National Arbitration Forum

DECISION

 

Ray Marks Co. LLC v. Ravi Singh c/o Whois Privacy Protection Services

Claim Number: FA1004001321441

PARTIES

 

Complainant is Ray Marks Co. LLC (“Complainant”), represented by Elizabeth A. Jaffe, of Golenbock, Eiseman, Assor, Bell & Peskoe, LLP, New York, USA.  Respondent is Ravi Singh c/o Whois Privacy Protection Services (“Respondent”), c/o whois-privacy.net, India.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

 

The domain name at issue is <rachealray.com>, registered with Answerable.com (I) Pvt. Ltd.

 

PANEL

 

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Fernando Triana, Esq. as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 26, 2010.

 

On April 27, 2010, Answerable.com (I) Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <rachealray.com> domain name is registered with Answerable.com (I) Pvt. Ltd. and that the Respondent is the current registrant of the name.  Answerable.com (I) Pvt. Ltd. has verified that Respondent is bound by the Answerable.com (I) Pvt. Ltd. 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@rachealray.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.

 

A timely Response was received on May 21, 2010.  The Forum found the Response to be deficient as it was received without being properly served on Complainant.  The Forum does not consider this Response to be in compliance with Supplemental Rule 5(a).

 

On May 27, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. as Panelist.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

This Complaint is based upon Complainant long-time use and ownership of the RACHAEL RAY, EVERY DAY WITH RACHEL RAY and RACHAEL RAY 30 MINUTE MEALS trademarks in connection with kitchen appliances and cooking and recipes magazines in the United States of America. Complainant also relies herein on the television endeavors and prominence of the celebrity Rachael Ray, as well as the extensive promotion and advertisement of her products which has also acquired common law trademark rights in the domain names in dispute, sufficient enough to invoke protection.

 

In that sense, Complainant basic contentions are as follows:

 

1.         The domain name that Respondent registered <rachealray.com>, is confusingly similar to Complainant´s marks registrations supported and provided under exhibits 2, 3 and 4 of the Complaint. The Respondent infringes upon and violates the Complainant’s rights under ICANN Policy and the Respondent should have known that Complainant owns at least 3 marks which are comprised solely or predominantly of the word mark, "Rachael Ray." Complainant stresses that the Domain Name at issue in this dispute is virtually identical to the "Rachael Ray" component of the Marks, albeit with a slight spelling variation (which has no impact on the phonetics of the Marks). As such, the Domain Name is confusingly similar.

 

2.         Respondent has no rights to or legitimate interests in the <rachealray.com>domain name. Furthermore, Complainant submits that because of the widespread renown, use, promotion, distribution and advertisement by Complainant’s of her marks and in particular, Complainant’s very famous products along the United States of America, Respondent knew or should have known of Complainant’s rights in the marks, and the valuable goodwill represented and symbolized thereby when it registered the domain name in dispute. Complainant believes that Respondent selected and is using the Domain Name in bad faith, with the intent of misappropriating the goodwill associated with Ms. Ray's name for its own benefit. Complainant further believes that Respondent's continued possession of the Domain Name may have the effect of diluting and harming Ms. Ray's rights in her name and Marks.

 

3.         Respondent registered and uses the <rachealray.com> domain name in bad faith. The prior, as logical consequence of the previous contentions and thus, Complainant argues that Respondent’s Registration of the Domain Name should be considered as having been registered and being used in bad faith and according to the ICANN rule 3 (b) (ix) (3), the Complainant claims that the Respondent had an affirmative obligation of not to register domain names that could violate any registered service or trademark. Complainant asserts that the Domain Name is thus plainly intended to mislead internet users searching for a Rachael Ray website and/or Rachael Ray products sold under the Marks by directing them to a site or sites neither endorsed by, nor affiliated with, Rachael Ray.  In view of the above, Complainant considers that the use Respondent is giving to the Domain Name is in bad faith, manifestly for the purpose of attracting consumers to its sites or other linked websites for commercial gain, by creating a likelihood of confusion with the Marks as to the source, sponsorship, affiliation and endorsement of Respondent's website and of the linked websites and/or locations

 

The Complainants requests that the Panel issues a decision that the domain-name be transferred.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding and as per the Respondent’s Response was received without being properly served on Complainant and thus, the sole Panelist does not consider the Response to be in compliance with ICANN Rule 5(a). Nevertheless, after reading the 2 pages brief submitted by Respondent, the Panel noted that said party makes no controversy whatsoever regarding the substantial arguments of the current dispute. The Panel hereby considers that said document is not in compliance with ICANN Rule Nº 5.

