Score Media and Gaming, Inc. v. Eric Maddy / The Sandoval County On-line Reporting Enterprise
Claim Number: FA2009001915326
Complainant is Score Media and Gaming, Inc. (“Complainant”), represented by Jamie Nafziger of Dorsey & Whitney LLP, Minnesota, USA. Respondent is Eric Maddy / The Sandoval County On-line Reporting Enterprise (“Respondent”), New Mexico, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <the-score.media>, registered with GoDaddy.com, 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.
Bart Van Besien as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 30, 2020; the Forum received payment on September 30, 2020.
On September 30, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <the-score.media> 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 October 1, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 2020 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@the-score.media. Also on October 1, 2020, 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.
A timely Response was received and determined to be complete on October 21, 2020.
An Additional Submission by Complainant was received on October 26, 2020.
On October 26, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bart Van Besien 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a publicly traded company that provides online content regarding sports, e-sports and sports betting news, original and curated editorial content, mobile sports games, audio and audio-visual content, and betting information. The Complainant has used the name and mark THESCORE for sports media offerings in Canada since at least as early as 1999, and in the U.S. and internationally since at least as early as 2001. According to the Complainant, its mobile apps, websites, and related products and services have millions of active users. As a result, the Complainant’s name and marks are well known and uniquely identified with the Complainant.
The Complainant is the owner of numerous national and international trademarks, consisting of or containing the terms “THESCORE”. The Complaint is based on these “THESCORE” trademarks. Moreover, the Complainant claims to be the owner of as much as 2.888 registered domain names containing the terms “THE SCORE”, such as <thescore.bet>, <thescore.com>, and <thescoreesports.com>.
The Complainant argues that the Disputed Domain Name is confusingly similar to his THESCORE Trademark(s) since it incorporates the Complainant’s mark THESCORE in its entirety. The Complainant argues that the confusing similarity is heightened because of the generic top level domain (gTLD) of the disputed domain name, ‘.media’. Since one of the Complainant’s registered trademarks is THESCORE, and the Complainant’s corporate name begins with “Score Media”, the disputed domain name combines the Complainant’s trademark with the first part of the Complainant’s corporate name (<the-score.media>).
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name, as he fails to use the disputed domain name in connection with a bona fide offering of goods and services or for legitimate non-commercial use. According to the Complainant, the Respondent is using the disputed domain name to pass itself off as Complainant by resolving to a website stating, “The-Score is coming soon.” Additionally, due to the Complainant’s extensive use and promotion of its THESCORE mark in connection with sports media goods and services, the THESCORE mark has become associated with the Complainant as its trademark. The Respondent’s name (The Sandoval County On-line Reporting Enterprise) does not feature the term THE SCORE. Therefore, the Respondent has no reason to use the mark THESCORE, except to create the impression of an association with, or to trade off the goodwill of, the Complainant. The Respondent is not a licensee or subsidiary of the Complainant. The Respondent has never been authorized to use the Complainant’s THESCORE mark, the trademark registration predating the registration date of the Respondent’s domain name. The mark THESCORE is not a descriptive or geographically significant word in which the Respondent might have a claim to rights of use.
Lastly, the Complainant argues that the Disputed Domain Name has been registered and is being used in bad faith for two reasons. First, in light of the notoriety of the Complainant’s THESCORE mark, the Respondent clearly had actual or constructive knowledge of the mark at the time of registration. Registration with actual or constructive knowledge of the Complainant’s well-known mark is evidence of bad faith. Complainant is the owner of several trademarks containing the terms “THESCORE” and of numerous domain names containing this trademark. A domain name and/or trademark availability search by the Respondent before the registration of the disputed domain name would have revealed the latter. Second, the Respondent’s domain name fully incorporates the Complainant’s trademark, THESCORE. The Respondent registered the subject domain name, which features the Complainant’s trademark THESCORE, 17 years after the Complainant began offering its services and after the Complainant filed a trademark application for the THESCORE (stylized) mark. This suggests that the Respondent knew of the Complainant’s trademark and registered the subject domain name with bad faith intent to unfairly capitalize on the Complainant’s trademark rights.
B. Respondent
Respondent is a company that covers local government, politics and sports news in the town of Rio Rancho, New Mexico, USA.
Respondent claims to have registered the Disputed Domain Name to use it in good faith, namely as a not for profit online community newspaper for his local community. The Respondent registered the term “SCORE” in the Disputed Domain Name because it is an acronym of his company name (Sandoval County Online Reporting Enterprise).
Respondent has not yet made use of the Disputed Domain Name due to personal health reasons.
