DECISION

 

SidePrize, LLC d/b/a PrizePicks v. Andrew Bird / andy bird ltd

Claim Number: FA2502002140139

 

PARTIES

Complainant is SidePrize, LLC d/b/a PrizePicks ("Complainant"), represented by Ashley N. Klein of Morris, Manning & Martin, LLP, Georgia, USA. Respondent is Andrew Bird / andy bird ltd ("Respondent"), Great Britain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ukprizepicks.com>, registered with 123-Reg Limited.

 

PANEL

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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 13, 2025; Forum received payment on February 13, 2025.

 

On February 14, 2025, 123-Reg Limited confirmed by e-mail to Forum that the <ukprizepicks.com> domain name is registered with 123-Reg Limited and that Respondent is the current registrant of the name. 123-Reg Limited has verified that Respondent is bound by the 123-Reg Limited 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 February 17, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of March 10, 2025 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@ukprizepicks.com. Also on February 17, 2025, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 11, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister as Panelist.

 

On March 13, 2025 the Panel submitted to Complainant a Rule 12 Request for Additional Submission. Complainant responded with the requested information that same day.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response or any other submittal from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Respondent provides fantasy sports services, including fantasy esports, skill-based fantasy sports, and fantasy sports educational resources. It has rights in the PRIZEPICKS mark based upon its registration of that mark with the United States Patent and Trademark Office (USPTO) and the UK Intellectual Property Office (UKIPO). Respondent's domain name is identical or confusingly similar to the PRIZEPICKS mark as it fully incorporates the mark, merely adding the common "uk" abbreviation for United Kingdom and a generic top level domain (gTLD).

 

Respondent has no rights or legitimate interests in the domain name. He has not been commonly known by the domain name, he is not a licensee of Complainant, he does not operate a business under the domain name, he owns no trademark or service mark rights in the domain name, his use of the domain name is confusing in that visitors might reasonably believe that he is connected to or approved by Complainant, he does not make clear that there is no commercial connection with Complainant, and he is using the domain name in connection with a phishing scam.

 

Respondent registered and uses the domain name in bad faith. He is using it to attempt to attract for commercial gain Internet users to his website by creating a likelihood of confusion with Complainant's mark, he registered the domain name with constructive or actual knowledge of Complainant's rights in its mark, he registered the domain name using a privacy service, and he is using the domain name for an illegitimate phishing scheme.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

C. In response to the Panel's Rule 12 Request, Complainant submitted an Additional Submission consisting of screenshots of its website and posts on social media. The Panel considered this submission.

 

FINDINGS

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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

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

(2)       the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint"), WIPO Overview 3.0, at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case."). The WIPO Overview is not a definitive statement of applicable law which governs any particular issue, but it does express a consensus among a significant number of UDRP panelists as to how particular issues typically are and should be resolved. The Panel accepts that consensus on this and other issues addressed later in this Decision. 

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

The PRIZEPICKS mark was registered to Complainant with the USPTO on April 14, 2020 and with the UKIPO on October 13, 2023 (TSDR printout and UKIPO registration certificate included in Complaint Annex 2). Complainant's registration of its mark with the USPTO and UKIPO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, "Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.").

 

Respondent's domain name is identical or confusingly similar to the PRIZEPICKS mark. It fully incorporates the PRIZEPICKS mark, merely adding the common "uk" abbreviation for United Kingdom and the ".com" gTLD. These changes do not distinguish the domain name from Complainant's mark for the purposes of Policy ¶ 4(a)(i). Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs."), Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA1503001611255, (Forum May 4, 2015) ("The addition of 'US' or 'USA' does not alter the underlying mark held by the complainant. . . . The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.").  The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the domain name.

 

Further, the addition of descriptive terms that relate to a complainant can actually enhance confusion. That is the case with the domain name involved here. The "uk" abbreviation for the United Kingdom suggests that the resolving website would be a Complainant-sponsored site oriented toward the sale of Complainant's products and services in that country. Adding it to Complainant's mark in the domain name enhances the confusing similarity. Avaya, Inc., Ibid. ("Prior UDRP panels have found consistently that the addition of a geographic term of this sort, when added to a domain name that is otherwise identical to the mark at issue, creates a confusing similarity. The reason why this is so is that it gives the impression to the internet user that it relates to the activities of Complainant in the geographic region specified and that the domain name will lead to a website dealing with the same subject.").

 

For the reasons set forth above, the Panel finds that the domain name is identical or confusingly similar to the PRIZEPICKS mark, in which Complainant has substantial and demonstrated rights.

