DECISION

 

SidePrize, LLC d/b/a PrizePicks v. Cesar Saenz

Claim Number: FA2502002141535

PARTIES

Complainant is SidePrize, LLC d/b/a PrizePicks ("Complainant"), represented by Ashley N. Klein of Morris, Manning & Martin, LLP, Georgia, USA. Respondent is Cesar Saenz ("Respondent"), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <betrprizepicks.com> (hereinafter "disputed domain name"), registered with GoDaddy.com, LLC.

 

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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 24, 2025; Forum received payment on February 24, 2025.

 

On February 24, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the <betrprizepicks.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 February 25, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 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@betrprizepicks.com.

 

Also on February 25, 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 18, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC as Panelist.

 

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 any response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the PRIZEPICKS trademark and service mark established by its ownership of trademarks and service mark registrations set out below; and its use of the PRIZEPICKS mark and other marks incorporating PRIZEPICKS which are the subject of pending applications for registration, in its business as a fantasy sports operator in North America.

 

Complainant submits that it is an award-winning, nationally recognized leader in fantasy sports, including fantasy e-sports, skill-based fantasy sports, and fantasy sports educational resources, and has been continuously providing fantasy sports services since at least 2018.

 

Complainant submits that it has won over twenty awards, including back-to-back awards from Inc. 5000 in 2022 and 2023 recognizing Complainant as the fastest growing sports company and back-to-back listings on the Deloitte Technology Fast 500 in 2022, 2023, and 2024. Additionally, Complainant asserts that it has partnered with the Dallas Stars, the Atlanta Braves, State Farm Arena, and the Stephen A. Smith Show, as well as MMA stars Sean O'Malley and Justin Gaethje and comedian Drew "Druski" Desbordes as brand ambassadors.

 

Complainant firstly alleges that the disputed domain name <betrprizepicks.com> is confusingly similar to its PRIZEPICKS mark because it contains the mark in its entirety.

 

Furthermore, Complainant submits that, upon information and belief, the element "betr" in the disputed domain name is in reference to the third-party fantasy sports company BETR. To illustrate this submission Complainant has exhibited copy of the BETR website in an annex to the Complaint.

 

It is contended that the addition of a competing company's mark does not make the disputed domain name different from Complainant's mark.

 

Rather, Complainant submits that the addition of the BETR mark increases the level of confusion. Complainant cites the decision in NSK LTD. v. Zhang Bei / Shandong Huagong bearing CO., LTD., FA1701001713800 (Forum March 9, 2017) (holding that "adding two additional well-known competing marks (NTN and SKF)" did not distinguish the domain <nsk-ntn-skf.com> from the NSK mark, but, instead, increased potential confusion).

 

Referring to a screen capture of the web-page to which the disputed domain name resolves which is exhibited in an annex to the Complaint, Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that

·       Respondent did not register the disputed domain name until January 27, 2025, long after Complainant began using the PRIZEPICKS marks and long after the USPTO issued the registrations relied upon by Complainant;

·       Respondent is not commonly known by the term "PRIZEPICKS";

·       Respondent is not a licensee of Complainant;

·       Respondent does not operate a business or other organization under the disputed domain name or the PRIZEPICKS mark;

·       upon information and belief, Respondent does not own any trademark or service mark rights in the disputed domain name;

·       PRIZEPICKS is a distinctive mark and Complainant is unaware of any other use of that name or anything like it in the fantasy sports industry;

·       Respondent's use of the disputed domain name is confusing and disruptive in that visitors might reasonably believe it is connected to or approved by Complainant with great harm to Complainant's reputation in the marketplace;

·       the disputed domain name also does not make clear that there is no commercial connection with Complainant;

·       upon information and belief, Complainant is neither making active use of the disputed domain name, nor preparations for such use;

·       accordingly, the use of the disputed domain name cannot amount to the bona fide offering of goods or services, as held in panel decision Huron Consulting Group Inc. v. Stephen David / huronconsulting, FA2501002134260 (Forum Jan. 31, 2025) (finding that the Respondent's lack of use or preparations to use the disputed domain suggested a lack of legitimate interest in the domain);

·       to the extent Respondent is using the disputed domain name in connection with a phishing scheme, that also does not constitute a legitimate interest in the disputed domain name. See The Prudential Insurance Company of America v. Christoph Sigrist / Jameson Services Consulting, FA1901001823381 (Forum Jan. 28, 2019) (holding that a Respondent using a domain to offer fraudulent stock offerings was not a legitimate right or interest).

 

Again referring to the exhibited screen capture of the website to which the disputed domain name resolves, Complainant next alleges that the disputed domain name was registered and is being used in bad faith.

 

Firstly, Complainant contends that Respondent is using the disputed domain name to attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the PRIZEPICKS mark; and Complainant submits that the Policy provides that bad faith exists where a respondent registers a domain with knowledge of another party's rights in trademarks and/or service marks incorporated into a domain name at issue.

 

Secondly, Complainant alleges that Respondent is using the disputed domain name to disrupt Complainant's business. See Policy § 4.b (iii). Under this prong, "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'."

 

Thirdly, it is contended that Respondent's concealment of its true identity on the published WhoIs for the disputed domain name by availing of a privacy service, is evidence of bad faith given the circumstances of the case. See WIPO Jurisprudential Overview 3.0 at § 3.6 ("There are recognized legitimate uses of privacy and proxy registration services; the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website, can however impact a panel's assessment of bad faith … Panels additionally view the provision of false contact information (or an additional privacy or proxy service) underlying a privacy or proxy service as an indication of bad faith.").

