest in a similar domain name.
- The date of the cease and desist letter as recited in the Complaint, February 24, 2009, was an inadvertent error and not an attempt to mislead the Panel, as evidenced by attachment to the Complaint of the letter with its correct date, February 24, 2010.
D. Respondent’s Additional Submission
- Respondent selected the name “Rachel Ray” for its business because the daughter of the technical partner of the original firm was named “Rachel”. The initial name for the company was going to be “Rachel Lazer Techniques”, but, for reasons related to the practice of numerology, there was a decision to switch to “Rachel Ray Techniques”.
- Complainant must prove both that the disputed domain name was registered and is being used in bad faith. Respondent registered the name because it corresponds to Respondent’s business name. The name was first used for email purposes. While furnishing email for the Respondent, the service provider also used the name for a parked website without Respondent’s direction or knowledge, as the Respondent’s owners are not technical people. When brought to its attention, Respondent had this problem corrected so that the name hosts the same website as found at Respondent’s other domain name, <rachelray.in>.
FINDINGS
Complainant was
formed by Ms. Rachael Ray, a television host and author of many cookbooks, who
has gained fame and celebrity in the
Respondent is the
owner of the disputed domain name, <rachelray.com>,
and the date of creation is September 20, 2001.
The Respondent acquired the name some time later. Respondent is a
corporation organized under the laws of
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has submitted to the Panel appropriate evidence (Exhibit 2) of Complainant’s registration with the USPTO for the mark RACHAEL RAY. Therefore, the Panel concludes that Complainant has sufficient rights in that mark for purposes of Policy paragraph 4(a)(i). See Anheuser - Busch, Incorporated v. James Sanson, FA 1319447 (Nat. Arb. Forum May 25, 2010) (“The Panel finds that a federal trademark registration with the USPTO establishes Complainant’s rights in the BUDWEISER mark pursuant to Policy ¶ 4(a)(i).”); see also The Nasdaq OMX Group, Inc. v. Domains by Proxy, Inc./Anglo-Scandinavian Management, D2008-1874 (WIPO Feb. 6, 2009).
Upon examining Complainant’s trademark, RACHAEL RAY, and the disputed domain name, <rachelray.com>, the Panel perceives only nominal differences: the deletions of an “a” in the first name and the space between the two names, and the addition of the gTLD “.com”. The Panel notes that the pronunciation of “Rachael” and “Rachel” are exactly the same. As a result, the Panel finds no difficulty in concluding that the disputed domain name is confusingly similar to Complainant’s trademark. See Myspace, Inc. v. Junghu Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (where the panel found the disputed domain name, <myspce.com>, to be confusingly similar to the mark, MYSPACE, and opined that “[a] slight difference in spelling between the Mark and the Disputed Domain Name does not reduce the confusing similarity.”); see also Billy Connolly v. Anthony Stewart, D2000-1549 (WIPO Feb. 5, 2001) (finding <billyconnelly.com> confusingly similar to BILLY CONNOLLY, and stating “…the names are phonetically equivalent and a likelihood of confusion must exist.”); see also Bond & Co. Jewelers, Inc. v. Texas International Property Associates, FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (“ The elimination of the…space between the two words of Complainant’s mark, as well as the addition of a gTLD, insufficiently establish distinctiveness from the mark pursuant to Policy ¶ 4(a)(i).”).
In accordance with the foregoing, the Panel finds that Complainant has established that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
Before shifting the burden to the Respondent to provide convincing evidence that it has rights or legitimate interests in the disputed domain name, Complainant must make at least a prima facie case that the Respondent fails to possess such rights or interests. See
Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Jordan Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). In this case, the Panel determines that Complainant has made such a prima facie case in presenting concrete evidence of its trademark rights in a mark that is confusingly similar to the disputed domain name and by asserting its lack of endorsement or sponsorship of the website that is found at that name.
In countering Complainant’s prima facie case, Respondent relies on the application of Policy subparagraphs 4(c)(i) and (ii). Respondent invokes paragraph 4(c)(i) – i.e., that before any notice of the dispute, it was using, or had demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services – relative to Respondent’s purported business efforts in India. Respondent claims to have formed a company in April 2007, which was incorporated in 2009, to market laser-based equipment and other items. Respondent has supplied the Panel with scads of evidence (Annexes A through W), citing its business name on advertisements, telephone listings, invoices and Indian governmental documents, to support its contention.
On the other hand, Complainant has presented very compelling evidence (Exhibits 6, 7, 8 and 9) that Respondent has used the disputed domain name instead to host websites that offer products bearing Complainant’s own trademark. In its Additional Submission, Respondent does not dispute such use, but dismisses it as a temporary error, due to action by a third party website service provider and the ignorance of Respondent’s owners, who Respondent claims are not technical people.
The Panel is presented therefore with competing claims on this issue. UDRP proceedings provide for only limited evidentiary presentations, and it is difficult for the Panel to make fine assessments as to veracity. One tool it can employ in this regard is to examine each party’s contentions for consistency. On this issue, the Panel finds no inconsistency in Complainant’s assertions, whereas there is marked inconsistency with respect to those made by Respondent. Respondent’s declaration about “not being technical people” is contradicted by Respondent earlier Additional Submission reference to its “technical partner”. Moreover, that contradiction is heightened by Respondent’s claim to run a business that offers products “using the Technology involving Laser Rays”, which suggests that Respondent’s people must possess fairly sophisticated technical expertise.