 

Rights or Legitimate Interests/Registration and Use in Bad Faith

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests"). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      before any notice to the respondent of the dispute, the respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii)                      the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii)                      the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain name because (i) he has not been commonly known by the domain name, (ii) he is not a licensee of Complainant, (iii) he does not operate a business under the domain name, (iv) he owns no trademark or service mark rights in the domain name, (v) his use of the domain name is confusing in that visitors might reasonably believe that he is connected to or approved by Complainant, (vi) he does not make clear that there is no commercial connection with Complainant, and (vii) he is using the domain name in connection with a phishing scam.  These allegations are addressed as follows:

 

The WHOIS information provided to Forum by the registrar lists the named Respondent as the registrant of the domain name. Neither of these names bears any resemblance to the domain name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed Domain Name when the identifying information provided by WHOIS was unrelated to the Domain Name or respondent's use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the domain name for the purposes of Policy ¶ 4(c)(ii).

 

Complainant alleges that it has not licensed or authorized Respondent to use its mark. Complainant has specific competence to make this allegation and it is not disputed. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register Domain Name featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.").

 

Both of the above factors contribute to a prima facie case of no rights or legitimate interests.  In order to meet its initial burden under Policy ¶ 4(a)(ii), however, a Complainant must present evidence on all three of the factors listed in Policy ¶ 4(c).

 

Complainant does not expressly refer to the provisions of Policy ¶¶ 4(c)(i) or (iii) but in essence it claims that Respondent is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead is using the domain name to confuse visitors into believing that he is connected or affiliated with Complainant, i.e, to pass off as Complainant or an affiliate, and to engage in a phishing scam. The concept of bona fide in connection with an offering of goods or services means good faith, or the absence of bad faith. Since bad faith is also at the heart of the third element of Complainant's case under Policy ¶ 4(a)(iii), the Panel addresses both of these elements concurrently.

 

The concept of bad faith as illustrated in the four subparagraphs of Policy ¶ 4(b) necessarily involves a subjective intent on the part of a respondent knowingly to trade upon the goodwill of the complainant. Such subjective intent would in turn require that the respondent actually knew of the complainant and its rights in the relevant mark when it registered the domain name. Complainant asserts that Respondent had constructive if not actual knowledge of Complainant and its mark when he registered the domain name. UDRP panels almost universally decline to find bad faith based upon constructive knowledge and this Panel does as well.  The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.").

 

In attempting to discern actual knowledge and a subjective bad faith intent, panels have looked at many different types of evidence, including but not limited to use of a domain name in direct competition with a trademark owner, impersonation, the parties operating in the same market segment, the parties being physically located in the same general geographic area, a pattern of bad faith conduct, actual prior association between or among the parties, the fanciful or famous nature of the trademark, suggesting that any similarity is not happenstance. Importantly, allegations about a respondent's subjective intention are not evidence in this regard.

 

In cases such as this, where no Response has been filed, it is not always easy to determine whether the respondent registered and has been using the domain name with actual knowledge of the complainant and its rights in the mark. In this case, the relevant facts are as follows:

 

The parties' websites show that they are both involved in the same general market segment, offering games of chance, but there are important differences. Complainant's site and social media posts, screenshots of which are submitted in response to the Panel's Rule 12 Request, focus exclusively on sports, offering visitors the opportunity to bet not only on fantasy teams (teams composed of players selected by the visitor from actual teams) but on actual games as well. Respondent's site appears to be more in the nature of a general raffle opportunity, offering prizes consisting of goods, e.g., play stations, computers, hair dryers, as well as cash, in exchange for "tickets" which sell for £1, which apparently entitle the buyer to participate in some kind of drawing to select a winner. There is no similarity in the layout and general appearance of the two websites. Complainant's site features a black background with purple accents. The background on Respondent's pages is white, with aqua-colored accents. Complainant's site features only sports-related photos, while Respondent's site displays photos of a variety of goods offered as prizes. There is no copying or mimicking of Complainant's site by Respondent. A comparison of the parties' websites does not offer any evidence that Respondent had actual knowledge of Complainant and its mark.

 

The factor that most closely supports a finding of actual knowledge is the domain name, which is virtually identical to Complainant's mark except for the "uk" added in front of the mark in the domain name. Standing alone, this would suggest that Respondent intended to pose as an authorized United Kingdom affiliate of Complainant. At the same time, however, the PRIZEPICKS mark is not particularly strong. It is a combination of common dictionary words which describes the products or services offered by Complainant. It also describes the products or services offered by Respondent. Complainant's mark has been used in commerce since at least as early as the October 2018 first use date shown on the TSDR printout for the mark included in Complaint Annex 2. Complainant alleges that it is the largest daily fantasy sports operator in North America. It alleges that its mark is

 

distinctive and well known in the fantasy sports industry. Since its inception, PrizePicks has won over twenty awards, including back-to-back awards from Inc. 5000 in 2022 and 2023 recognizing PrizePicks as the fastest growing sports company and back-to-back listings on the Deloitte Technology Fast 500 in 2022, 2023, and 2024.

