WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cards Against Humanity, LLC v. Whoisguard Protected, Whoisguard, Inc. / Berry Ardiansyah
Case No. D2017-1113
1. The Parties
The Complainant is Cards Against Humanity, LLC of Chicago, Illinois, United States of America (“United States” or “US”), represented by Cowan, DeBaets, Abrahams & Sheppard, LLP, United States.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama, Panama / Berry Ardiansyah of Jakarta, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <cardsagainsthumanitytarget.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2017. On June 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 12, 2017, 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 June 19, 2017.
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 June 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2017.
The Center appointed James Bridgeman as the sole panelist in this matter on July 24, 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 manufactures a comical card game and related expansion packs, boxes, and specialty cards which are marketed using the CARDS AGAINST HUMANITY mark and sold only through limited channels of retail distribution in the US and directly to purchasers on the Internet.
Since its launch in 2009, the Complainant’s game has gained popularity, reaching an audience of millions around the world.
The Complainant is the owner of the following trademarks:
- US trademark CARDS AGAINST HUMANITY registration number 4,304,905 registered on March 19, 2013 in respect of card games and game cards in international class 28, claiming first use in commerce on December 30, 2010; and
- US trademark CARDS AGAINST HUMANITY A PARTY GAME FOR HORRIBLE PEOPLE (Design) registration number 4,623,613 registered on October 21, 2014 in respect of card games and game cards in international class 28, claiming first use in commerce on January 30, 2011.
The only information available about the Respondent is that found on the Registrar’s WhoIs, information provided by the Registrar and the Complainant’s submissions. The Registrar has confirmed that the Respondent registered the disputed domain name using a proxy registration service. References in this decision to “Respondent” refer to the underlying registrant except where the context indicates otherwise.
The disputed domain name <cardsagainsthumanitytarget.com> was registered on September 7, 2016. The Complainant has provided evidence that the disputed domain name resolved to a website that purported to offer the Complainant’s products for sale alongside third-party competing products.
5. Parties’ Contentions
The Complainant relies on the abovementioned registered trademarks and its claimed goodwill in the CARDS AGAINST HUMANITY mark acquired through the extensive promotion, advertisement, and use of the mark at trade shows and point-to-sale display materials since 2009 and on its official website at “www.cardsagainsthumanity.com”.
The Complainant submits that the disputed domain name is confusingly similar, and is in fact identical, to the Complainant’s mark. Citing the decision in Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd., WIPO Case No. D2001-0398, the Complainant submits that the incorporation of a trademark in its entirety in a domain name is sufficient to establish that the domain name is identical or confusingly similar to the complainant’s registered mark.
Moreover the Complainant argues that since the phrase “Cards Against Humanity” functions both as the Complainant’s trademark and business name, courts and UDRP administrative panels have recognized that consumers expect to find a trademark owner on the Internet at a domain name address composed of the company’s name or mark. See Panavision International, L.P. v. Toeppen, 141 F.3d 1316, 1326 (9th Cir 1998).
The Complainant submits that the fact that the word “target” is included in the disputed domain name does not preclude a finding of confusing similarity. The word “target” can be seen as either a generic word or as the trademark of the famous retail company, Target Corporation, which is one of the Complainant’s largest authorized bricks-and-mortar retailers and is also authorized by the Complaint to sell its genuine products on its website. The Complainant submits that the addition of the word “target” therefore in fact heightens the likelihood of consumer confusion, as consumers searching online for the Complainant’s authorized products available from Target’s website will be misdirected to the Respondent’s infringing website instead, thereby resulting in confusion. In support of this assertion the Complainant cites the panel decisions in Missoni S.p.A. v. Matt Justice, WIPO Case No. D2012-0555 (“Given the relationship between the Complainant and the Target Company, consumers will be lured on Respondent’s website and will be prone to believe that the goods marketed MISSONI are offered on Target Company’s official website”); and Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640) a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896, (addition of third party’s mark “merely adds to the potential confusion of Internet users as to the source, sponsorship and affiliation of the Domain Name”).
