It’s not surprising that Hallmark Licensing, LLC, the company behind the iconic Hallmark brand, would want to have the Hallmark.TV domain name. In addition to owning various Hallmark-related entities, Hallmark Licensing operates the Hallmark Channel, and it uses the brand match HallmarkChannel.com domain name for this line of business. It may not need Hallmark.TV, but I am sure the company would want to own the domain name.
Hallmark Licensing, LLC opted to file a UDRP complaint to take possession of Hallmark.TV. The decision was published today, and while Hallmark Licensing prevailed, the rationale for why the company prevailed is upsetting to me.
The domain registrant listed in the decision is a person whose last name is reportedly Hallmark. Because Hallmark.TV appears to be registered under Whois privacy, Hallmark Licensing may be forgiven for not knowing the registrant’s surname before filing the UDRP.
The domain registrant (respondent in the UDRP) did not respond to the UDRP proceeding. This is unfortunate, but there have been plenty of times where a non-responsive domain registrant prevailed. In this particular case, the panelist, Debrett G. Lyons, ruled in favor of Hallmark Licensing.
While this is disappointing, some aspects of the decision upset me. In particular, the discussion about registering and using the domain name in bad faith. Here are separate excerpts from the decision that I found upsetting:
“The publicly available WhoIs information identifies of the domain name registrant as “Jarod Hallmark”. Although Respondent’s given family name corresponds with the trademark there is no corroborating evidence that Respondent might be commonly known by the disputed domain name”
Isn’t someone’s last name a big part of how they are known to other people? When someone meets our children, for example, they know my wife and I are their parents because we have the same last name and the only family in our school with the last name.
Later, the panelist wrote:
“The Panel finds registration and use in bad faith. The Panel has not been presented with any explanation for adoption of Complainant’s mark.”
Isn’t the fact that the respondent’s last name being Hallmark a good enough explanation for why the registrant would want to have this domain name?? This isn’t just the “complainant’s mark” – it is apparently the domain registrant’s last name.
Finally, the panelist wrote:
“Albeit that the disputed domain name is not being used the Panel accepts that the trademark is well-known and cannot envisage any use of the disputed domain name which would be in good faith. Accordingly, the Panel finds so-called passive holding in bad faith and so finds registration in bad faith in line with the principles first enunciated in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).”
I would imagine a person with the last name Hallmark could use Hallmark.tv in many ways that do not infringe on the well-known Hallmark brand.
All in all, this is an upsetting UDRP decision.
I see your points.
Anytime you have a 1-member panel, the decision and the reasoning behind it may be off the rails since there are no other voices or opinions to balance that decision or opinion. I wish they would simply abolish 1 member panels and have a 3 member panel for every case since it can be life-changing.
Taking a domain that matches someone’s last name and giving it to a large IP interest is very disappointing. Based on the information provided in this write-up, the panelist clearly viewed this complaint from the lens of the large corporation who was the complainant, not the registrant. In fact, the panelist outright ignored the evidence granting legitimate rights to the registrant. That is called biased decision-making.
“Based on the information provided in this write-up,”
For what it’s worth, I think readers should read the full UDRP decision rather than rely on the excerpts I took from it. Perhaps they will see something I missed.
Fair enough. Based on the text, the decision does appear to elevate the corporate/IP interest over those of the individual registrant. Hallmark is the registrants last name after all, (and hallmark is a generic dictionary word as well)
And to clarify, while the panelist was probably not biased, given the fact set of the case, the transfer could easily have been denied by another panelist.
They should appeal the decision Elliot, I own my Surname in a few TLD’s & even in a GTLD and one the largest plumbing companies by revenue operates under that banner in the USA, however they have never come knocking but if they did, I would fight all the way…
The very concept of a procedure to usurp domain names – and impose huge fines as ACPA enables – is an completely unwarranted expansion of trademark rights and totally corrupt, imo.
Give them an inch and they’ll take a mile…
This is really bad. Agree with Rick about 1 panelist decisions. Panelist decision is irresponsible
This is such sheer stupidity that it’s hard to believe someone in that position could honestly even be that stupid. Ergo, perhaps biased, dishonest and corrupt really is the answer.
We generally live in an oligarchy favoring the rich and powerful to begin with, so the idea they are starting on a level playing field is not an idea one should embrace. Could not agree with Rick more because of that.
i think rick was spot on and complainants attorney actually ‘leveraged’ the one man panel ….
On February 17, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel,
I also think the registrant did no favors for himself by not replying. Even if he sent a response like “This is my last name and I bought the domain name for email and to show family videos,” the panel may have responded differently. Hard to say.
I almost said something like that, that he should have even just made a simple reply like that.
But we don’t want to blame the victim, and what I said about it stands.
I think I left a similar response somewhere else I find the need to add it here as well…
The term Hallmark is very well known in the jewellery industry. (Derived from people taking their precious metal items to a ‘hall’ to be struck by a silver/goldsmith).
It is a process whereby a precious metal item is struck into the metal (by a metal stamp) to identify to the consumer what it is ie: 925 indicating silver or 999 for fine gold.
I find the word Hallmark generic in nature and this angle may have been overlooked prior to a decision being made