The Complainant is Hallmark Licensing, Inc., of Kansas City, Missouri, United States of America, represented internally.
The Respondents are Royal Card & Gift House, of Farmington, New York, United States of America, and Contactprivacy.com, of Toronto, Ontario, Canada.
The disputed Domain Name <yourhallmark.com> is registered with Tucows, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2008. On October 23, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On October 23, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 25, 2008.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 4, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is a Delaware corporation headquartered in Kansas City, Missouri. The Complainant handles intellectual property licensing on behalf of its parent company, Hallmark Cards, Incorporated, which produces and sells greeting cards and gift items.
The Complainant or its parent company hold numerous trademark registrations around the world, including United States Trademark Registration No. 916900 (registered July 20, 1971) for the standard-character HALLMARK trademark and United States Trademark Registration No. 2825717 (registered March 23, 2004) for the HALLMARK & Crown design mark, in which the HALLMARK name appears prominently in a distinctive font under an image of a crown.
The Complainant owns many domain names incorporating the HALLMARK mark, including combinations such as <myhallmark.com>.
The Respondent Royal Card and Gift House is a company that operates a card and gift store in Farmington, New York. In July 2000, the Respondent executed a non-transferable “Gold Crown Sublicense Agreement” with an affiliate of the Complainant, Hallmark Marketing Corporation. Under this agreement, furnished by the Complainant in response to a Panel order, the Respondent was permitted to use the HALLMARK trademark in the trade name of its store, “Lynne's Hallmark”, and to display the HALLMARK & Crown (or “Gold Crown”) design mark.
A provision of the sublicensing agreement required the Respondent to “comply with all standards, requirements and criteria of the Gold Crown program, or any future iteration of such program”. One of the policies that applied to such licensed retailers was the “Hallmark Retailer Internet Policy”. A copy of this policy, dated April 24, 2000, was furnished by the Complainant at the Panel's request. The policy details what an approved Hallmark retailer may and may not do on a website to promote its association with Hallmark. The retailer generally may not sell non-Hallmark products on the website unless the HALLMARK marks appear “only incidentally in the context of identifying the products or services offered by the Retailer”. The retailer is also prohibited from using a HALLMARK mark “or anything confusingly similar” in a domain name.
The Domain Name was registered in May 2005. The Registrar's WhoIs database on September 12, 2008 listed the registrant as the Respondent Royal Card & Gift House, with Lynne Storch as the administrative contact. Lynne Storch is the name of the individual who signed the Hallmark sublicense agreement on behalf of Royal Card & Gift House Inc. “DBA Lynne's Hallmark”, indicating that she was president of Royal Card & Gift House Inc.
Based on screenshots preserved by the Internet Archive and available through its Wayback Machine at “www.archive.org”, beginning in October 2005, the Domain Name resolved to a website headed “YourHallmark.com”, which advertised gift items that could be purchased by Internet users “from the comfort and convenience of your own home”. Gift items pictured and described on the website included “Hallmark Ornaments” as well as items from other companies. The website displayed at the top of the home page the Complainant's HALLMARK & Crown trademark, along with trademarked logos for Disney, Ty Beanies, Yankee Candle Company, Lenox, The San Francisco Music Box Company, Willow Tree, and several other brands. A disclaimer at the bottom of the home page read as follows:
This website is not affiliated with Hallmark or any of the companies whose logos appear above. This site sells products manufactured by these companies but is independently owned and operated.
The “About Us” page of the website did not identify the Respondent Royal Card & Gift House by name but described the operator of the website in a manner consistent with the Respondent:
YourHallmark.com is the internet presence of a family owned and operated brick and mortar business with over a quarter of a century of history. Our corporate headquarters and flagship store are located in the suburbs of New York where we have served millions of customers over the years. Our website is an extension of our business which offers something for everyone. We carry a full range of Hallmark products as well as gifts for every occasion.
In February, April, July, and September 2008, the Complainant corresponded with John Storch of “Royal Card & Gift DBA Lynne's Hallmark Shop”, objecting to the Respondent's use of the Domain Name and offering to pay the Respondent a sum to transfer the Domain Name to the Complainant.
The Respondent did not do so, but the name of the registrant was subsequently changed to Contactprivacy.com, which is accordingly also named as a Respondent. It appears from the record and from the Registrar's website that Contactprivacy.com is not a legal entity but merely a name used by the Registrar's domain privacy service.
