Mahogany.com generic domain name saved in UDRP (June, 2021)

Hallmark Licensing, LLC and Hallmark Cards, Incorporated v. Privacy Administrator / Anonymize, Inc., FA2104001941032

Decision:  Claim Denied

PARTIES

Complainant is Hallmark Licensing, LLC and Hallmark Cards, Incorporated (“Complainant”), represented by Laura Ganoza of Foley & Lardner LLP, Florida, USA. Respondent is Privacy Administrator / Anonymize, Inc. (“Respondent”), represented by Zak Muscovitch of Muscovitch Law Professional Corp., Canada.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mahogany.com>, registered with Epik Inc., Epik Holdings Inc.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Honorable John J. Upchurch (Ret.), Gerald M. Levine and Lynda M. Braun as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 9, 2021; the Forum received payment on April 9, 2021.

On April 16, 2021, Epik Inc., Epik Holdings Inc confirmed by e-mail to the Forum that the <mahogany.com> domain name is registered with Epik Inc., Epik Holdings Inc and that Respondent is the current registrant of the name. Epik Inc., Epik Holdings Inc has verified that Respondent is bound by the Epik Inc., Epik Holdings Inc 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 April 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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 [email protected]  Also on April 21, 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.

A timely Response was received and determined to be complete on May 17, 2021.

On May 25, 2021, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Honorable John J. Upchurch (Ret.), Gerald M. Levine and Lynda M. Braun as Panelists.

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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant. 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

In the instant proceedings, there are two Complainants.  Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.”  The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”

The Panel determines that there is a nexus between the Hallmark entities, and elects to treat them as a unit, and shall refer to them jointly as “Complainant.” 

PARTIES’ CONTENTIONS

  1. Complainant
  2. Complainant, Hallmark Licensing, LLC and Hallmark Cards, Incorporated, is a manufacturer of greeting cards in the United States. Complainant has rights in the MAHOGANY mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (g., Reg. No. 2,653,121). See Compl. Ex. 3. Respondent’s <mahogany.com> domain name is identical to Complainant’s MAHOGANY mark since it simply appends the “.com” generic top level domain (“gTLD”) to the end of the mark.
  1. Respondent does not have rights or legitimate interests in the <mahogany.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s MAHOGANY mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent hosts generic hyperlinks at the disputed domain and offers the domain name for sale.
  1. Respondent registered and uses the <mahogany.com> domain name in bad faith. Respondent attracts users for commercial gain by displaying third-party generic hyperlinks. Additionally, Respondent had actual knowledge of Complainant’s rights in the MAHOGANY mark when it registered the disputed domain name. Further, Complainant’s rights in the mark predate Respondent’s rights in the disputed domain name because Respondent acquired the domain name after its initial registration.
  1. Respondent
  2. Respondent acknowledges that Complainant has registered trademarks for MAHOGANY and they are identical to the <mahogany.com> domain name.
  3. Respondent has rights and legitimate interests in the <mahogany.com> domain name as Respondent uses the disputed domain in connection with the generic meaning of the word, rather than in reference to Complainant. Further, Respondent’s purchase of the disputed domain name from a prior owner was in connection with its business of investing in generic domain names. Accordingly, it has a right and legitimate interest in the disputed domain name.

  4. Respondent did not register or use the <mahogany.com> domain name in bad faith. Respondent had no knowledge of Complainant’s rights in the MAHOGANY mark when Respondent acquired the domain name and derives no value from the identity between the domain name and the MAHOGANY mark. Additionally, hosting pay-per-click links and making a general offer for sale of a domain name does not support a claim for using it in bad faith.

FINDINGS

Complainant, who has the subject MAHOGANY mark, has established rights in the mark per Policy ¶ 4(a)(i).  Respondent acknowledges that it is identical to the <mahogany.com> name.  The Panel finds that the evidence supports Respondent’s contention that it has both rights and legitimate interests in the <mahogany.com> name; consequently, the Panel will not address the remaining element of the Policy.

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:

  • the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
  • Respondent has no rights or legitimate interests in respect of the domain name; and
  • the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The Respondent acknowledges that the Complainant has registered trademarks for MAHOGANY in connection with greeting cards, Christmas tree ornaments, and debit cards, and further acknowledges that they are identical to the Domain Name for the purposes of the UDRP.  Accordingly, the Panel finds that the Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

The Panel finds Respondent’s Response to be comprehensive and credible.  It presented convincing evidence to demonstrate the subject domain name was purchased from a prior owner and that it closed the transaction through Escrow.com by making a series of installment payments totaling USD $40,000 on or about February 25, 2017.  <mahogany.com> was one of several one-word generic domain names Respondent acquired within a short period at that time.  The purchase was part of an established conventional business of acquiring and marketing single generic word domain names.  For the following years, to the present, Respondent used the Domain Name to display an image depicting mahogany wood and/or providing the dictionary definition of the word.

Complainant has offered no evidence to support its contention that Respondent lacks rights or legitimate interests in <mahogany.com>. Nor does the record reflect any proof that Respondent sought to infringe upon, or imply a connection with, the trademark rights of Complainant.  There is no allegation or evidence that Respondent solicited the Complainant, or acknowledged any knowledge of Complainant’s mark.

Complainant alleges that the “Respondent can show no past bona fide use” of the Domain Name. The Panel does not agree.  Respondent consistently used the Domain Name to display a website which referenced the dictionary meaning of the word “mahogany”.  When a domain name like “Mahogany.com” is descriptive of a kind of wood, and that generic definition is being used by a respondent as a descriptor of the site’s content or theme, a complainant will have failed to show a lack of legitimate interest in a disputed domain name (See Advanced Drivers Educ. Prods. & Training, Inc. v. MDNH, Inc., FA 567039).

