WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hallmark Licensing, LLC v. EWebMall, Inc.
Case No. D2015-2202
1. The Parties
Complainant is Hallmark Licensing, LLC of Kansas City, Missouri, United States of America (“United States”), internally represented.
Respondent is EWebMall, Inc. of North Bergen, New Jersey, United States, internally represented.
2. The Domain Names and Registrar
The disputed domain names <hallmarkgift.com> and <hallmarkhome.com> are registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2015. On December 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 4, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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” 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2015. The Response due date was extended at the request of Respondent, and with the consent of Complainant, to January 13, 2016. The Response was filed with the Center on January 13, 2016. The Center received a further communication from Respondent on January 15, 2016. Complainant filed a request to submit a supplemental filing on January 19, 2016.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on January 21, 2016. 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.
On January 27, 2016, the Panel issued Administrative Panel Procedural Order No. 1 which granted Complainant the right to file a brief reply to Respondent’s Response by February 2, 2016, and Respondent the right to file a response to Complainant’s reply by February 7, 2016. Complainant timely submitted a reply on February 2, 2016, and Respondent timely responded on February 7, 2016.
4. Factual Background
The facts for this proceeding are drawn from, and are limited to, the papers and exhibits submitted by the Parties.
Complainant Hallmark Licensing, LLC is the record owner of several United States Trademark registrations for the mark HALLMARK for a variety of goods in, inter alia, International Classes 16, 21 and 24 including United States Trademark Registration No. 2,469,521, HALLMARK, registered July 17, 2001. Complainant’s parent Hallmark Cards, Incorporated, which is not a party to this proceeding, is the record owner of many trademark registrations for the HALLMARK mark outside the United States as well as several domain names incorporating the HALLMARK mark.
Respondent registered the disputed domain name <hallmarkhome.com> on July, 23, 2001, and the disputed domain name <hallmarkgift.com> on August 10, 2001. Currently, the disputed domain name <hallmarkhome.com> does not resolve to any web page and the disputed domain name <hallmarkgift.com> resolves to Respondent’s eWeb Mall website, which contains links offering various goods and services for sale.
5. Parties’ Contentions
Complainant asserts that Complainant and its parent company Hallmark Cards, Incorporated (which has not been named as a party in this proceeding) own a substantial portfolio of trademark registrations for the mark HALLMARK, including several United States trademark registrations.
Complainant contends that the disputed domain names are confusingly similar to Complainant’s HALLMARK mark because they contain the HALLMARK mark in its entirety. Complainant further contends that Respondent has no rights or legitimate interest in respect of the disputed domain names, as there is no evidence that Respondent’s use of the disputed domain names has been with a bona fide offering of goods and services; Respondent is not commonly known by the disputed domain names; and Respondent has not acquired any trademark rights to the disputed domain names. Lastly, Complainant argues that Respondent has used the disputed domain names in bad faith by using them in connection with a click-through website known as “eWebMall.com”, a virtual online mall. In that regard, Complainant asserts that it recently became aware that Respondent was operating a click-through website with the disputed domain names and then had a broker approach Respondent to purchase the disputed domain name <hallmarkhome.com>. Complainant argues that because the use of <hallmarkhome.com> with a click-through website ceased shortly after Respondent was contacted by the broker, Respondent was clearly aware that its activities were in bad faith.
Respondent asserts that the disputed domain names are not identical or confusingly similar to Complainant’s registered HALLMARK trademark because Complainant’s registered HALLMARK trademarks do not specify “gift” or “home”; the word “hallmark” is a common term that traces its origins to the 1400’s; the disputed domain names have been registered by Respondent for more than 14 years; and there are allegedly many other companies that use the name “Hallmark”.
