WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cards Against Humanity, LLC v. Registration Private, Domain Shield

Case No. D2018-2320

1. The Parties

Complainant is Cards Against Humanity, LLC of Chicago, Illinois, United States of America (“United States” or “U.S.”), represented by Cowan, DeBaets, Abrahams & Sheppard LLP, United States.

Respondent is Registration Private, Domain Shield of Victoria, British Columbia, Canada.

2. The Domain Name and Registrar

The disputed domain name <cardsagainsthumanity.org> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2018. On October 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 15, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

Further to a request for clarification of an apparent inconsistency in the name of Respondent in the Complaint, on November 1, 2018, Complainant submitted a declaration clarifying the named Respondent in the Complaint.

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 Respondent of the Complaint, and the proceedings commenced on November 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 23, 2018.

The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on December 3, 2018. 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

According to Whois the Domain Name was registered on June 21, 2018. At the filing of the Complaint, the Domain Name resolved to a website appearing to offer Complainant’s goods for sale. Currently, the Domain Name does not resolve to an active website.

Complainant is a Delaware limited liability company with its principal place of business at Chicago, Illinois, United States. Complainant manufactures and sells a proprietary card game entitled “Cards Against Humanity”.

Complainant is the registered owner of the CARDS AGAINST HUMANITY Mark under United States registration No. 4,304,905, registered March 19, 2013 (“Complainant’s Mark”).

5. Parties’ Contentions

A. Complainant

Complainant states that it created a card game entitled “Cards Against Humanity,” whereby a card is drawn face up displaying an incomplete phrase. Each player has a hand of cards that can be used to complete that phrase. The person whose card completes the phrase in the funniest way wins the round. Complainant contends that it is known for creating cards with comical, often playfully offensive, content, and the game is most often played among a group of friends.

Complainant contends that it has designed, manufactured, and marketed the “Cards Against Humanity” game, including “base” card sets, expansion and specialty packs, and other related products by the same name (collectively, “Complainant’s Game”), since December 2009 and sells Complainant’s Game through specific and limited channels.

Complainant states that Complainant’s Game consists of:

(a) Complainant’s Mark;
(b) the tagline A PARTY GAME FOR HORRIBLE PEOPLE (U.S. Reg. No. 4,301,057);
(c) the acronym CAH (U.S. Reg. No. 5,245,938) (the “CAH Acronym”); and
(d) the distinctive trade dress, consisting of white lettering on a black background with vertically aligned text in Helvetica Neue font (U.S. Reg. No. 4,623,613) (the “CAH Trade Dress”) (collectively, the “CARDS AGAINST HUMANITY Marks”).

Complainant submits that Complainant’s Game has become an Internet phenomenon over the last decade, gaining enormous popularity, reaching an audience of millions around the world, and earning millions of dollars in revenues.

Complainant also asserts that it is acknowledged by the gaming industry and the general public as an industry leader, recognized for the high quality, ingenuity, and creativity of Complainant’s Game. Specifically, Complainant’s Game has been recognized and promoted by “amazon.com” as the “#1 Best Seller” game sold on its storefront; featured in leading game-related guides such as Kotaku (“www.kotaku.com”); and reviewed and heralded in multiple publications and on popular Internet sites including, but not limited to, The New York Times, The Wall Street Journal, Huffington Post, Thrillist and BoingBoing.

Complainant asserts that it has extensively promoted, advertised, and used the CARDS AGAINST HUMANITY Marks at trade shows, point-to-sale display materials, and on its official website at “www.cardsagainsthumanity.com” (the “CAH Website”).

Complainant further states that it also uses Complainant’s Mark as its business name. Complainant obtained federal registration for the CAH Mark in 2013, the CAH Trade Dress in 2014, and the CAH Acronym in 2017, all of which pre-date the registration of the Domain Name in 2018.

Complainant further asserts that it closely controls and monitors the use of the CARDS AGAINST HUMANITY Marks, including the distribution of authorized goods bearing or marketed under the CARDS AGAINST HUMANITY Marks. Complainant designs, manufactures and markets Complainant’s Game, and the only places to purchase legitimate copies of the Game are directly from the CAH Website; Complainant’s official “amazon.com” pages; or select, licensed United States game stores that have purchased Complainant’s products through Complainant’s new United States wholesale program.

