ESPN, INC. and MATTHEW J. BERRY p/k/a Talented Mr. Roto v. Christian Schmidt
Claim Number: FA1810001811075
Complainants are ESPN, INC. and MATTHEW J. BERRY p/k/a Talented Mr. Roto ("Complainants"), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Christian Schmidt ("Respondent"), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <talentedmrroto.com>, registered with NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainants submitted a Complaint to the Forum electronically on October 10, 2018; the Forum received payment on October 10, 2018.
On October 10, 2018, NameSilo, LLC confirmed by email to the Forum that the <talentedmrroto.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 15, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 2018 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@talentedmrroto.com. Also on October 15, 2018, the Written Notice of the Complaint, notifying Respondent of the email 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 November 9, 2018, pursuant to Complainants' request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
The Panel entered Procedural Order No. 1 on November 12, 2018, setting a deadline of November 25, 2018, for responses. A response was received from Complainants on November 21, 2018.
Complainants requests that the domain name be transferred from Respondent to Complainant ESPN.
A. Complainant
Complainant Matthew Berry is a well-known fantasy sports analyst and TV personality employed by Complainant ESPN. After writing for a third-party fantasy sports website for several years and establishing a following, Berry founded his own fantasy sports content website, TalentedMrRoto.com, in 2004. In 2007 ESPN hired Berry as its Senior Director for Fantasy Sports. Complainants state that ESPN acquired Berry's TalentedMrRoto.com website and common-law rights associated with the TALENTED MR. ROTO brand at that time.
Complainants assert that Berry is known by sports fans as TALENTED MR. ROTO or TMR, and cite numerous examples of media coverage in which Berry is referred to as TALENTED MR. ROTO. Berry uses the handle @MatthewBerryTMR on Twitter and Instagram, where he has nearly 1,000,000 and over 50,000 followers respectively. Complainants assert that the TALENTED MR. ROTO mark has acquired secondary meaning as a distinctive source of entertainment services as a result of Complainants' long-term commercial use of the mark.
The disputed domain name <talentedmrroto.com> was registered on January 19, 2004. Complainants state that the domain name was registered by Berry until early 2018, when the registration was inadvertently allowed to lapse, and the domain name was subsequently registered or acquired by Respondent. The registration was held in the name of a privacy registration service immediately prior to the filing of the Complaint in this proceeding, at which time the privacy shield was lifted by the registrar.
The disputed domain name is being used for a website that contains articles on fantasy sports along with advertisements. Complainants state that they have not given Respondent permission to use the TALENTED MR. ROTO mark, and that Respondent is not commonly known by the disputed domain name. Complainants allege that Respondent is using the website to impersonate Complainants, and that the website includes content copied directly from ESPN's website with only minor alterations.
Complainants contend on the above grounds that the disputed domain name <talentedmrroto.com> is confusingly similar to their TALENTED MR. ROTO mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
The Panel entered Procedural Order No. 1 on November 12, 2018, ordering the parties to submit (1) documentary evidence relating to the 2007 transaction between the Complainants, and (2) any documentary evidence of claims to common-law trademark rights in TALENTED MR. ROTO made publicly by either or both Complainants.
Complainants submitted a response to Procedural Order No. 1 on November 21, 2018. Complainants provided a redacted copy of the 2007 asset purchase agreement. The agreement sets forth a list of domain names and trademarks, including "TalentedMr.Roto" and "TMR." Complainants also provided archived copies of various web pages from Berry's website between 2006 and 2009 that included the following text: "TalentedMrRoto and the TalentedMrRoto Logo and/or other TMR services referenced herein may be either trademarks or registered trademarks of [Roto Pass, LLC, Berry's company] in the United States and/or other countries."
The Panel finds that the disputed domain name is identical to a mark in which Complainants have rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Complainants 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 Complainants have rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainants' 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 Management, 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.").
Complainants claim to have acquired common-law trademark rights in TALENTED MR. ROTO.
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 1.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/#item13.
Complainants' assertions here are supported by evidence of longstanding use, extensive media coverage, and a substantial social media following, and are consistent with claims to such rights made by Complainants over a period of many years. The Panel considers this evidence to be persuasive, and finds that Complainants have demonstrated sufficient common-law trademark rights in TALENTED MR. ROTO for purposes of this proceeding.
The disputed domain name <talentedmrroto.com> corresponds to the TALENTED MR. ROTO mark, omitting the spaces and period and appending the ".com" top-level domain. These alterations are insufficient to distinguish the domain name from Complainants' mark. See, e.g., Ed McCabe v. Nu Science Corp., D2007-0422 (WIPO June 7, 2007) (finding <mroxygen.com> identical to MR. OXYGEN); Mr. Olympia, LLC, American Media Operations, Inc., International Federation of BodyBuilders v. Tim Harrington, D2005-1287 (WIPO Jan. 30, 2006) (finding <mrolympia.com> identical or confusingly similar to MR. OLYMPIA). Accordingly, the Panel considers the disputed domain name to be identical to a mark in which Complainants have rights.
Under the Policy, the Complainants must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainants' mark without authorization, and it is being used for a commercial website that impersonates and competes directly with Complainants. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., BBY Solutions, Inc. v. Online Geek Squad, FA 1779194 (Forum May 3, 2018) (finding lack of rights or interests based upon website impersonating complainant and offering directly competing services).
Complainants have made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainants have sustained their burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainants must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered or otherwise acquired a domain name that corresponds to Complainants' well-known common-law mark, and is using it in a misleading manner to compete directly with Complainants. Such conduct is indicative of bad faith registration and use under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See, e.g., BBY Solutions, Inc. v. Online Geek Squad, supra (finding bad faith registration and use under similar circumstances). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <talentedmrroto.com> domain name be TRANSFERRED from Respondent to Complainant ESPN.
David E. Sorkin, Panelist
Dated: November 27, 2018
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