 

Fourthly, Complainant argues that upon information and belief, Respondent is using the disputed domain name for an illegitimate phishing scheme. Specifically, that the content of the exhibited webpage raises concerns that Respondent is using the disputed domain name to solicit users to open an account and deposit funds, which the user is then unable to withdraw.

 

Complainant submits that such use also constitutes bad faith, as shown by the decision of the panel in FIL Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2019-1093 ("Several UDRP panels have found that phishing schemes that use a complainant's trademark in the disputed domain name are evidence of bad faith.").

 

Fifthly, Complainant alleges that Respondent is not using the disputed domain name for a legitimate business purpose, as indicated the Respondent's lack of contact information and failure to make active use of the disputed domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is a fantasy sports operator and in providing its services it uses the PRIZEPICKS mark and other marks that incorporate PRIZEPICKS for which it holds two registered trademarks and service marks namely

·       United States registered trademark and service mark, PRIZEPICKS, registration number 6,032,925, registered on the Principal Register on April 14, 2020, for goods and services in international classes 9 and 41

·       United States registered trademark and service mark P PRIZEPICKS (stylized) registration number 7,357,382, registered on the Principal Register on April 9, 2024 for goods and services in International classes 9, 41 and 42.

 

Complainant is also the owner of pending United States service mark applications for marks that incorporate the PRIZEPICKS mark.

 

The disputed domain name <betrprizepicks.com> was registered on January 27, 2025, and resolves to a webpage announcing "BETR PRIZE PICKS launching soon".

 

There is no information available about Respondent, except for that provided in the Complaint, as amended, the Registrar's WhoIs and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name for the purposes of this proceeding.

 

DISCUSSION

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 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 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 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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").

 

Identical and/or Confusingly Similar

Complainant has provided uncontested convincing evidence of its rights in the PRIZEPICKS service mark established by its ownership of the portfolio of registered trademarks described above and use of the mark in its fantasy sports business.

 

The disputed domain name is composed of Complainant's PRIZEPICKS service mark in combination with the BETR mark owned by a third party corporation and the generic Top Level Domain ("gTLD") extension <.com>.

 

Complainant's registered service mark is clearly recognizable within the disputed domain name.

 

The combination of the third party's BETR mark with Complainant's own PRIZEPICKS mark is likely to create confusion among Internet users therefore does not prevent a finding of confusing similarity.

 

In the circumstances of this case the gTLD extension <.com> within the disputed domain name may be ignored for the purposes of comparing Complainant's mark and the disputed domain name, because it would be considered by Internet users to be a necessary technical element for a domain name registration.

 

This Panel finds therefore that the disputed domain name is identical to the PRIZEPICKS trademark and service mark in which the Complainant has rights, and the Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the disputed domain names as set out in Complainant's detailed submissions above.

 

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant's PRIZEPICKS service mark is clearly recognizable within and is confusingly similar to the disputed domain name.

 

The earliest registration of the PRIZEPICKS mark relied upon by Complainant is dated April 14, 2020, whereas the disputed domain name was registered on January 26, 2025, almost five years later.

 

The composition of the disputed domain name is a combination of Complainant's PRIZEPICKS mark and the BETR mark which is owned by a competitor of Complainant. The third party's website also offers sports betting services. Complainant has exhibited in an annex to the Complaint a screen capture of its competitor's webpage at <www.betr.app>.

 

There appears to be no plausible reason for registering the disputed domain name other than to create confusion among Internet users, who would be confused by the combination of the names and marks of the two competing gaming companies.

 

On the balance of probabilities, therefore, this Panel finds that the disputed domain name was in fact chosen and registered with Complainant's mark in mind with the intention of taking predatory advantage of Complainant's rights and goodwill in the PRIZEPICKS mark.

 

The webpage to which the disputed domain name resolves consists of an image of a sporting event, and a message announcing "BETR PRIZE PICKS launching soon". Complainant has exhibited a screen capture of Respondent's website in an annex to the Complaint.

 

It is of concern that notwithstanding that the webpage to which the disputed domain name resolves is under construction, it also has a contact page with the statement "drop us a line"; a contact form with an invitation to Internet users to give their name and email address, with a field for the Internet user to include a message; and an invitation to the visitor to "sign up to our email list for updates, promotions, and more".

 

There is also a copyright legend "Copyright © 2025 Betr Prize Picks – All Rights Reserved". The combination of Complainant's name and the BETR name in the legend, would on the balance of probabilities create confusion among Internet users; and the contact form on Respondent's form may well be used for phishing for the personal data of the unsuspecting visitor who is not aware that Complainant has no association with the disputed domain name.

 

This Panel finds therefore that on the balance of probabilities such use of Complainant's PRIZEPICKS mark by Respondent within the disputed domain name, as the address of the resolving website is, on the balance of probabilities, intentionally intended to attract and confuse Internet users.

 

Furthermore, it is intended to cause the confused Internet users to divert their Internet traffic intended for Complainant and misdirect it to Respondent's website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site, which constitutes bad faith for the purposes of the Policy.

 

This Panel finds therefore that the disputed domain name was registered and is being used in bad faith and Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).

 

DECISION

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

 

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

 

                                              

____________________________________________

 

 

James Bridgeman SC

Panelist

Dated: March19, 2025