In a very interesting decision, a three member Panel appears to stretch the limits of what is acceptable evidence and methodology for UDRP cases. In the case of Ray Marks Co. LLC v. Rachel Ray Techniques Pvt. Ltd. FA1319966 (Nat. Arb. Forum, July 7, 2010) the Panel was faced with a dispute over the domain www.rachelray.com. Living in the U.S. most of us have all seen on t.v. or heard about Rachael Ray. She maintains a website at www.rachaelray.com Many would even think this was a slam dunk case for her, since the disputed domain was merely missing a letter. However, Respondent put up a fight and both parties provided additional submissions. As a result the Panel was faced with making some interesting findings.
Paragraph 4(a) of the ICANN UDRP 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.
Some of the relevant arguments presented by Respondent are as follows:
Respondent, Rachel Ray Techniques Private Limited, is a company incorporated in India on July 23, 2009. Respondent offers products that involve laser ray technology. Prior to incorporation, Respondent was operated as a partnership that began April 10, 2007….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 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”.
In the decision, the Panel presented the following findings:
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 India on July 23, 2009, after having been formed as a partnership on April 10, 2007.
With that in mind the Panel reviewed the elements and quickly found that the domain was identical or confusingly similar. The fascinating parts of the decision came during the examination of the second element. The Panel found that the burden was shifted to Respondent to prove it had rights or legitimate interests in the domain. It stated as follows:
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.
However, the Complaint provided evidence that the disputed domain hosted websites that offered Complainants own trademark. Respondent chalked this up to error and lack of control over third party hosting, exclaiming that they are not technical people. Armed with that argument, the Panel made the following statement.
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.
Additionally, the Panel found that the lack of proof of sales volume or revenue in connection with products was fatal. Then the Panel turned its attention to the issue of whether Respondent was commonly known by the domain. AS stated earlier Respondents company name specifically includes the domain, but the Panel did not care.
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.
The Panel quickly resolved the bad faith element of the case. Ultimately, the Panel ruled that domain be TRANSFERRED.