Complainant states that Respondent is not affiliated with Complainant, nor has Complainant ever authorized, licensed, or otherwise permitted Respondent to use the CARDS AGAINST HUMANITY Marks in any way. Complainant goes on to contend that Respondent has maintained a fraudulent website located at the Domain Name which prominently features the CARDS AGAINST HUMANITY Marks, and displays advertisements that link to “amazon.com” listings offering Complainant’s products, products that compete with Complainant’s Game, and unrelated products.

Complainant submits that Respondent’s use of the CARDS AGAINST HUMANITY Marks creates the impression that the Domain Name is operated, endorsed by, or affiliated with Complainant when it is not, and therefore the Domain Name is likely to cause consumer confusion. Respondent is taking advantage of Internet users’ initial interest confusion for its own commercial advantage.

Complainant claims that Respondent has registered the Domain Name, and has maintained a website at that address in bad faith, as the Domain Name fully incorporates and is identical and confusingly similar to Complainant’s Mark, and the CAH Word Mark.

There is no evidence that would indicate that Respondent is commonly known by any of the CARDS AGAINST HUMANITY Marks. Nor is there evidence that Respondent has ever operated any bona fide or legitimate business under the Domain Name, and Respondent is not making a protected noncommercial or fair use of the Domain Name.

Complainant asserts that Respondent has registered the Domain Name in bad faith, by doing so with knowledge of Complainant’s rights in the CARDS AGAINST HUMANITY Marks. Complainant has had an online presence and has been selling and marketing Complainant’s Game since 2009. Respondent directly refers to Complainant and various CARDS AGAINST HUMANITY branded products throughout the website, including in the “CAH Boxes” sub-section and via a hyperlink providing a downloadable sample of Complainant’s Game. Complainant submits that these references evidence Respondent’s actual knowledge of Complainant and its CARDS AGAINST HUMANITY Marks, and thereby Respondent has registered the Domain Name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant is the registered owner of the CARDS AGAINST HUMANITY Mark under United States registration No. 4,304,905, defined herein as Complainant’s Mark. Complainant has shown that it designed, made and marketed the “Cards Against Humanity” game, including “base” card sets, expansion and specialty packs, and other related products since 2009.

The Domain Name reproduces Complainant’s Mark in its entirety, apart from the generic Top-Level Domain “.org”.

Accordingly, the Panel finds that:

a) Complainant has rights in respect of Complainant’s Mark.

b) The Domain Name is identical to or certainly confusingly similar to Complainant’s Mark.

Accordingly, the Panel is satisfied that the first element of the Policy has been met.

B. Rights or Legitimate Interests

Respondent has no apparent rights or legitimate interests in the Domain Name; nor is there any evidence that Respondent is permitted or authorized to use Complainant’s Mark. In addition, there is no evidence that Respondent is known by the Domain Name, nor that it is making a legitimate offering of goods or services under or by reference to the Domain Name.

Complainant alleges that Respondent maintains a fraudulent website located at the Domain Name which prominently features Complainant’s Mark, the CARDS AGAINST HUMANITY Marks, and displays advertisements that link to “amazon.com” listings offering Complainant’s products, products that compete with Complainant’s Game, and unrelated products. These concerns appear to be well-founded. In the absence of any denial or explanation from Respondent it is found that Respondent has no rights or legitimate interests in the Domain Name.

The Panel is satisfied that the second element of the Policy has been met.

C. Registered and Used in Bad Faith

In terms of bad faith conduct, Complainant claims that Respondent directly refers to Complainant and its various products on Respondent’s website. Complainant submits that these references evidence Respondent’s actual knowledge of Complainant and Complainant’s Mark. Complainant further argues that the obvious similarities between the Domain Name and Complainant’s Mark establish Respondent’s bad faith efforts to capitalize on the goodwill associated with, inter-alia, Complainant and Complainant’s Mark, by registering and using the Domain Name in bad faith.

There is clear merit in these submissions and the Panel has no difficulty in finding that this amounts to bad faith conduct and accordingly that the third element of the Policy has been met.

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 <cardsagainsthumanity.org> be transferred to Complainant.

Clive L. Elliott Q.C.
Sole Panelist
Date: December 18, 2018