WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hallmark Licensing, LLC v. Domain Hostmaster, Whois Privacy Services Pty Ltd. / DN Manager, Whois-Privacy.Net Ltd
Case No. D2014-1644
1. The Parties
The Complainant is Hallmark Licensing, LLC of Kansas City, Missouri, United States of America ("United States"), represented by Albert P. Mauro, Jr., United States.
The Respondent is Domain Hostmaster, Whois Privacy Services Pty Ltd. of Fortitude Valley, Queensland, Australia / DN Manager, Whois-Privacy.Net Ltd of Port Vila, Vanuatu.
2. The Domain Names and Registrar
The disputed domain name <hallmarkcardsonline.com> and <hallmarkfreegreetingcards.com> are registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 23, 2014. On September 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 24, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 25, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 1, 2014.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 October 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 22, 2014.
The Center appointed Adam Samuel as the sole panelist in this matter on October 27, 2014. 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.
4. Factual Background
The Complainant is part of a group of companies that makes and sells greetings cards. It is the owner of a number of trademark registrations worldwide for the mark HALLMARK, including United States trademark, registration number 380596, registered on August 27, 1940.
The disputed domain names were registered on September 30, 2005 and December 12, 2006 respectively.
5. Parties' Contentions
These are the parties' contentions (with which the Panel does not necessarily agree).
The disputed domain names use the Complainant's HALLMARK trademark only in connection with other terms that expressly relate to the goods for which the Complainant's mark is world-famous – greeting cards. <hallmarkcardsonline.com> indicates to a consumer that the Complainant's products are available online and <hallmarkfreegreatingcards.com> that the Complainant's greeting card products are available for free. Both are likely to confuse consumers about the connection between the Complainant and the Respondent.
The Respondent has never operated any legitimate business under the disputed domain names. It has never been commonly known by any of the HALLMARK marks or any variations of them and has never used any trademark or service mark similar to the disputed domain names. The Respondent is not making a protected noncommercial or fair use of the disputed domain names. The Complainant has not granted the Respondent any license, permission or authorization by which it could own or use any domain name registrations which are confusingly similar to any of the HALLMARK marks.
The Respondent has placed the disputed domain names for sale through <sedo.com>. It is operating click-through sites under these domain names offering "greeting cards" in competition with the Complainant. It has on at least one earlier occasion been found to have registered a domain name in bad faith and used it solely for click-through advertising.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The first disputed domain name consists of the Complainant's trademark, the words "cards" and "online" as well as the generic Top-Level-Domain (gTLD) ".com". The second dispute domain name is made up of the Complainant's trademark, the words "free", "greeting" and "cards" and again the gTLD ".com".
The appearance of the word "cards" in both disputed domain names associates those names with the Complainant's well-known and longstanding trademark since the trademark is primarily associated worldwide with the making and sale of greeting cards. The addition of the word "online" in the first domain name does not affect the confusion created by the rest of the domain name between that name and the Complainant's trademark. It merely reflects the fact that through the disputed domain name concerned, cards can be purchased online, a feature one would expect from a website bearing the Complainant's trademark. In the second domain name, the expression "greeting cards" appears alongside the Complainant's trademark reflecting the product most closely associated with that mark. The addition of the generic word "free" does not dissociate the disputed domain name from the Complainant's mark. For these reasons, the Panel concludes that both disputed domain names are confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
The Respondent is not called "Hallmark" or anything similar and does not appear to engage in a legitimate trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant's claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant's trademark is widely known worldwide. It is highly likely that the Respondent registered the disputed domain names knowing of the Complainant's mark since they both consist of the Complainant's mark and clear references to the Complainant's best known product, "cards" or "greeting cards". It is impossible, at least without a Response to the Complaint, to identify the reason why the Respondent registered the disputed domain names other than to attract business or Internet users to its sites who were looking for sites connected to the Complainant's trademark or business.
The Respondent's motive in registering and using the disputed domain names seems to have been either to disrupt the Complainant's relationship with its customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy the disputed domain names from it for an amount in excess of the Respondent's out-of-pocket expenses. These all constitute evidence of registration and use in bad faith. The Respondent's motivation may have been more than one of these and perhaps all three. It is unnecessary in the circumstances to reach a conclusion about the other points made in the Complaint.
For the above reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <hallmarkcardsonline.com> and <hallmarkfreegreetingcards.com> be transferred to the Complainant.
Date: November 5, 2014