The Complainant is Cards Against Humanity, LLC of Chicago, Illinois, United States of America (“United States”), represented by Cowan, DeBaets, Abrahams & Sheppard, LLP, United States.
The Respondent is yinsi baohu yi kai qi (Hidden by Whois Privacy Protection Service) of Chengdu, Sichuan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with West263 International Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2017. On March 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2017, 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 April 4, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On April 9, 2017, the Complainant requested for English to be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 the Respondent of the Complaint, and the proceedings commenced on April 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2017.
The Center appointed Douglas Clark as the sole panelist in this matter on May 15, 2017. 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 a Delaware limited liability company with its principal place of business in Chicago, Illinois, United States.
The Complainant created a card game whereby a card is drawn face up displaying an incomplete phrase, and the game has continuously used the name CARDS AGAINST HUMANITY since 2009.
The Complainant is the owner of the registered trademarks CARDS AGAINST HUMANITY and/or device on the principal register of the United States Patent and Trademark Office (for example, registration no. 4304905 for the word mark CARDS AGAINST HUMANITY, registered on March 19, 2013). The Complainant has not identified any registrations outside the United States in its Complaint.
The dispute domain name was registered on October 24, 2016.
The Respondent is Yinsi Baohu Yi KaiQi of Chengdu, Sichuan, China.
The disputed domain name resolves to a website which prominently features the Complainant’s trademark and displays and offers for sale numerous products bearing the Complainant’s trademarks. Internet users can buy products in connection with the Complainant from the website under the disputed domain name. The website provides a contact address as “3rd Avenue, New York” and a 24/7 phone support at +1 (888) 888 8888. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are as follows. Identical or Confusingly Similar
The Complainant contends that the disputed domain name and the trademark CARDS AGAINST HUMANITY are identical or confusingly similar. The disputed domain name incorporates the entirety of the Complainant’s trademark with the addition of the generic term “games”. No rights or legitimate Interests
The Respondents have no connection with the Complainant and has never sought or obtained any trademark registrations for the trademark CARDS AGAINST HUMANITY. The Respondent is not a licensee of the Complainant. It, therefore, has no rights or legitimate interests in the disputed domain name. These arguments appear to be based on the allegation made in the Complaint by the Complainant that the Respondent is dealing in counterfeit goods. Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondents knew of the Complainant’s rights in the trademark CARDS AGAINST HUMANITY given the Complainant’s online presence and success. The website under the disputed domain name also appears to be an e-commerce platform that falsely promotes and sells the products which have a connection with the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceedings
The language of the Registration Agreement is in Chinese.
The Complainant requests that the language of proceedings be English on the grounds that the disputed domain name is made up entirely of English words, the website under the disputed domain name is entirely in English, the “get in touch” functions on the website are in English, a welcome email is sent in English and the Respondent gives an address in the United States.
The Respondents did not respond to this request.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding.”
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceedings lies with this Panel.
The Respondent did not respond to the Center’s preliminary determination. This Panel decided in Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceedings “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. The website under the disputed domain name is written entirely in English and designed to do business worldwide in English. The Respondent gives an address in the United States. There can be no doubt that the Respondent is able to handle these proceedings in English.
In the circumstances of this case, the Panel determines that English shall be the language of the proceeding. As the only documents before the Panel are in English, the decision will be issued in English. 6.2. Substantive Issues A. Identical or Confusingly Similar
The disputed domain name is made up of the registered trademark CARDS AGAINST HUMANITY combined with the generic and descriptive words “games” and the Top-Level Domain (TLD) “.com”. The addition of the generic and descriptive words serve to deliver the message that the site under the disputed domain name is selling products in connection with games and is therefore confusingly similar to the trademark CARDS AGAINST HUMANITY.
The Panel notes that the Complainant has not asserted any trademark rights in China where the Respondent is based. However, the website under the disputed domain name specifically states that it is based in the United States and will make sales to the United States where the Complainant has asserted rights. In any event, given the global nature of the Internet and Domain Name System, the jurisdiction where a trademark is valid is not considered relevant to panel assessment under the first element.
Similarly, the goods and/or services for which the mark is registered or used in commerce, the filing/priority date, date of registration, and date of claimed first use, are not considered relevant to the first element test. These factors may however bear on a panel’s further substantive determination under the second and third elements. (see paragraph 1.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Jurisprudential Overview 3.0”)).
The first element of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests.
Paragraph 2.1 of the WIPO Jurisprudential Overview 3.0 provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish they have rights and legitimate interests. These are:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads.
However, the circumstances of this case do require the Panel to consider paragraph 4(c)(i). The Respondent is using the website under the disputed domain name to offer playing cards by use of the Complainant’s registered trademark CARDS AGAINST HUMANITY. The question is, is such use bona fide? The principal basis that the Complainant asserts the Respondent has no rights or legitimate interests is that the Respondent is selling counterfeit or diverted products.
However, the Complainant has only made bare assertions without providing any evidence that the products are counterfeit or, if they are diverted, what laws are being breached. The Panel is not prepared to accept these bare assertions and will proceed to decide the case on the basis the Respondent is selling genuine products.
In principle, it is not an infringement of a trademark to resell or promote for resale genuine trademarked goods by reference to the mark. A seller can make use of a trademark in a domain to sell genuine products.
However, in in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903 (“Oki Data”), the panel in that case held that to be “bona fide” within the meaning paragraph 4(c)(i), the offering should meet the following requirements:
- The Respondent must actually be offering the goods or services at issue;
- The Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- The site must accurately disclose the registrant’s relationship with the trademark owners; it may not, for example, false suggest that it is the trademark owner, or that the website is the official site; and
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In this case the Respondent does not meet, at least, the third requirement set out above. The website under the domain name does not accurately disclose its relationship with the Complainant. In fact, the website appears to disclose inaccurate information as to how to contact the Respondent. The address given is 3rd Avenue New York without any further details. The telephone support number is +1 (888) 888 8888, which appears to be fake, and there is only an email address given for contact.
The Panel, therefore, finds the Respondent is not making bona fide use of the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
Given its findings in relation to rights and legitimate interests, the Panel has no hesitation in finding that the disputed domain name was registered in bad faith and is being used in bad faith.
This case clearly falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The third element of paragraph 4(a) of the Policy is therefore satisfied. 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 disputed domain name, , be transferred to the Complainant.
Douglas Clark
Sole Panelist
Date: June 5, 2017
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