 

All of that may well be true and if it were supported by competent evidence it would have a material impact upon the resolution of this issue. These allegations, however, are unsupported by any evidence. Complainant offers the Panel no competent basis for any findings as to the extent of notoriety, of general public awareness of its mark as a source indicator for Complainant's products or services. Complainant's mark was registered in the United Kingdom, which is where Respondent is domiciled, in May 2023. This is well before the December 2024 registration date for the domain name (WHIOIS printout submitted as Complaint Annex 1 shows creation date), but again, there is no evidence of the extent to which that mark was generally known in that country. In the absence of this evidence, the descriptive nature of the mark affords a plausible basis for Respondent to have selected "ukprizepicks" for the domain name promoting and representing his raffle business. It is not unreasonable for Complainant to suspect and argue that Respondent had actual knowledge of Complainant's PRIZEPICKS mark when he registered the domain name, but the preponderance of evidence fails to demonstrate that he did. Complainant has failed to prove that Respondent targeted Complainant or that he attempts for commercial gain to attract Internet users to his website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of his website, as described in Policy ¶ 4(b)(iv).  

 

Complainant argues that Respondent's use of a privacy service demonstrates bad faith. Many UDRP panels, especially in the years first following the adoption of the Policy, accepted this argument. More recently, however, in light of many instances of abuse of information gained from domain name registrations, many registrants, and indeed even registrars themselves, have opted to use privacy services. The WIPO Overview 3.0, at ¶ 3.6, acknowledges that there are recognized legitimate uses of privacy and proxy services, and in 2018 the European Union adopted its General Data Protection Regulation (GDPR) which potentially subjects entities around the world to stiff penalties in the interest of protecting personal identifying information of European Union citizens worldwide. Domain name registrars offer and recommend data privacy services to domain name registrants to protect their data, and domain name registrants are with increasing frequency using such services. In summary, there are any number of reasons a registrant might choose to use a privacy service that do not involve bad faith, and the use of such services cannot be taken ipso facto as evidence of bad faith. Rovio Entertainment Corporation v. baobin chi, Case No. D2021-0888 (WIPO May 26, 2021) (". . . the mere fact that the WhoIs details of a respondent are protected by Pa privacy filter alone cannot be sufficient to support a finding of bad faith within the meaning of the third limb of paragraph 4(a).").

 

Any inference of bad faith based upon the use of a privacy service would most likely involve some notion that the respondent did so in order to hinder or delay the filing of an administrative proceeding seeking transfer. The use of a privacy service may cause some minor delay after the administrative proceeding is commenced, to enable the provider to obtain previously screened registrant information from the registrar, but it does not impose any real deterrent to the filing of a case. UDRP cases are in the nature of in rem  proceedings. The Panel has jurisdiction over the domain name and can enter any orders contemplated by the relevant policy as to the domain name without personal jurisdiction over the respondent. In this case, there is no evidence to support Complainant's argument that Respondent's use of a privacy service to register the domain name was for an improper or unlawful purpose. Respondent's use of a privacy service is not evidence of bad faith.  The Panel notes also that Respondent's contact information as disclosed by the registrar bears none of the indicia of fraudulent activity (e.g., absurd registrant name or names of streets and cities, fictitious names of cities, well-known cities located in countries other than where they are actually located) present in many cases where such conduct exists. Respondent appears in all respects to be an actual person with a genuine address in the city of Liverpool.

 

Complainant states that its principal concern in bringing this proceeding is to prevent Respondent from engaging in phishing, which is a fraudulent attempt to obtain sensitive information such as usernames, passwords and credit card details by disguising oneself as a trustworthy entity in an electronic communication. Complainant states that

 

"it allows its customers to deposit money in the PrizePicks mobile app and software platform to utilize while playing its fantasy sports game. It is of the utmost importance to PrizePicks and its customers that its customers' accounts are not compromised. Given the amount of money that is invested in and paid out for fantasy sports games, however, PrizePicks' customers may be targets of efforts by bad faith actors who wrongfully seek to gain access to those customers' accounts, which would allow such actors to then exercise dominion over the customers' deposits and earnings, or confuse customers into depositing money into a third party account that is not controlled or sponsored by PrizePicks."  

 

This concern is legitimate and fully understandable, and Respondent's website does include a page where visitors are asked to login and register, using their email addresses and passwords. There is, however, no representation or even a suggestion that the visitor is asked to login to his or her account with Complainant, which would induce them to disclose that information. The login page on Respondent's website appears to be the login to the visitor's account with Respondent which, given the nature of Respondent's site, is eminently logical. There is nothing about Respondent's login page that suggests a phishing scheme.

 

In conclusion, the body of evidence fails to establish a prima facie case of no rights or legitimate interests, or bad faith registration and use of the domain name.

 

DECISION

Complainant having failed to establish all three elements required under the Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the  <ukprisepicks.com> domain name be REMAIN WITH Respondent.

 

 

Charles A. Kuechenmeister, Panelist

March 17, 2025