After the Complaint was filed in this proceeding, the Center received two communications from “Lynne's Hallmark”, stating that it no longer owned the Domain Name and that the WhoIs information had been changed.
The Domain Name does not currently resolve to a website.
The Complainant contends that the Domain Name is confusingly similar to its HALLMARK marks, and that “the Respondent” (presumably referring to Royal Card & Gift House) violated the terms of its trademark licensing agreement and therefore had no right or legitimate interest in the Domain Name.
The Complainant argues that the Domain Name was registered and used in a bad faith attempt to mislead and attract Internet users for commercial gain.
No Response to the Complainant's contentions has been submitted by the Respondent Royal Card & Gift House or by the Registrar or any other person in the name of the Respondent Contactprivacy.com.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules;
A panel shall 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.
The Complainant holds registered HALLMARK trademarks. The Domain Name incorporates the HALLMARK mark in its entirety and adds the possessive determiner “your”. The addition of this common word in no way avoids confusion with the mark, especially since “my” and “your” are frequently added to trademarked names to form a domain name, and the Complainant itself owns the domain name <myhallmark.com>.
The Panel finds that the Domain Name is confusingly similar to the Complainant's HALLMARK marks for purposes of the Policy, paragraph 4(a)(i).
The Complainant contends that it has not authorized any Respondent to use its HALLMARK marks. This establishes the Complainant's prima facie case on the second element of the Complaint, and the burden shifts to the Respondents to produce evidence of their rights or legitimate interests under paragraph 4(c) of the Policy. See Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241; Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753. Neither Respondent in this case has done so.
The Respondent Royal Card & Gift House was licensed to display the Complainant's marks, subject to restrictions that expressly precluded using the marks in a domain name. Thus, it appears that Royal Card & Gift House had no right or legitimate interest in the Domain Name even at the time it registered the Domain Name.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a Respondent could demonstrate rights or legitimate interests in the Domain Names:
“(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.”
The use of the Domain Name was clearly commercial, and there is no evidence of a legal entity known by a name corresponding to the Domain Name. The Respondent Royal Gift & Card House formerly used the Domain Name in connection with the offering of goods, but this cannot be considered a bona fide offering because it violated the express terms of the Hallmark sublicensing agreement. Moreover, even if there were not an express licensing restriction, Royal Gift & Card House would not have met the widely cited criteria for legitimate use of a mark in a reseller's domain name, as articulated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Under the Oki Data standard, a reseller generally must sell only the trademarked goods on a website associated with a domain name incorporating the trademark, to avoid the possible abuse of baiting consumers with the trademark and then switching them to competing products. The website to which the Domain Name formerly resolved sold products of many competitors as well as the Complainant's.
Thus, the record does not suggest any rights or legitimate interests in the Domain Name. The Respondent Royal Gift & Card House denies current ownership of the Domain Name and fails to respond to the Complaint, and no Response has been submitted by the beneficial owner masked by the Registrar's domain name privacy service (which has not been further identified by the Registrar).
The Panel concludes, therefore, that the Complainant has established an unrebutted prima facie case under the Policy, paragraph 4(a)(ii).
Paragraph 4(b)(iv) of the Policy gives the following as an example of bad faith:
“circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 its website or location.”
The circumstances here are in accord with this description. Within months after the registration of the Domain Name, it resolved to a website displaying the Complainant's trademark and selling both the Complainant's and competing products. The website's fine-print disclaimer of affiliation with the Complainant is insufficient to avoid the initial (and possibly intentional) confusion created by the Domain Name. See, e.g., Pliva, Inc. v. Eric Kaiser, WIPO Case No. D2003-0316; Dr. Ing. h.c. F. Porsche AG v. Sabatino Andreoni, WIPO Case No. D2003-0224 (and cases cited therein). The Respondent Royal Card & Gift House was expressly forbidden by its licensing agreement with the Complainant's affiliate from using the HALLMARK mark in a domain name. No other party has come forward with any claim to a legitimate use of the mark in the Domain Name to sell both the Complainant's products and those of competitors.
The Panel finds that the third element of the Complainant has been established on this record.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <yourhallmark.com>, be transferred to the Complainant.
W. Scott Blackmer
Dated: January 16, 2009