 

 

 

 

FINDINGS

 

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 and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Likewise, paragraph 10 (d) of “The Rules”, provides that: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”

 

In the present case and as previously mentioned, the Panelist wants to place emphasis on the fact that Respondent’s Response was received without being properly served on Complainant and thus, he does not consider the Response to be in compliance with ICANN Rule 5 (a). Moreover, the fact that Respondent has not submitted the hardcopy of the response, according to Paragraph 14 (b) of The Rules, constitutes a technical default as well. In view of this, the Panel, at his discretion, noticing also that no evidence was filed in support of the 2 page deficient response, has chosen not to accept and consider said Response.[1]

 

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 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;

 

(3)               The domain name has been registered and is being used in bad faith.

 

DISCUSSION

 

Identical and/or Confusingly Similar

 

The first element of the paragraph 4 (a) of the Policy requires existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in many jurisdictions of the world.

 

Complainant contends that the Domain Name is identical with and confusingly similar to the RACHAEL RAY trademarks pursuant to the Policy paragraph 4(a)(i), because it wholly incorporates the same with the addition of a generic or merely descriptive term.[2]  The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a sign is registered as a trademark, it is surrounded by a presumption of existence of sufficient distinctive force, and the owner is granted with an exclusive right over the trademark, which entitled him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

However, the UDRP does not discriminate between registered and unregistered trademarks and thus, it is well established that a Complainant need not own a registered trademark to invoke the policy. It is sufficient in certain common law jurisdictions that Complainant has rights in an unregistered trademark as to deserve legal protection.[3] 

 

The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive[4]. Complainant’s trademark registrations appear to be incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated services. In addition, for purposes of this case, the Panel considers that the RACHAEL RAY marks have a more prevailing distinctive function, as per those correspond to the name of a natural person, as opposed to an artificial juristic person. In that sense, the protection of the marks associated to the name of Ms. Ray, certainly deserve a wider scope of protection. As a matter of fact, due to the broad difussion and fame of Ms. Rachael Ray, the Panel concludes that Complainant has proved that the RACHAEL RAY marks have become sufficiently connected to Complainant’s career as a T.V. celebrity and the public associates that career with the RACHAEL RAY marks as well.

 

Respondent has the burden of refuting this assumption[5] and in this case, it has failed to contest Complainant's assertions regarding its trademark rights. Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights of the cited trademarks.

 

On the other hand, after examining the semantic and ideological particualrs of Respondent’s <rachealray.com> domain name, the Panel found that as a matter of fact it  is confusingly similar to Complainant’s RACHAEL RAY marks, as per it merely incorporates a common misspelling of Complainant’s mark by transposing two letters within the mark and adding the generic top-level domain (“gTLD”) “.com.”  The Panel deems that the transposition of two letters and the addition of a gTLD do not render the disputed domain name sufficiently unique to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).[6] 

 

In view of the foregoing, the Panelist concludes that Complainant has demonstrated common law and registered rights in the RACHAEL RAY trademarks for purposes of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Paragraph 4 (c) of the Policy, determines that the following circumstances in particular but without limitation, if found by the sole panelist to be present, shall demonstrate the Respondent’s rights or legitimate interest to the domain name:

 

(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

 

Before shifting the burden to Respondent, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

The Complainant’s registrations of its trademark RACHAEL RAY appear to be prima facie incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the same in connection with the stated products.[7] It’s the Respondent who has the burden of refuting this assumption.

 

In order to validate and confirm the information provided as enclosures of the Affidavit deposed by Ms. Elizabeth A. Jaffe, the Panel conducted an informal search on May 31, 2010 in the domain name that Complainant owns <http://www.rachaelray.com/>. The Panel discovered a website, as provided also in Complainant’s screen shots, dedicated to the promotion of Rachel Ray, including restaurants, kitchen utensils, and Ms. Ray’s television shows.

 

Likewise, the Panel also searched for Respondent’s registered and disputed domain name, and found a website referencing Rachel Ray, her television shows, and a link to restaurants.  The Panel’s search confirms the submissions of Complainant.