Respondent notes that he was previously active under a different domain name, <the-score.ino>. The Respondent notes that, after a failure on his side to renew this domain name, the Complainant has registered this domain name and is now offering it for sale for an amount of $10,000.
The Complainant provides online content regarding sports, e-sports and sports betting news, editorial content, mobile sports games, audio and audio-visual content, and betting information.
The Complainant provided trademark certificates for the following trademarks (Exhibit E of the Complainant):
· National U.S. trademark no. 5,216,434 named “THESCORE”, issued June 6, 2017, registered for “Dissemination of information in the field of sports featuring news, scores, statistics, notifications and audiovisual content via automatic messaging software, namely, chatbots; entertainment services, namely, providing information in the field of sports featuring news, scores, statistics, notifications and audiovisual content via automatic messaging software, namely, chatbots” in Class 41: this trademark is registered in name of the company theScore, Inc. (a Canada corporation, with the same address as the Complainant);
· National U.S. trademark no. 5,372,488 named “THESCORE | ESPORTS”, issued January 9, 2018, registered for several subclasses in Class 9, 35 and 41: this trademark is also registered in name of the company theScore, Inc. (a Canada corporation, with the same address as the Complainant);
· National U.S. trademark no. 2,924,688 named “theScore”, a service mark issued February 8, 2005, registered for several subclasses in Class 38 and 41: this trademark is registered in name of the company The Score Television Network Ltd. (a Canada corporation, with a different address than the Complainant).
The Panel notes that the Complainant is the company “Score Media and Gaming Inc.” of Toronto, Ontario, Canada, and that the above-mentioned trademarks were registered in name of the companies “theScore, Inc.” and “The Score Television Network Ltd.” The Complainant mentioned in its complaint that it has used the corporate name “theScore, Inc.” since 2012, and “Score Media and Gaming, Inc.” since 2019 and that an entity related to the Complainant operated under the name “Score Media Inc.” from 2005 to 2012. The Panel notes that the company “theScore, Inc.” has the same address as the Complainant. Nevertheless, the Panel would have expected the Complainant to provide clear evidence of its assertion that the company “theScore, Inc.” is the same company as the Complainant. It is also unclear to the Panel whether the company “The Score Television Network Ltd.” is the same company as “Score Media Inc.” and what the relationship is between these companies and the Complainant.
The Complainant also provided an overview (Exhibit F of the Complainant) of other trademark registrations of which several seem to be registered in name of “Score Media and Gaming Inc.” (i.e., the Complainant). The Complainant provided, inter alia, the registration details for the following trademarks which seem to be registered in name of the Complainant:
· National Canadian trademark no. 552987 named “THE SCORE”, registered October 26, 2001, registered for “Providing information and entertainment services relating to sports via the World Wide Web on the global Internet (including narrow band and broad band applications) or through electronic mail”;
· National Canadian trademark no. TMA969328 named “THE SCORE”, registered April 27, 2017, registered for (among others) “Dissemination of information via the internet in the field of sports featuring news, scores, statistics; dissemination of information via the internet in the field of sports featuring notifications; dissemination of information via the internet in the field of sports featuring audio-visual content; providing audiovisual content in the field of sports via the Internet; operation of and providing access to a computer database featuring news, scores, statistics in the field of sports; operation of and providing access to a computer database featuring notifications in the field of sports; operation of and providing access to a computer database featuring audio-visual content in the field of sports; operation of and providing access to an interactive website featuring news, scores, statistics in the field of sports; operation of and providing access to an interactive website featuring notifications in the field of sports; operation of and providing access to an interactive website featuring audio-visual content in the field of sports; providing advertising space on a website; providing advertising space on a mobile application; advertising the wares and services of others; entertainment services, namely, providing information via the internet in the field of sports featuring news, scores, statistics; entertainment services, namely, providing information via the internet in the field of sports featuring notifications; entertainment services, namely, providing information via the internet in the field of sports featuring audio-visual content”;
· EU trademark no. 12123758 named “THE SCORE”, registered on February 3, 2014, registered for several subclasses in Classes 9, 38, 41, 42 and 45;
· Etc.
This overview (Exhibit F of the Complainant) was drafted by the Complainant himself and bears the “Dorsey” logo of the Complainant’s representatives Dorsey & Whitney LLP. The Panel would have preferred to obtain an overview of relevant trademarks from an independent source, not from the representatives of the Complainant. Moreover, the Panel would have preferred to obtain copies of the relevant trademark certificates instead of a mere overview of trademark registrations.
Nevertheless, given the general powers of the Panel under paragraph 10 of the UDRP Rules, the Panel believes that it has the power to verify the asserted trademark registrations in the public trademark records.