Finally, the Panel discerns an obvious omission in Respondent’s business presentation: there is no reference to sales volume or revenue in connection with its products. The Respondent presents to the Panel only a paper façade of activity. Meanwhile, Complainant has furnished the panel with hard evidence of Respondent’s attempt, through the website found at the disputed domain name, to trade in Complainant’s wares (and to use Complainant’s owner’s likeness in doing so) without authorization.
After assessing this competing evidence, the Panel is inclined to believe Complainant and to conclude that Respondent is not engaged in, or demonstrably prepared to engage in, a “bona fide offering of goods or services” as required under paragraph 4(c)(i). See Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. Wu Wenbing, FA 1294944 (December 31, 2009) (“The [disputed] domain name resolves to a website that promotes a…product by using Complainant’s logo and imitates Complainant’s trade dress…The Panel finds this competing use is not a bona fide offering of goods or services under Policy ¶4(c)(i)…”); see also Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Telephone Island, D2004-0711 (WIPO Nov. 15, 2004) (“Rights or legitimate interests are not established when reselling or promoting genuine goods by reference to the mark, but without the authorization of the mark’s owner.”); see also Abbott Laboratories v. United Worldwide Express Co., Ltd., D2004-0088 (WIPO Apr. 7, 2004) (“The Panel finds that Respondent's registration and use of the Domain Name without Complainant's permission for a website selling…Complainant's products…does not constitute a bona fide offering of goods pursuant to paragraph 4(c)(i) of the Policy.”).
Alternatively, per subparagraph 4(c)(ii), Respondent, “Rachel Ray Techniques Pvt. Ltd.”, claims that it, as a business, “has been commonly known by the [disputed] domain name.” Certainly, the Panel can see that Respondent’s corporate name bears a substantial resemblance to the disputed domain name, <rachelray.com>. Respondent has even supplied the Panel with a rationale – based on a somewhat convoluted amalgam utilizing a founder’s daughter’s name and numerology – as to why Respondent chose the name “Rachel Ray”.
However, it has not escaped the Panel’s notice that the date of Respondent’s origination, April 10, 2007, followed hard upon the date, March 27, 2007, of the USPTO registration of Complainant’s most basic trademark, RACHAEL RAY. Is this coincidence or design? Though Respondent is an Indian entity, the miracle of the Internet makes knowledge of such information as USPTO registrations almost instantaneous around the globe, and the Panel must keep in mind that the initiation of the Policy is predicated on the cunning and sophistication of global cyber-squatters.
As discussed above, Respondent has provided the Panel with scant evidence of actually conducting business. Consequently, the Panel cannot conclude that Respondent is commonly known by that name, as is necessary for application of subparagraph 4(c)(ii). The Panel believes that that subparagraph requires more than evidence suggesting a hastily formed “paper” company which adopts a name that is nearly indistinguishable from an established trademark and, soon after formation, acquires a corresponding domain name.
Many UDRP panels have found that, for subparagraph 4(c)(ii) to apply in a case, a respondent must be commonly known by a disputed domain name prior to that name’s registration. See, for example, Michael Smith Custom Clothiers, Inc. d/b/a The Custom Shop d/b/a Myshirtmaker.com v. Custom Shirt Shop c/o Jim Nice, FA 1109402 (Nat. Arb. Forum Jan. 4, 2008) (“…in order to have rights or legitimate interests under the “commonly known” provision of the Policy a respondent must be commonly known by the domain name prior to registration of the domain name in issue.”); see also Paule Ka v. Paula Korenek, D2003-0453 (WIPO July 24, 2003); see also RMO, Inc. v. Andy Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001). In this case, the Panel concludes that the Respondent has provided insufficient evidence that it was commonly known by the disputed domain name prior to acquiring said name.
Thus, the Panel determines that Respondent has failed to furnish sufficient evidence to rebut Complainant’s prima facie case.
As reasoned above, the Panel finds that Complainant has proven that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel has previously accepted Complainant’s contention that Respondent has used the disputed domain name to refer to Complainant’s own goods without authorization to do so. The Panel also accepts Complainant’s contention that, even if the goods are intended to be given away free to Internet users as part of a contest drawing, such reference involves commercial gain to Respondent through the collection of marketable Internet user personal information. The Panel concludes that those Internet users are brought to Respondent’s website largely because of the likelihood of user confusion between the disputed domain name and Complainant’s trademark, giving rise to the erroneous user belief that Complainant sponsors or endorses that website. As a result of these considerations, the Panel believes that Respondent’s actions constitute bad faith registration and use of the disputed domain name pursuant to Policy paragraph 4(b)(iv). See Alcon, Inc., and Alcon Laboratories, Inc. v. ARanked c/o Duck Dawson, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (finding that the disputed domain names, <maxitrol.org>, <naphcon-a.com>, <tobradex.net>, and <vigamox.net>, were all registered and used in bad faith because the respondent was profiting from Internet user confusion as to the sponsorship of its website, resulting in part from the respondent’s use of pictures of the complainant’s products on that site); see also World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).
Per the foregoing, the Panel rules that Complainant has established that the disputed domain name was registered and is being used in bad faith.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rachelray.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Panelist Michael A. Albert, Panelist
Dennis A. Foster,
Chair
Dated: July 7, 2010
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