Hallmark scored victory number two in its effort to protect its iconic brand and mark.
Days after winning the UDRP against the domain Hallmark.TV, they followed suit with HallmarkTV.com, a domain that was registered 19 years ago.
The first decision was an unfortunate awakening for the domain’s registrant, whose last name is claimed to be “Hallmark.” Unfortunately, he chose the wrong TLD to associate his name with, as Hallmark operates digital content and TV channels, thus establishing a direct connection between the mark and its use in television.
The recent decision expands on the company’s reach with a case filed against Xedoc Holdings, that did not filed a response in this UDRP.
Said the sole panelist:
The domain name takes the trademark and simply adds the abbreviation, “tv”, and the “.com” gTLD to the mark to form the disputed domain name. Neither of those additions is of distinctive value and the trademark remains the dominant and memorable part of the domain name. The Panel finds the domain name to be confusingly similar to the trademark […]
Final decision: transfer the domain to the Complainant, Hallmark Licensing, LLC.
Hallmark Licensing, LLC v. Domain Admin / Xedoc Holding SA
Claim Number: FA2101001929309
PARTIES
Complainant is Hallmark Licensing, LLC (“Complainant”), represented by Laura Ganoza of Foley & Lardner LLP, Missouri, USA. Respondent is Domain Admin / Xedoc Holding SA (“Respondent”), Luxembourg.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hallmarktv.com>, registered with Sea Wasp, LLC.
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.
Debrett G. Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on January 21, 2021; the Forum received payment on January 21, 2021.
On January 22, 2021, Sea Wasp, LLC confirmed by e-mail to the Forum that the <hallmarktv.com> domain name is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2021 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@hallmarktv.com. Also on February 2, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 1, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts trademark rights in HALLMARK. Complainant holds a national registration for that trademark. Complainant submits that the domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant’s business.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
FINDINGS
The factual findings pertinent to the decision in this case are that:
1. Complainant has historically sold greeting cards but now also offers family entertainment services, both by reference to the trademark HALLMARK[i];
2. Complainant owns United States Patent & Trademark Office (“USPTO”) Reg. No. 525,798, registered May 30, 1950 for HALLMARK;
3. Respondent registered the disputed domain name on April 16, 2002;
4. the use of the domain name is described later; and
5. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating that trademark.
DISCUSSION
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding based on Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory[ii].
Identical and/or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[iii]. Complainant provides evidence of a national registration for the trademark HALLMARK and so the Panel finds that Complainant has rights in that trademark.
The domain name takes the trademark and simply adds the abbreviation, “tv”, and the “.com” gTLD to the mark to form the disputed domain name. Neither of those additions is of distinctive value and the trademark remains the dominant and memorable part of the domain name. The Panel finds the domain name to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy[iv].
Accordingly, Complainant has satisfied the first element of the Policy.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(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 non-commercial 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.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[v].
In consequence of these proceedings the Registrar identified the domain name holder as “Domain Admin / Xedoc Holding SA” which does not provide any evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights of its own and there is no indication that Respondent uses the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Whilst there is no explanation as to why it has taken over 18 years to bring this Complaint, Ms Angela Wilson, Assistant General Counsel of Complainant now declares that previously the domain name was not in use but it now resolves to a website that displays Christmas Tree skirts (a protective apron) for sale and uses the trademark on that site.
Inactive holding of a domain name does not qualify as a bona fide offering of goods or services or a legitimate non-commercial or fair use within the meaning of Policy. Furthermore, use of the name to misdirect internet users seeking Complainant to a competitive or unrelated site does not constitute fair use.[vi] The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
The onus shifts to Respondent to establish a legitimate interest and, absent a Response, that prima facie case is not rebutted and the Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.
Registration and Use in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
The Panel finds registration and use in bad faith under paragraph 4(b)(iv) above. The Panel has already found the disputed domain name to be confusingly similar to the trademark. The evidence shows that Complainant’s trademark has been used for many decades and is well-known. The Panel finds that confusion is inevitable and that, in terms of the Policy, Respondent has intentionally sought to attract, for commercial gain, internet users to its online location resolving from the domain name by way of that confusion.
The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.
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 <hallmarktv.com> domain name be TRANSFERRED from Respondent to Complainant.