The Panel verified the following trademarks (hereafter the “THE SCORE” Trademarks”) and found that at least these trademarks are indeed registered in name of the Complainant:
· National Canadian trademark no. 552987 named “THE SCORE”, registered October 26, 2001;
· National Canadian trademark no. TMA969328 named “THE SCORE”, registered April 27, 2017; and
· EU trademark no. 12123758 named “THE SCORE”, registered on February 3, 2014.
The Complainant claims to be the owner of numerous registered domain names containing the terms “THE SCORE”, such as <thescore.bet>, <thescore.com>, and <thescoreesports.com>. However, the WHOIS excerpts as shown in Exhibit G of the Complainant show that not the Complainant, but an organisation named “theScore, Inc.” is the registrant of said domain names. The Complainant asserts that it has used “theScore, Inc.” as a corporate name since 2012, and “Score Media and Gaming, Inc. since 2019”. However, the Complainant did not provide evidence of this claim.
The Complainant asserts that the disputed domain name is currently not in use. The Complainant submitted an Exhibit H, i.e., a page with the wording: “The-Score Is Coming Soon - We are on the road again and looking forward to bringing you the latest news.” However, it is unclear to the Panel whether or not this page is a screenshot or printout of the website available through the disputed domain name. The page submitted by the Complainant as Exhibit H does not mention any url, date or other information.
The Respondent claims that he has not yet made use of the Disputed Domain Name due to personal health reasons.
The Panel regrets that the Complainant did not provide clear evidence of the (non) use of the disputed domain name by submitting a screenshot or printout of the website linked to the disputed domain name. Nevertheless, given the Panel’s general powers under paragraph 10 of the UDRP Rules, and given the fact that the Respondent confirms that the disputed domain name is currently not in use, the Panel took the freedom to visit the website linked to the disputed domain name. From this limited factual research, it seems that the website indeed mentions the words “The-Score Is Coming Soon - We are on the road again and looking forward to bringing you the latest news”. It seems that this website does not contain any other information.
The disputed domain name was registered on February 9, 2020.
The Respondent filed a response via e-mail on October 21, 2020. The Respondent is a company covering local government, politics and sports news in the town of Rio Rancho, New Mexico, USA. The Respondent claims to have registered the disputed domain name for the purposes of publishing a non-profit online local community newspaper for the area where he resides. The Respondent registered the term “SCORE” in the disputed domain name because it is an acronym of his company name (Sandoval County Online Reporting Enterprise).
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:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The disputed domain name <the-score.media> consists of the abovementioned THE SCORE Trademarks of the Complainant, with the mere addition of the ‘-‘ symbol, which in this case does not add distinctiveness to the disputed domain name. Moreover, the disputed domain name consists of the generic “.media” Top-Level Domain (gTLD). This gTLD can be seen as descriptive of the goods and services for which the Complainant’s THE SCORE Trademarks have been registered.
The Panel concludes that the disputed domain name is confusingly similar to the registered THE SCORE Trademarks of the Complainant under the first element of paragraph 4(a) of the Policy.
As regards paragraph 4(a)(ii) of the Policy, while the overall burden of proof rests with the Complainant, it is commonly accepted that this should not result in an often-impossible task of proving a negative. Therefore, numerous previous Panels have found that the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the Respondent fails to come forward with such appropriate allegations or evidence, the Complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. If the Respondent does come forward with some allegations or evidence of relevant rights or legitimate interests, the panel then has to weigh all the evidence, with the burden of proof always remaining on the Complainant.
The Complainant has shown that the disputed domain name is not in use, and that it currently refers to a webpage that states: “The-Score is coming soon.” The disputed domain name was registered on February 9, 2020, i.e. circa eight months before the Complainant filed its complaint. The Complainant further states that the Respondent is not a licensee or subsidiary of the Complainant, nor has he ever been authorized to use the Complainant’s THE SCORE Trademarks. The trademark registrations of the Complainant predate the registration date of the disputed domain name.
The Respondent argues that he intends to use the disputed domain name for the purpose of publishing a non-profit online local community newspaper for the area where he resides. Moreover, while the Complainant argues that the Respondent’s name does not correspond to the disputed domain name, the Respondent explains he has chosen the term “SCORE” in the disputed domain name because it is an acronym for his company name (Sandoval County Online Reporting Enterprise).
According to this Panel, the argumentation of the Respondent regarding his rights or legitimate interests to the disputed domain name does not lack credibility. However, the Panel would have preferred the Respondent to provide clear evidence of his assertions. The Panel accepts that the term “SCORE” in the disputed domain name is an acronym for the Respondent’s company name (Sandoval County Online Reporting Enterprise). The Respondent argues that he intends to use the disputed domain name for publishing local news in the town of Rio Rancho, New Mexico, USA. This seems a credible and legitimate intent which does not necessarily capitalize on the reputation or goodwill of the Complainant’s THE SCORE Trademarks.
