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TV personality and chef, Rachael Ray, recently snagged a victory in an ICANN domain name dispute before a three-person panel administered by the National Arbitration Forum. For those of you for whom “cooking dinner” means fetching a bowl of cereal or nuking a lean cuisine, Ms. Ray is the star of the popular talk show, “Rachael Ray,“ and the author of many classic cookbooks such as 30 Minute Meals and Yum O! The Family Cookbook (not kidding).
The Internet Corporation for Assigned Names and Numbers (ICANN) is the entity responsible for managing the assignment of Internet domain names on behalf of the U.S. government. The Uniform Domain-Name Dispute-Resolution Policy (UDRP) outlines the process for resolving disputes over the registering of Internet domain names for all .biz, .com, .info, .name, .net, and .org top-level domains.
To succeed in canceling or transferring a particular domain name, UDRP complainants must establish that (1) the domain name is the same or is confusingly similar to a trademark or service mark in which the complainant has rights; (2) the registerant lacks any legitimate right or interest in the domain name; and (3) the registerant registered the domain name and is using it in “bad faith.”
This particular dispute concerned the domain www.rachelray.com, which omits the second “a” in Ray’s first name (her official website can be found at http://www.rachaelray.com/). The registrant of this domain name is Rachel Ray Techniques, a corporation based in India that purportedly “markets laser-based equipment and other items.” The panel easily concluded that Ms. Ray had satisfied the element requiring confusing similarly, considering that respondent’s domain name is a common misspelling of her name and trademark.
The panel’s analysis of the second element, however, was more involved. To show that it had a “legitimate right or interest” in the domain name, Rachel Ray Techniques offered evidence of “advertisements, telephone listings, invoices and Indian governmental documents” displaying its name. Ms. Ray countered by pointing out that the domain name was used to host websites offering products that bear the Rachael Ray trademark.
The arbitration panel began to question respondent’s “veracity” when the company, a purported seller of laser equipment, argued that the improper website hosting was a simple error, and noted that they “were not technical people.” Further, the panel pointed to the suspicious timing of Rachel Ray Technique’s formation as a partnership — only two weeks after the Rachael Ray trademark was registered with USPTO. The final weakness in the respondent’s defense was its failure to provide even “scant evidence of actually conducting business.” As the decision noted:
The Panel believes that [the UDRP] 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.
Once the panel determined that the respondent had “used the disputed domain name to refer to Complainant’s own goods without authorization to do so,” the bad-faith element of Ms. Ray’s complaint was easily satisfied. Accordingly, the panel ordered that Rachel Ray Techniques transfer the www.rachelray.com domain name.
As this decision shows, companies seeking to establish a “legitimate right or interest” in a particular domain name better have more than just a business card.
– Lacey R. Logsdon