The Complainant is Cards Against Humanity, LLC, United States of America (the “United States”), represented by Mitchell, Silberberg & Knupp, LLP, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / li gang, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2020. On February 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 28, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 6, 2020 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 11, 2020. The Center verified that the Complaint together with the amended 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 March 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2020. The Center appointed Nicholas Smith as the sole panelist in this matter on April 7, 2020. 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 United States company that since 2009 has been involved in the creation and sale of the card game series known as “Cards Against Humanity”. This game involves players pairing of cards containing incomplete phrases to create humorous outcomes and has become enormously successful over the last decade. The Complainant maintains an official website at “www.cardsagainsthumanity.com” where the game can be purchased or downloaded for free. The Complainant holds a trademark registration for the mark consisting of the words Cards Against Humanity (the “CAH Mark”) being a United States trademark with a registration date of March 19, 2013, (registration No. 4,304,905). The Domain Name was registered on December 1, 2019. The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a website (the “Respondent’s Website”) that purported to sell the Complainant’s Cards Against Humanity game to the general public. The Complainant has submitted that due to the limited distribution channels through which the Complainant distributes the game and the lack of any connection between the Complainant and the Respondent such products are likely to be counterfeit. The Respondent’s Website reproduces the Complainant’s tag-line “a party game for horrible people”, reproduces photographs from the Complainant’s website, and contains no disclaimer. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: (i) that the Domain Name is identical or confusingly similar to the Complainant’s CAH Mark; (ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. The Complainant is the owner of the CAH Mark, having registered the CAH Mark in the United States. The Domain Name is confusingly similar to the CAH Mark as it reproduces the CAH mark in its entirety. There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve to a website that offers for counterfeit products under the Complainant’s CAH Mark without permission or consent from the Complainant, which does not amount to a bona fide offering of goods and services. The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website that offers counterfeit goods, the Respondent is using the Domain Name to divert Internet users interested in the Complainant to the Respondent’s Website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the CAH Mark, having a registration for the CAH Mark as a trademark in the United States. The Domain Name incorporates the CAH Mark in its entirety with the addition of the dictionary term “buy”. The addition of a dictionary term to a complainant’s mark is insufficient to prevent a finding of confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056. The Panel finds that the Domain Name is confusingly similar to the Complainant’s CAH Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (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 is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the CAH Mark or a mark similar to the CAH Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use. The Respondent has used the Domain Name to operate a website that seeks to pass itself off as a website operated by the Complainant, including offering similar goods under the Complainant’s CAH Mark. Given the lack of any connection between the Complainant and the Respondent and the limited distribution channels through which the Complainant sells its products it is highly likely that the products sold by the Respondent are not genuine Complainant products. If this is the case the Respondent’s use of the Domain Name does not grant it rights or legitimate interests since it is using the Complainant’s CAH Mark for a site selling counterfeit products. Even if the Respondent was offering the genuine Cards Against Humanity game from the Respondent’s Website, such use does not automatically grant it rights and legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.8, summarizes the consensus views of UDRP panels in assessing claims of nominative (fair) use by resellers or distributors in the following manner: “[…] Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark. The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.” In this case, the Respondent’s Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Rather the Respondent is actively impersonating the Complainant online including by reproducing copyrighted material from the Complainant’s website. Even in the event that the Respondent is reselling genuine CAH products, its use of the Domain Name for the Respondent’s Website does not grant it rights or legitimate interests in the Domain Name. Additionally, an individual viewing the Domain Name may be confused into thinking that the Domain Name refers to a site in some way connected to the Complainant. UDRP panels have largely held that if a domain name consists of a trademark plus an additional term, in this case “buy”, such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)). The Panel finds that the Respondent was aware of the Complainant and its reputation in the CAH Mark at the time the Domain Name was registered. The Respondent’s Website purported to offer goods in direct competition with the Complainant and impersonates the Complainant, including by reproducing copyrighted photos from the Complainant’s website. The registration of the Domain Name in awareness of the CAH Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith. The Respondent has used the Domain Name that wholly incorporates the CAH Mark, with the addition of the term “buy”, to offer card games, be they genuine or otherwise, in competition with the Complainant under the Complainant’s CAH Mark. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s CAH Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website (Policy, paragraph 4(b)(vi)). Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 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 Nicholas Smith
Sole Panelist
Date: April 17, 2020
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