DECISION

 

Cards Against Humanity, LLC v. sri winarti

Claim Number: FA1706001736823

PARTIES

Complainant is Cards Against Humanity, LLC (“Complainant”), represented by Eleanor M. Lackman of Cowan, DeBaets, Abrahams & Sheppard LLP, New York, USA.  Respondent is sri winarti (“Respondent”), Indonesia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cardsagainsthumanity.us>, registered with NameCheap, Inc..

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 21, 2017; the Forum received payment on June 21, 2017.

 

On June 22, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <cardsagainsthumanity.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name.  NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On June 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cardsagainsthumanity.us.  Also on June 26, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On July 18, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”).  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, Cards Against Humanity, LLC, is a card game manufacturer. In connection with this business, Complainant uses the CARDS AGAINST HUMANITY® mark to promote its goods and services and has rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,304,905, registered Mar. 19, 2013). See Compl., at Attached Ex. 2. Respondent’s <cardsagainsthumanity.us> is identical to Complainant’s mark as it wholly incorporates the mark and appends the country code top-level-domain

(“ccTLD”) “.us.”

2.    Respondent lacks rights and legitimate interests in the disputed domain name. Complainant did not authorize Respondent to use the CARDS AGAINST HUMANITY mark, nor is Respondent commonly known by the disputed domain name. Respondent failed to use <cardsagainsthumanity.us> in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent hosts pay-per-click advertising on a resolving website containing many of Complainant’s marks and designs. See Compl., at Attached Ex. 4.

3.    Respondent registered and uses <cardsagainsthumanity.us> in bad faith. Respondent intentionally attracts Internet users seeking Complainant to Respondent’s website for commercial gain. Respondent had actual knowledge of Complainant’s rights in the CARDS AGAINST HUMANITY marks prior to registration and use of the disputed domain name. Respondent failed to respond to Complainant’s cease and desist letter. Respondent’s use of the disputed domain name creates initial interest confusion.

 

B.   Respondent

1.    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <cardsagainsthumanity.us> domain name is confusingly similar to Complainant’s CARDS AGAINST HUMANITY mark.

2.    Respondent does not have any rights or legitimate interests in the <cardsagainsthumanity.us> domain name.

3.    Respondent registered or used the <cardsagainsthumanity.us> domain name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)

(“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

Complainant asserts rights in the mark based upon registration with the USPTO (Reg. No. 4,304,905, registered Mar. 19, 2013). See Compl., at Attached Ex. 2. Pursuant to Policy ¶ 4(a)(i), registration of a mark with a government trademark authority—such as the USPTO— establishes rights in said mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel therefore finds Complainant has rights in the CARDS AGAINST HUMANITY mark.

 

Next, Complainant argues Respondent’s <cardsagainsthumanity.us> is identical to Complainant’s mark as it wholly incorporates the mark and appends the ccTLD “.us.” Where the only addition to a complainant’s mark is the ccTLD “.us,” prior panels have found the resulting domain name to be identical to said complainant’s mark pursuant to Policy ¶ 4(a)(i). See MIGROS-GENOSSENSCHAFTS-BUND v. Tayfun yalcin, FA 1621184 (Forum July 8, 2015) (“In light of the fact that Respondent’s disputed domain name incorporates Complainant’s whole mark and merely adds the ccTLD “.us,” the Panel here finds that the disputed domain name is identical to Complainant’s MIGROS mark.”). The Panel therefore finds Respondent’s <cardsagainsthumanity.us> to be identical to Complainant’s CARDS AGAINST HUMANITY mark.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)

(“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain

names.”).

 

Complainant argues Respondent lacks rights and legitimate interests in the disputed domain name. Complainant did not authorize Respondent to use the CARDS AGAINST HUMANITY mark, nor is Respondent commonly known by the disputed domain name. Where a respondent fails to submit a Response, WHOIS information can substantiate a finding that a respondent is not commonly known by a disputed domain name; likewise, when a complainant does not authorize a respondent to use a mark, prior panels have found said respondent to not be commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, the WHOIS information of record names “sri winarti / NA” as the Registrant of <cardsagainsthumanity.us> and Complainant asserts it did not authorize Respondent to use the CARDS AGAINST HUMANITY mark. The Panel therefore finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).

 

Next, Complainant asserts Respondent failed to use <cardsagainsthumanity.us> in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent hosts pay-per-click advertising on a resolving website containing many of Complainant’s marks and designs. See Compl., at Attached Ex. 4. Pursuant to Policy ¶¶ 4(c)(i) & (iii), passing off as a complainant and hosting pay-per-click advertising does not reveal a finding that a respondent made a bona fide use of a disputed domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel therefore finds Respondent lacks rights and legitimate interests in the disputed domain name.

 

Registration or Use in Bad Faith

Respondent registered and uses <cardsagainsthumanity.us> in bad faith. Respondent intentionally attracts Internet users seeking Complainant to Respondent’s website for commercial gain via click-through advertising. Use of a disputed domain name to capitalize on the notoriety of a complainant’s mark and profit from said notoriety through advertising evokes a finding of bad faith per Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Respondent’s domain name contains Complainant’s marks, as well as images of Complainant’s products. See Compl., at Attached Ex. 4. The Panel agrees with Complainant’s assertion and finds Respondent acted in bad faith per Policy ¶ 4(b)(iv).

 

Next, Complainant asserts Respondent had actual knowledge of Complainant’s rights in the CARDS AGAINST HUMANITY marks prior to registration and use of the disputed domain name. Actual knowledge of rights in a mark can be determined through an analysis of the totality of the circumstances per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Respondent has fully incorporated Complainant’s mark extensively in the domain name and the resolving webpage. See Compl., at Attached Ex. 4. As such, the Panel finds Respondent had actual knowledge of Complainant’s mark at the time of registration and find further evidence of Respondent’s bad faith.

 

Next, Complainant contends Respondent failed to respond to Complainant’s cease and desist letter. Failure to respond to a cease and desist letter can evoke a finding of bad faith per Policy ¶ 4(a)(iii). See Garrison Keillor, Minnesota Public Radio, Inc. v. Paul Stanton, FA 98422 (Forum Aug. 28, 2001) (Respondent’s failure to respond to Complainant's June 12, 2001, letter further demonstrates Respondent's lack of good faith intent in registration and use of the domain name.). Given that Respondent failed to respond to the Complaint as well, the Panel uses this as further evidence of bad faith.

 

Last, Complainant argues Respondent’s use of the disputed domain name creates initial interest confusion. Where the expected use of a domain name would lead people to believe another party owns said domain name, panels have found bad faith per Policy ¶ 4(a)(iii). See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith). Here, Respondent’s use of a domain name that wholly appropriates Complainant’s mark and appends the ccTLD “.us” would infer to Internet users that <cardsagainsthumanity.us> is an official site of Complainant’s. As such, the Panel finds evidence of Respondent’s bad faith use of the disputed domain name.

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <cardsagainsthumanity.us> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  July 31, 2017