Respondent contends that it has a legitimate interest in the disputed domain names as they are being used to sell goods and services that are not in direct competition with Complainant. Respondent also contends that it has not acted in bad faith as Complainant is not known for using the HALLMARK mark to sell gifts or homes. Respondent maintains that although it was contacted by an individual to purchase the disputed domain name <hallmarkhome.com>, it was not interested in selling the domain name and never solicited an offer to sell the disputed domain names.1
C. Complainant’s Reply
Complainant in its supplemental filing maintains that Respondent’s bad faith is evidenced by the fact that after Complainant’s broker contacted Respondent to purchase the disputed domain name <hallmarkhome.com>, Respondent immediately ceased using the disputed domain name <hallmarkhome.com> as a redirect to Respondent’s website at “www.ewebmall.com” but continued using the disputed domain name <hallmarkgift.com> with a click-through website. Complainant argues that such actions exhibit clear knowledge on the part of Respondent that its use of the disputed domain name <hallmarkhome.com> was in bad faith, and that the removal of the redirect was related to the inquiry by Complainant’s broker.
Complainant also asserts that it has long been a provider of gifts, collectibles, personal expression products and other goods and services, many of which are in competition with goods offered by Respondent on its website at “www.ewebmall.com”.
D. Respondent’s Response
Respondent in its supplemental response asserts that it did not know that the offer to purchase the disputed domain name <hallmarkhome.com> was on behalf of Complainant, as the correspondence received by Respondent made no reference to Complainant. Respondent further asserts that it did not cease the use of the disputed domain name <hallmarkhome.com>, but that the domain name was disconnected from the click-through website when the hosting company used by Respondent upgraded Respondent to a more modern platform. Respondent claims that it could not update the servers for the disputed domain name <hallmarkhome.com> once this UDRP proceeding was initiated by Complainant.
Respondent also argues that Complainant’s rights in HALLMARK are limited and cannot cover the broad topics of homes and gifts, particularly as there are many other existing uses of HALLMARK by parties unrelated to Complainant.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See paragraph 4.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The touchstone, however, is that an asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants or respondents could simply claim anything without any proof. For this reason, Panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 2.0, paragraph 1.1. Complainant has provided evidence that it owns at least one trademark registration for the HALLMARK mark that incidentally predates the registration of the disputed domain names by Respondent in 2001.
With Complainant’s rights in the HALLMARK mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-Level Domain (“gLTD”) “.com”) are identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain names are confusingly similar to Complainant’s HALLMARK mark as they incorporate the HALLMARK mark in its entirety at the head of the disputed domain names. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the HALLMARK mark and in showing that the disputed domain names are identical or confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Here, Complainant has provided very little evidence regarding Respondent’s lack of rights or legitimate interests in or to the disputed domain names, apart from providing conclusory statements that merely repeat or paraphrase the criteria or scenarios under Paragraph 4(a) of the Policy. Nevertheless, parsing through the very limited record provided by the Parties, it appears that Complainant is claiming that Respondent’s use of the disputed domain names has been for the primary purpose of redirecting web traffic to its website at “www.ewebmall.com”, a virtual online mall that features links to offers for the purchase of various goods and services.
As Complainant has not provided any evidence regarding its own use of the HALLMARK name and mark, the Panel is constrained to a very bare record as to the scope of Complainant’s rights, particularly as “hallmark” is a somewhat common English word, as Respondent argues, that does have a dictionary meaning. In addition, while Complainant claims in its reply papers that it “has long been a provider of gifts, collectibles, personal expression products, entertainment and other goods and services for the home,” Complainant has not provided any evidence substantiating or evidencing that claim. Complainant’s entire argument seems to be based on the fact that Complainant owns trademark registrations for the mark HALLMARK and that accordingly Respondent can have no rights in a domain name that includes the term “hallmark”. To be sure, Complainant’s registrations, albeit evidencing some rights in HALLMARK, do not prove use of the HALLMARK trademark, the extent of that use, or the length of time that such use has existed. Thus, for Complainant to say that Respondent can have no rights or legitimate interests in a domain name that includes the dictionary word “hallmark”, is questionable when the record is devoid of any particular evidence regarding Complainant’s use of the HALLMARK mark.
Notably, there is no dispute that Respondent registered the disputed domain names in 2001. Complainant’s failure to provide any evidence regarding its own use of the HALLMARK mark in, around, or before 2001 puts into question whether or not Respondent was seeking to take advantage of any rights that Complainant might have had in or about that time in the HALLMARK trademark with regard to home or gift products. The Panel is ultimately constrained to what has been placed in the record by the Parties and cannot simply assume facts that are not supported by any evidence.