 

Taking into consideration the Exhibits 6, 7 and 8 of Complainant, whose content was confirmed by the Panel, and bearing in mind that Respondent failed to provide any evidence refuting Complainant’s assertions, the Panel holds that the Respondent is not affiliated with, licensed by, in privity with, has not been given any permission to use the RACHAEL RAY brand by Complainant and is not otherwise in any way connected with Complainant or its affiliates. Moreover, based on the pertaining “WHOIS” information of Respondent, the Panel concluded that the information found therein is not similar to the disputed domain name and lists the registrant as “Ravi Singh c/o Whois Privacy Protection Services.” Leading said evidence, the Panel believes that Respondent is not commonly known by the disputed domain name and as such lacks rights and legitimate interests in the <rachealray.com> domain name, pursuant to Policy ¶ 4(c)(ii).[8] 

 

Additionally, the Panel became aware of the fact that the disputed domain currently redirects Internet users to <freegifster.com> website which lists promotions and free offers including an offer for RACHAEL RAY cookware accompanied by an unauthorized photo of Ms. Rachael Ray. Afterwards, Internet users who enter the giveaway by clicking on a link are redirected to another site, <greatbranddeals.com> which features an offer for RACHAEL RAY cookware. Internet users trying to obtain said cookware offer are redirected once again to a site requesting contact information, including the user’s name, address, telephone number and email address. These findings are in compliance with the assertions included in the declaration rendered by Ms. Elizabeth A. Jaffe, enclosed to the Complaint. After experiencing this “virtual chain”, the Panel considers that Respondent’s current use of the disputed domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as per Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy.[9]

 

As a consequence of the foregoing, the sole Panelist considers that due to the fact none of the contentions made by the Complainant were refuted and after reviewing the evidence attached to the Complaint and ratified by the Panel, it has been proven that there is no right or legitimate interest in the disputed domain name by Respondent, therefore it does not meet Paragraph 4 (a) (ii) of the Policy.

 

Registration and Use in Bad Faith

 

The sole Panelist has considered the fact that Respondent has failed to evidence its legitimate rights or interest in the disputed domain name as presumptive and circumstantial evidence of Respondent’s bad faith in the registration and use of the <rachealray.com> domain name. Notwithstanding this, the Panelist will evaluate Complainant’s assertions and enclosed evidence.

According to paragraph 4 (b) of the Policy the following circumstances, in particular but without limitation, 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 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 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.

 

As clearly shown, Respondent is using the disputed domain name to intentionally divert Internet users to the associated website by creating a likelihood of confusion, where Respondent directly competes with Complainant for commercial gain.  The Panel finds that such use of a disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).[10] . Simultaneously, Respondent appears to be using the disputed domain name to obtain personal information from Internet users seeking Complainant’s products and services, which according to prior rulings issued by panelists demonstrates that Respondent’s attempts at “phishing” for Complainant’s customers’ personal information is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).[11] 

 

Due to the clear interest of Respondent in attracting consumers to its web site, the Panel concluded that Respondent intentionally registered a wrong and misspelled domain name which can be easily miswritten by Internet users any time. Therefore, based on this conclusion, the Panel certainly believes that Respondent is engaged in the practice of typosquatting by using a common misspelling of Complainant’s RACHAEL RAY mark in its disputed domain name, which leads this Panelist to conclude hat Respondent has further demonstrated bad faith registration and use pursuant to Policy ¶ 4(a)(iii).[12]

 

In addition to the previously mentioned reasonable inferences, for the sole Panelist it is clear that Respondent failed to evidence use of the disputed domain for good faith purpose. The circumstances provided in paragraph 4 (b) of the Policy are not limiting factors of how bad faith can be established, but allow merely basic parameters for the sole Panelist when determining bad faith of Respondent. Noticing the fact that Respondent ignored the letter attached as Exhibit Nº 5 of Complaint, and which Complainant sent to Respondent on February 18, 2009, requesting the transfer of the domain name, has also been addressed by other administrative panels as follows: “Respondent has ignored Complainant’s request to transfer ownership of the domain name. Failure positively responds to a Complainant’s effort to make contact provides ‘strong support for a determination of bad faith and registration and use’”[13]

 

Therefore, due to the study made by this Panel, it is considered that Complainant has met the requirements of Paragraph 4 (a)(iii) of the Policy, in demonstrating Respondent’s bad faith in the registration of the <rachealray.com> domain name.

 

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 <rachealray.com> domain name be TRANSFERRED from Respondent to Complainant immediately.

 

 

 

Fernando Triana, Esq.

Panelist
Dated: June 10, 2010

 

NATIONAL ARBITRATION FORUM