The Panel therefore decides that it has not been proven that the Respondent lacks legitimate rights or interests to the domain name under Paragraph 4(a)(ii) of the Policy.
The Complainant asserts that his various THE SCORE Trademarks are well-known, and that he exploits numerous domain names containing this trademark. The Complainant asserts that a domain name and/or trademark availability search by the Respondent before the registration of the disputed domain name would have revealed the latter. According to the Complainant, the Respondent therefore must have been aware of the Complainant’s THE SCORE Trademarks at the moment of registration of the disputed domain name. In addition, the Complainant argues that since Respondent registered the disputed domain name 17 years after the Complainant began offering its services and after the Complainant filed its trademark applications, this suggests that the Respondent knew of the Complainant’s trademarks and registered the subject domain name with bad faith intent to unfairly capitalize on the Complainant’s trademark rights.
The Respondent argues that he intends to use the disputed domain name in good faith, namely, to publish a non-profit online local community newspaper for the area where he resides. While the Complainant argues that the Respondent knew of the its trademarks and registered the domain name only to unfairly capitalize on its trademark rights, the Respondent explains he has chosen the term “SCORE” in the disputed domain name because it is an acronym of his company name (Sandoval County Online Reporting Enterprise).
In the given circumstances, the Panel does not agree with the Complainant’s reasoning. This Panel finds that one should not lightly conclude that a respondent registered and/or used a domain name in bad faith.
First, the Complainant asserts that the THE SCORE Trademarks are well known or notorious. However, the Panel did not see any evidence that the THE SCORE Trademarks of the Complainant are indeed well known or notorious. This might be the case, but it is up to the Complainant to provide evidence of its claim. Also, the Panel did not see any evidence of a branch or other presence of the Complainant in the geographical area where the Respondent is active (Rio Rancho, New Mexico, US) that could serve as evidence of actual knowledge of the Complainant’s trademarks. The Panel cannot conclude that the Respondent knew or should have known about the existence of the THE SCORE Trademarks of the Complainant.
Also, the fact that the Respondent could or should have been aware of the Complainant’s trademark(s) at the moment of registration of the disputed domain name cannot be seen as sufficient proof for registration and use in bad faith as such. The same goes for the fact that the disputed domain name was registered 17 years after the Complainant started offering its services and registered his first trademark. While ‘prior knowledge’ can be a contributing factor, the Complainant has to show concrete evidence of the registration and use of the disputed domain name in bad faith. Indeed, in the circumstance where a registrant is aware of certain ‘older’ trademarks that correspond with its registered domain name, the possibility that the registrant will use the domain name in good faith still exists.
The Complainant goes on to state that, since the Respondent knew of the Complainant’s trademark(s), he registered the disputed domain name to “unfairly capitalize” on the Complainant’s trademark rights or “draw on the goodwill of the Complainant”. While the Complainant does not specify this, this argument can be read as the example of registration and use in bad faith put forth in article 4.b.(iv) of the Uniform Domain Name Dispute Resolution Policy, i.e. “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location”.
However, in the eyes of the Panel, the Complainant fails to provide any evidence of this claim. There is no evidence that the Respondent is attempting to attract internet users to the disputed domain name for commercial gain. The domain name is currently not in use. At the time of the complaint, the Respondent had been the owner of the disputed domain name for 8 months, which, according to the Panellist, cannot be seen as an unreasonable amount of time that might indicate bad faith. Moreover, the Respondent has provided the Panel with a satisfactory reason for the choice of the disputed domain name: the term “SCORE” in the disputed domain name was chosen because it is an acronym of the Respondent’s company name (Sandoval County Online Reporting Enterprise).
Even though the disputed domain name is currently not in use, it seems conceivable to the Panel that the Respondent can make a legitimate, non-competitive use of the domain name in the future. To date, it does not seem that the Respondent took an unduly long time to do this. It does not seem that the Complainant is using the domain name to divert Internet users for commercial gain. It does not seem that the Respondent engaged in a pattern of conduct depriving the Complainant or third parties to obtain domain names corresponding to their trademarks. It does not seem that the Respondent attempted to sell the domain name for an unfair price. It does not seem that the Respondent is a competitor of the Complainant seeking to disrupt the Complainant's betting or sports business.
In light of the above, given the lack of convincing evidence of bad faith by the Complainant, the Panel concludes that the Complainant failed to establish Paragraph 4(a)(iii) of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <the-score.media> domain name REMAIN WITH Respondent.
Bart Van Besien, Panellist
Dated: November 9, 2020
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