The United States Playing Card Company v jack chen

WIPO Case No. D2025-1084

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

The United States Playing Card Company v. jack chen

Case No. D2025-1084

1. The Parties

The Complainant is The United States Playing Card Company, United States of America (“United States”), represented by IP Hills NV, Belgium.

The Respondent is jack chen, United Kingdom (“UK”).

2. The Domain Name and Registrar

The disputed domain name <bicycle-cards.com> is registered with Gname.com Pte. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2025. On March 17, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 18, 2025, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 18, 2025, 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 20, 2025.

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 27, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 16, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on April 17, 2025.

page 2

The Center appointed Tobias Malte Müller as the sole panelist in this matter on May 2, 2025. 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

It results from the Complainant’s undisputed allegations that it is an American manufacturer of playing cards, with a history dating back to 1867. The Complainant began producing its BICYCLE-branded playing cards, which are currently promoted and sold under “bicyclecards.com”, in 1885.

According to the evidence provided by the Complainant, which has not been contested by the Respondent, the Complainant is the registered owner of several trademark registrations consisting of or containing the term BICYCLE, such as:

(1)	European Union Trademark No. 012071759 registered on December 26, 2013, for playing
cards,
(2)	United States Trademark No. 48891 BICYCLE (verbal) registered on January 16, 1906, for playing
cards.

These trademarks have duly been renewed and are in force.

The Respondent registered the disputed domain name on November 19, 2024. The disputed domain name resolved to a website that imitated the Complainant’s official site under almost the same domain name as the Complainant’s registered domain name <bicyclecards.com>. In particular, the website at the disputed

domain name: (i) prominently displayed the Complainant’s BICYCLE logo trademark (among others); (ii) used original product photos without permission; and (iii) allegedly offered the Complainant’s products – at least in part– at steeply discounted prices (e.g., “MAXIMUM DISCOUNTS 80% OFF”).

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

(1) The Respondent cannot contest that the disputed domain name is confusingly similar to the BICYCLE

trademarks owned by the Complainant. The mere addition of descriptive term “cards” to the disputed
domain name does not change the overall impression of the designation as being connected to the
Complainant’s trademark;

(2) It is clear to the Complainant that the disputed domain name was registered by someone who has no rights or legitimate interests in respect of said domain name. In particular, the Complainant could not find any relevant trademark rights, the Respondent is not commonly known by the disputed domain name, the Complainant did not consent to the registration and use of the disputed domain name and the Respondent does not have any connection or affiliation with the Complainant. In addition, the disputed domain name was used for a website which is a blatant copy of the Complainant’s website under “bicyclecards.com”;

(3) The disputed domain name has been registered and is being used in bad faith. Indeed, the

Respondent cannot reasonably claim that it was not aware of the existence of the Complainant, its

page 3

trademarks and goods at the time of registering the disputed domain name. The combination of BICYCLE and “cards” makes it impossible for the Respondent to have come up with registering the disputed domain name purely by coincidence, particularly considering the use of the disputed domain name to resolve to a website mimicking the official website of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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 a complainant to prove each of the following three elements in order to obtain an order that each disputed domain name be transferred:

(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.

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy,
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy, WIPO Overview 3.0, section 1.7.

Although the addition of other terms or elements - here, “-cards” may bear on assessment of the second and third elements, the Panel finds the addition of such a term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy, WIPO Overview 3.0,

section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although 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 difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the

page 4

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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisfied the second element, WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

As detailed above, the disputed domain name has resolved to a website that imitated the Complainant’s official site without authorization. In particular, said website: (i) prominently displayed the Complainant’s BICYCLE logo trademark (among others); (ii) used original product photos without permission; and (iii) allegedly offered the Complainant’s products – at least in part– at steeply discounted prices (e.g.,

“MAXIMUM DISCOUNTS 80% OFF”). There is no accurate and prominent disclaimer regarding the
Respondent’s (non-existent) relationship with the Complainant on the website at the disputed domain name.

Moreover, the Panel notes that the disputed domain name contains the Complainant’s registered trademark BICYCLE combined with the term “-cards” which is inherently descriptive for the Complainant’s field of commerce since more than a century. It is acknowledged amongst previous panels that such additional terms within the trademark owner’s field of commerce may or may not by themselves trigger an inference of affiliation, and would normally require a further examination by the panel of the broader facts and circumstances of the case – particularly including the associated website content – to assess potential respondent rights or legitimate interests, WIPO Overview 3.0 at section 2.5.1. In the present case, taking into account that the website to which the disputed domain name resolves is an imitation of the Complainant’s website, allegedly selling the Complainant’s products at – in part – highly discounted prices and reproducing without authorization the Complainant’s trademarks and product pictures, the Panel sees the disputed domain name as tending to suggest sponsorship or endorsement by the trademark owner.

The composition of the disputed domain name directly targeting the Complainant’s field of activity enhances the false impression that the disputed domain name is somehow related to the Complainant and its official website. Such composition of the disputed domain name cannot constitute fair use if it effectively

impersonates or suggests sponsorship or endorsement by the trademark owner. WIPO Overview 3.0,

section 2.5.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. One of these circumstances is that the Respondent by using the disputed domain name, 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 its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy). This is the case here.

According to the Complainant’s documented allegations, the disputed domain name resolved to an active website that imitated the Complainant’s main operating website under almost the same domain name, i.e. <bicyclecards.com>, without authorization and made it appear as if it was the Complainant’s website. In particular, the Respondent’s website under the disputed domain name:

(i)        prominently displayed the Complainant’s BICYCLE logo trademark (among others) which largely

predates the disputed domain name’s registration;

page 5

(ii)       used original product photos without permission; and

(iii)      allegedly offered the Complainant’s products – at least in part– at steeply discounted prices (e.g.,

“MAXIMUM DISCOUNTS 80% OFF”).

These findings are confirmed by the further circumstances surrounding the registration of the disputed domain name, including the fact that Respondent’s telephone number provided as part of its registration details for the disputed domain name does not seem to exist.

Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the registered the disputed domain name and tried to pass itself off as the Complainant.

The Panel finds that the Complainant has established the third element 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 disputed domain name <bicycle-cards.com> be transferred to the Complainant.

/Tobias Malte Müller/
Tobias Malte Müller
Sole Panelist
Date: May 14, 2025