Complainant rests heavily upon the recent instance of a PPC page which contains links for “Best Prices on Hardwood Flooring” and “Entry Door”, terms which are clearly related to the meaning of the Domain Name. This constitutes bona fide use prior to notice of the dispute pursuant to Paragraph 4(c)(i) of the Policy.  (See for example, Javier Narvaez Segura, Grupo Loading Systems S.L. v. Domain Admin, Mrs. Jello, LLC, WIPO Case No. D2016-1199, Loading.com, “A respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent’s aim in registering the disputed domain name was to profit from and exploit the complainant’s trademark.”). See also WIPO Jurisprudential Overview (3rd Ed.), Paragraph 2.9:  “Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible—and therefore consistent with respondent rights or legitimate interests under the UDRP—where the domain name consists of an actual dictionary words(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s’ (or its competitor’s) trademark.”.

Consequently, the Panel finds that the Respondent has rights and a legitimate interest in the Domain Name because it corresponds to a well-known descriptive dictionary word. “Mahogany” is a common and well-known dictionary word used by numerous people and companies.  As stated in HP Hood LLC v. hood.com (FA0408000313566):

“Where the domain name and trademark in question are generic – and in particular where they comprise no more than a single, short, common word – the rights/interests inquiry is more likely to favor the domain name owner.”

See also High Adventure Ministries v. John Tayloe/VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP 

4(a)(ii)). Accordingly, the Panel finds Complainant’s allegations that Respondent lacks rights or legitimate interest have not been established, and the Complaint must consequently fail.

Registration and Use in Bad Faith

Given that the Panel finds the Complainant has failed to establish Respondent’s lack of rights or legitimate interests in the subject domain name, it shall not address the remaining element of the Policy.

Reverse Domain Name Hijacking

Respondent did not raise the issue of Reverse Domain name hijacking, and made no effort to urge the Panel to consider the issue.  A majority of the Panel did not find that the circumstances were sufficiently abusive so as to justify consideration of the issue. Panelist Levine did not concur, and his dissenting opinion on RDNH appears below.

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <mahogany.com> domain name REMAIN WITH Respondent.

Hon. John J. Upchurch (Ret.)

Gerald M. Levine

Lynda M. Braun

Dated:  June 1, 2021

OPINION CONCURING IN PART, DISSENTING IN PART; GERALD M. LEVINE, PANELIST

I concur with respect to the findings of the Panel majority as to the elements of the Policy, and the Decision to deny the requested relief.

Respondent has not requested the Panel issue a reverse domain name hijacking sanction, but it is not inappropriate for it to consider the issue sua sponte where contentions and evidence offered in support of a claim of cybersquatting are totally lacking in merit. The issue is addressed by WIPO in its Jurisprudential Overview 3.0 at Paragraph 4.16: “[F]ollowing some early cases to the contrary, panels have more recently clarified that, for an RDNH finding to be made, it is not necessary for a respondent to seek an RDNH finding or prove the presence of conduct constituting RDNH.” See Goway Travel Limited v. Tourism Australia, D2006-0344 (WIPO June 6, 2006) (“The Rules specifically put the burden on the Panel to determine whether a complainant has tried to use “the Policy in bad faith to attempt to deprive a registered domain name hold of a domain name.”).

In this case, Complainant is represented by professional counsel. In the same paragraph already quoted from the WIPO Jurisprudential Overview, it is noted that “some panels have held that a represented complainant should be held to a higher standard.” This expresses the consensus view that Panels expect legal counsel to have strong working knowledge of UDRP jurisprudence. In fact, this expectation is implicit in the representative’s certification in filing the complaint, UDRP Rule 3(xiii).

Prior Panels have expressed impatience with complainants and representatives whose submissions and arguments evidence little understanding of the evidentiary demands for proving cybersquatting. The UDRP is a formal legal proceeding and it is unacceptable for legal counsel to treat it otherwise. See Pick Enterprises, Inc. v. Domains by Proxy, LLC, DomainsbyProxy.com / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center, D2012-1555 (WIPO September 22, 2012) (“Regardless of actual intent, Respondent has been put to time and expense to address a Complaint that the Panel finds objectively groundless, one as to which this Panel believes ‘the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP.’”). The Panel in HSIL Limited, Somany Home Innovation Limited /SHIL Ltd., Brilloca Limited v. GOTW Hostmaster, Get On The Web Limited, D2020-3416 (WIPO April 4, 2021) states that “[i]n sum, the Complainant’s professional representative betrays an alarming unfamiliarity with the UDRP and the two decades of precedent under it, . . . Such conduct in any court would result in a swift dismissal and appropriate sanctions for wasting the parties’ and the court’s time. This Panel is limited to a finding of abuse, which it readily imposes.”)

This Panelist shares views expressed in the above decisions. In this case, other than demonstrating that Complainant has a registered trademark for the term MAHOGANY, Counsel has marshaled no evidence that would even minimally support a claim that Respondent acquired <mahogany.com> with Complainant’s mark in mind. By every accounting “mahogany” has an immense range of connotations, and by no means exclusively or distinctively used by Complainant.  Respondent amply demonstrated that the term is used by many other traders for a great diversity of goods and services, Where a complainant’s underlying theory of cybersquatting is based solely on the false belief that because it has a trademark in a generic term respondent’s registration is ipso facto abusive it has itself crossed the abuse line “in bad faith to attempt to deprive a registered domain-name holder of a domain name.” UDRP Rule 1 (Definitions).

Given these circumstances, I would find that “the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” UDRP Rule 15(c).

Gerald M. Levine, Panelist