The Complainant submits that even if the word “target” is viewed as a common word, it does not serve to make the disputed domain name distinguishable from the Complainant’s CARDS AGAINST HUMANITY mark. In this regard the Complainant cites the decisions in Cards Against Humanity, LLC v. yinsi baohu yi kai qi, WIPO Case No. D2017-0574 (disputed domain name made up of the registered trademark CARDS AGAINST HUMANITY combined with the generic and descriptive word “games” and the Top-Level Domain (“TLD”) “.com” was confusingly similar) and Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694, where it was found that “a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” The Complainant argues that this is especially true when, as in this Complaint, the mark is well-known, citing Renault S.A.S. v. Dhugal Clark, WIPO Case No. D2009-1354.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name and is not using the disputed domain name for any bona fide or otherwise fair purpose. The CARDS AGAINST HUMANITY mark belongs exclusively to the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent obtained permission, either express or implied, from the Complainant to use the Complainant’s mark, or any domain name incorporating such mark, either at the time that the Respondent registered and began using the disputed domain name, or at any time since.
The Complainant asserts that it closely controls and monitors the use of the CARDS AGAINST HUMANITY marks and the distribution and marketing of authorized goods bearing the mark.
Only the Complainant itself designs, manufactures and markets the Complainant’s card game and legitimate copies of the cards and other products comprising the game can only be purchased directly from the Complainant’s official website, or through licensed US retailers that have purchased the Complainant’s products through its US wholesale program.
The Complainant submits that there is no evidence that the Respondent has ever operated any bona fide or legitimate business under the disputed domain name, and the Respondent is not making a protected noncommercial or fair use of the disputed domain name. The Complainant alleges that by incorporating the Complainant’s registered trademark into the disputed domain name, the Respondent uses the disputed domain name to misdirect or “bait” Internet users seeking the Complainant’s products to its own site, where it claims to sell the Complainant’s genuine merchandise along with competing products.
There is also no evidence that would indicate that the Respondent is commonly known by the Complainant’s mark.
The Complainant further argues that the Respondent’s activities demonstrate neither a bona fide offering of goods or services, nor a legitimate interest, and do not give the Respondent the right to register and use the Complainant’s mark as a domain name without the consent of the Complainant.
The Respondent’s misappropriation of the disputed domain name for the purpose of selling legitimate, or possibly counterfeit merchandise – as well as competing card game products – was no accident. Where a mark is famous, as in the instant case, it is “not one traders would legitimately choose unless seeking to create an impression of an association” with the Complainant, citing Telestra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Complainant further alleges that the disputed domain name resolves to a fraudulent website maintained by the Respondent which prominently appropriates the Complainant’s mark and trade dress and falsely suggests that the Respondent is somehow affiliated with the Complainant and its products. The Respondent’s website is in the English language, prices are stated in US dollars and the overall look and feel is substantially similar to the Complainant’s own website. As evidence supporting this assertion, the Complainant has attached screenshots of its own and the Respondent’s website for the purposes of comparison.
The Complainant furthermore submits that the Respondent’s website also offers for sale unauthorized card storage cases printed with phrases such as “The Big Black Metal Box” and “Case for Humanity”; and t-shirts printed with text from the Complainant’s game (“In a world ravaged by _____”). The unauthorized cases and t-shirts feature white text in Helvetica Neue font against a black background which constitutes further infringements of the Complainant’s trade dress.
In its overall effect the website to which the disputed domain name resolves not only creates the impression that the infringing website is selling the Complainant’s genuine products, but that it is operated, endorsed by, or affiliated with the Complainant when it is not.
The Respondent’s website also offers numerous competing card games and other products, creating the impression that these other games and products are sponsored or produced by the Complainant when they are not, and therefore causing further consumer confusion.
The Complainant submits that the Respondent registered the disputed domain name in bad faith with knowledge of the Complainant’s rights in the CARDS AGAINST HUMANITY marks. The Complainant has had an online presence marketing the game continuously since 2009. It is inconceivable that the Respondent was unaware of the Complainant’s rights when the disputed domain name was registered. The Complainant adds that the Respondent is also deemed to have constructive knowledge of Complainant’s trademark rights by virtue of its abovementioned registered trademarks.
The Complainant submits that the Respondent registered the disputed domain name in order to trade off the Complainant’s mark and reputation by creating a false impression of association between the Complainant and the Respondent, and to thereby attract Internet users seeking information or products related to the Complainant’s products and services to the Respondent’s website.
The Complainant also argues that the Respondent’s use of the disputed domain name creates initial interest confusion by using the Complainant’s mark in the disputed domain name and argues that this is further evidence of the Respondent’s bad faith use of the disputed domain name. In this regard the Complainant cites the panel decisions in Osuuspankkikeskus Osk v. RegisterFly.com, WIPO Case No. D2006-0461, (paragraph 4(b)(iv) of the Policy is “concerned with the intentional attracting of Internet users” and the Respondent “used the Disputed domain name to create ‘initial interest confusion’ on the part of the Internet users seeking the Complainant and in order to profit from at least some of that traffic”) and Jafra Cosmetics, S.A. de C.V. v. Jafraproducts Admin, WIPO Case No. D2006-0416 (referencing initial interest confusion in the panel’s decision regarding bad faith registration and use).