That being said, the Panel notes that the website Respondent has posted at the disputed domain name <hallmarkgift.com> makes no mention of “Hallmark Gift” and simply promotes Respondent’s eWeb Mall, a virtual online mall. Moreover, the use that has been made by Respondent of “hallmark” in the disputed domain names and associated website does not appear to be related to a dictionary meaning of the term “hallmark”. Respondent does not really explain why its use of the disputed domain names, which include the name and mark HALLMARK, to sell various goods and services is a legitimate or a bona fide use apart from arguing that there are other parties using the common term “hallmark” in or as part of domain names and that the term “hallmark” has a dictionary meaning. Such arguments by themselves do not legitimize a use where, as here, the disputed domain names do not seem to have any connection to Respondent’s website. Based on the very limited evidence in front of the Panel, it appears that the use of the disputed domain names by Respondent to redirect web traffic to a website under the name “eWebmall.com”, from which Respondent garners a financial benefit, is not a legitimate or bona fide use, but suggests that the use is meant to capitalize on an association that the disputed domain names might have to Complainant’s HALLMARK trademark. Accordingly, the Panel finds that, based on the preponderance of the evidence submitted, Complainant is able to sustain its burden of proof as to the second element.
C. Registered and Used in Bad Faith
The third element the Policy requires a Complainant to establish is bad faith registration and use. This is a conjunctive requirement that requires some proof or inference of bad faith at the time of registration and not just bad faith use at the time a UDRP proceeding is initiated.
In the instant case, Complainant has failed to provide any evidence suggesting or establishing bad faith registration by Respondent in 2001, when the disputed domain names were registered. While there may be evidence to this effect in Complainant’s control, there is nothing in the present record establishing the scope of Complainant’s rights or the use of the HALLMARK name and mark by Complainant in or before 2001. There is also no evidence concerning any of Respondent’s activities at that time, such as whether Respondent had a pattern of registering and using domain names based on the marks of others or that Respondent was specifically targeting Complainant and its HALLMARK trademark. Although Complainant passingly claims in its reply papers to have made longstanding use of HALLMARK with a variety of goods and services, notwithstanding what amounts to a second opportunity to do so, Complainant has not submitted any evidence whatsoever to support that claim. As already noted, simply making unsubstantiated factual allegations and conclusory statements is not credible evidence on which a UDRP panelist can rely.
In essence, Complainant claims bad faith registration and use on the basis of a single recent anonymous attempt to contact Respondent to purchase the disputed domain name <hallmarkhome.com> and the subsequent removal of the click-through website at that domain name. While such removal might evidence current knowledge by Respondent regarding Complainant’s rights, it does not in and of itself establish bad faith registration in 2001. It may provide an inference of current bad faith use but says little about bad faith registration in 2001.
While the Panel believes that the current use of the disputed domain names is in bad faith, given the fundamental lack of evidence in the record regarding Complainant’s rights in 2001 or Respondent’s activities at that time, this Panel cannot conclude that the registration of the disputed domain names was done in bad faith in 2001. It may be that a competent Court, with a fuller record and opportunity to call further evidence may reach a different conclusion. The Panel has carefully considered the evidence on record, and notes that at first glance the facts of this case appear to provide the foundation for the Complainant to bring a strong case under the Policy. However, as outlined above, the complete lack of any relevant evidence in either the Complaint or in Complainant’s reply to the Response to support Complainant’s assertion that the disputed domain names were registered in bad faith has left the Panel with no alternative but to deny the Complaint. Consequently, Complainant fails on the third element.
For the foregoing reasons, the Complaint is denied.
Date: February 12, 2016
1 The Panel notes that Respondent asserted in its Response dated January 13, 2016, that it had no knowledge of a broker approaching Respondent to purchase the <hallmarkhome.com> domain name. Thereafter, on January 15, 2016, Respondent advised in an email to the Center that it had received an offer for <hallmarkhome.com> from a Mr. Al Simpson, but did not respond, as Respondent was not interested in selling that domain name.