The Complainant is Cards Against Humanity, LLC of Harrisburg, Pennsylvania, United States of America, represented by Cowan, DeBaets, Abrahams & Sheppard, LLP, United States of America ("United States").
The Respondent is Cards, Wangming of Dongguan, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name ("the Domain Name") is registered with 35 Technology Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 16, 2015. On January 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 20, 2015, 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.
On January 21, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceedings commenced on January 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 17, 2015.
The Center appointed Karen Fong as the sole panelist in this matter on February 25, 2015. 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 are the creators and manufacturers of a unique card game ("the Game") which is marketed and sold under the trade mark CARDS AGAINST HUMANITY ("the Trade Mark") since 2009. The cards, expansion packs, boxes and speciality cards comprising the Game are only sold through limited distribution channels. The Game has gained enormous popularity around the world and featured in games related websites like Kotaku as well as popular internet sites like Amazon, Huffington Post, Thrillist and Boing Boing. The Complainant has trade mark registrations for the Trade Mark in the United States. The earliest trade mark registration dates back to March 2013. It also owns the website connected to the domain name . The Game under the Trade Mark has been extensively promoted and advertised at trade shows and its own website and as a result has attained valuable reputation and goodwill. The Complainant's tag line in connection with the game is "A PARTY GAME FOR HORRIBLE PEOPLE" ("The Tagline"). The Complainant also has a distinctive trade dress consisting of white lettering on a black background with vertically aligned text in Helvitica Neue font ("the Trade Dress"),
The Respondent registered the Domain Name on March 27, 2014. The website connected to the Domain Name ("the Website") features the Trade Mark, the Tagline and the Trade Dress. It purports to sell through a Cards Against Humanity Wholesale Online Store the Game including starter packs, expansion packs, "extended" editions, special editions and bundles at wholesale prices. The images on the Website appear to be copied from the Complainant's own website. The Website also offers "reject packs" and "house of card" themed packs. These two products are not offered for sale by the Complainant. The Website also offers "Door to Door Affiliate Marketing Schemes". The Complainant does not engage in this service. This indicates that it is likely that the Respondent is engaged in the trade of counterfeit products. The Complainant sent a cease and desist letter to the Respondent on October 29, 2014. No response was received. At the time of the writing of the decision the Website is not active. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and being used in bad faith. B. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Name is Chinese.
The Complainant submits in an email to the Center on January 21, 2015 that the language of the proceeding should be English. The Complainant contends that the Website is entirely in English including its customer support "livechat". The Website purports to offer for sale the Game which includes a "US Basic Edition" to United States customers in US dollars and purporting to ship the products to the United States. The above demonstrates that the Respondent has sufficient understanding of the English language whilst the Complainant being a company situated in the United States does not have principals that understand Chinese.
The Panel accepts the Complainant's submissions regarding the language of the proceeding. It would appear that the Respondent understands English. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Having considered all the circumstances of this case, the Panel is satisfied that the Respondent is familiar with the English language and determines that English is the language of the proceeding. C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name is identical to the Trade Mark save for a hyphen after each word that comprises the Trade Mark. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain suffix. Further, the hyphens do not negate the identity or confusing similarity encouraged by the Respondent's use of Trade Mark in the Domain Name.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. D. Rights or Legitimate Interests
The Complainant alleges that the Respondent is not commonly known by the Domain Name. The Respondent is not a licensee, authorized agent or in any other way authorized to use the Trade Mark in the Domain Name or any other manner. The products offered for sale on the Website are purported to be genuine products from the Complainant when this is not the case. As stated in the Factual Background at paragraph 4 above, some of the products offered for sale by the Respondent have never been offered for sale by the Complainant. There is sufficient evidence to show that the goods offered for sale and sold by the Respondent are counterfeit. There can be no legitimate interests in the sale of counterfeits. In any event, as the Respondent has not responded, the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Complainant has satisfied its burden of proof of showing that the Respondent lacks rights or legitimate interests in the Domain Name. (see Wellquest International, Inc. v. Nicholas Clark,WIPO Case No. D2005-0552 and Farouk Systems, Inc. v. QYM,WIPO Case No. D2009-1572).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Trade Mark when it registered the Domain Name. The "copycat" Website and the products offered for sale on the Website makes this very clear. The Complainant has provided sufficient evidence that the registration of the Domain Name post dates the registration and use of the Trade Mark.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also concludes that the actual use of the Domain Name was in bad faith. The Website which mirrors the website of the Complainant is aimed at luring customers to believe that it belongs to the Complainant or is authorized by it. Moreover, the products offered for sale on the Website are counterfeit products for reasons set out in paragraph 6D. The use by a respondent of a domain name which includes a well-known trade mark to resolve to a website which offers and sells counterfeit products under that trade mark is evidence of bad faith registration and use. (See Burberry Limited v. Jonathan Schefren, WIPO Case No. D2008-1546 and Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019).
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent's Website are and the products sold on them are those of or authorised or endorsed by the Complainant. The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent's registration and use of the Domain Name were in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: March 12, 2015
Full & Egal Universal Law Academy