The Complainant further submits that the Respondent’s actions will damage the CARDS AGAINST HUMANITY mark and the Complainant’s assets. The Respondent must have expected that any use of the disputed domain name would cause harm to Complainant.
In conclusion the Complainant submits that while use of a privacy service does not in and of itself constitute bad faith under the Policy, the manner in which such service is used may contribute to a finding of bad faith as was found by the panel in HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 (noting that “privacy services are subject to manipulation by a registrant seeking to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy or elsewhere”).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to establish that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided convincing evidence of its rights in the CARDS AGAINST HUMANITY trademark through its ownership of the abovementioned US trademark registrations.
The disputed domain name consists of the Complainant’s mark in combination with the word “target” and the TLD “.com” extension.
Having compared both, this Panel finds that the Complainant’s mark is the dominant element of the disputed domain name. The addition of the word “target” either refers to a third party distributor of the Complainant’s goods or else it has no apparent meaning. Either way in the view of this Panel, the disputed domain name is confusingly similar to the Complainant’s mark. In the present case the TLD “.com” extension may be ignored for the purposes of comparison.
In the circumstances, this Panel finds that the Complainant has succeeded in the first element of the test in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is the owner of the CARDS AGAINST HUMANITY mark and has alleged that the Respondent has no association or affiliation with the Complainant; the Respondent has not been authorized to use the mark in the disputed domain name or otherwise; the Respondent is not an authorized reseller of the Complainant’s CARDS AGAINST HUMANITY trademarked goods; the Respondent is using the disputed domain name to resolve to a website which infringes the Complainant’s trademark and trade dress rights, and offers possibly infringing goods and certainly goods that compete with the Complainant’s goods.
In such circumstances the burden of production shifts to the Respondent who has not filed any Response or made any attempt to rebut any of the allegations made by the Complainant.
In the absence of any Response to the allegations of the Complainant, this Panel finds that on the evidence, the Respondent has no rights or legitimate interests in the disputed domain name and the Complainant has succeeded in the second element of the test in paragraph 4(a) of the Policy also.
C. Registered and Used in Bad Faith
CARDS AGAINST HUMANITY is a distinctive mark. It is most improbable that anyone would choose the disputed domain <cardsagainsthumanitytarget.com> without prior knowledge of the Complainant and its business. The manner in which the disputed domain name is being used, i.e., to resolve to a website which purports to offer the Complainant’s goods, further supports this conclusion. In the circumstances this Panel finds that the disputed domain name was registered in bad faith in order to take unauthorized, predatory advantage of the Complainant’s goodwill in the CARDS AGAINST HUMANITY mark.
The Complainant has alleged that it is probable that the Respondent is selling counterfeit products on the website to which the disputed domain name resolves. The submission is based on the fact that the Complainant closely controls and monitors the supply channels for its goods and the Respondent has not been supplied by the Complainant. This allegation has not been denied by the Respondent.
Even if this Panel were to find that there is not sufficient evidence to find that the goods on offer on the Respondent’s website are counterfeit, the evidence nonetheless shows that the Respondent is using the disputed domain name, or permitting the use of the disputed domain name, as the address of a website that is offering competing products to Internet users. It is well established in decisions under the Policy that resellers are not permitted to use a complainant’s mark in order to attract business to a website that offers third-party competing products.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that under the test applied when assessing possible nominative fair use by resellers or distributors is found in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data test”) which provides that “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 ʻcorner the marketʼ in domain names that reflect the trademark.”
Furthermore in the present case the use of the confusingly similar disputed domain name is likely to create an initial interest confusion and the Respondent’s website has been designed in such a way as to create the impression through the look and feel of its design to create the false impression that there is some connection between the disputed domain name and the Complainant.
In the circumstances this Panel finds that the disputed domain name is being used in bad faith to misdirect or “bait” Internet users seeking the Complainant’s products and divert them to the Respondents website which offers competing goods.
The Complainant has therefore succeeded in the third and final element of the test in paragraph 4(a) of the Policy and is entitled to the relief sought.
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, <cardsagainsthumanitytarget.com>, be transferred to the Complainant.
Date: July 27, 2017